If any domestic benefit claims are being added in a utility or plant application after the time period set forth in 37 CFR 1.78 (e.g., after the later of four months from the actual filing date of the instant application or sixteen months from the filing date of the application for which benefit is being claimed), a petition to accept an unintentionally delayed benefit claim in compliance with 37 CFR 1.78 (including the petition fee) must also be submitted. See 37 CFR 1.78(c) and (e) for the petition requirements.
For any domestic benefit claims that are being deleted, please ensure that deletion of the domestic benefit claim(s) is actually desired. A deletion of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application. If applicant later files a petition to accept an unintentionally delayed benefit claim to add the benefit claim that was previously deleted, the Office may refuse to accept such benefit claim because the delay was not unintentional.
Note that any correction of a domestic benefit claim may require a change in other domestic benefit claims in a chain of domestic benefit applications.
For more information on domestic benefit claims, see MPEP §§ 211-211.05.