Many patent applications seek to claim the benefit of the filing date of an earlier-filed application. When it comes to making such claims, an ounce of prevention is worth a pound of cure. But mistakes happen. Luckily, the USPTO has safeguards in place when a benefit claim is unintentionally delayed. The below is a summary of the main considerations for making delayed benefit claims in the United States.
Benefit claims are made in the United States by “specific reference” to the earlier-filed application(s) in an Application Data Sheet (ADS). See 35 U.S.C. §§ 119, 120. The best practice is to make an accurate and precise benefit claim in the ADS when filing the application. Counsel should carefully review all filing instructions, and should also review publically available records to make sure a benefit claim is not unintentionally omitted. Counsel should also carefully proofread the ADS before filing the application, because typographical errors have the same effect as if a benefit claim was never made. Finally, after an application is filed, the USPTO generates a filing receipt listing all benefit claims, and counsel should review the filing receipt for potential errors. Benefit claims can never be proofread too many times.
Delayed benefit claim during pendency of application (fee or no fee?)
Once an application has been filed in the United States, delayed benefit claims are fundamentally treated the same way, regardless of the type of benefit claim being sought (i.e., provisional, domestic, international, or foreign). In general, the USPTO allows one to make a benefit claim within a window of time after filing without payment of a fee. The relevant rules are 37 CFR § 1.78(a) for claiming the benefit of a provisional application filing date, 37 CFR § 1.78(d) for claiming the benefit of a domestic or international filing date, and 37 CFR § 1.55(d) for claiming the benefit of a foreign filing date. The relevant windows of time are defined in the rules, and are generally within 4 months of the filing date. Typically, an applicant receives a filing receipt within this window, which allows the applicant an opportunity to correct a benefit claim without paying a fee if an error is identified in the filing receipt. Again, filing receipts should be reviewed carefully.
If an applicant finds oneself outside of the relevant window, the USPTO allows one to petition to make a delayed benefit claim, assuming the entire delay was unintentional, upon payment of a relatively large fee (as of this writing, the fee is $2,000 for undiscounted entities). See 37 CFR §§ 1.55 (e), 1.78(b), (d), 37 CFR § 1.17(m). While the fee may seem stiff, the alternative is a waiver of any benefit, which may be untenable in many applications. See 37 CFR § 1.55, 1.78.
Correcting benefit claim after issuance (certificate of correction or reissue?)
If a benefit claim is delayed until after issuance, a patentee may pursue a certificate of correction or a reissue application. A reissue application is typically far less desirable because one must surrender the originally issued patent. That said, in certain situations, reissue may be the only option available.
A certificate of correction may be used to make a delayed benefit claim or to correct an incorrect benefit claim. See MPEP § 1481.03. A key factor in determining whether a certificate of correction is available is whether it is “clear from the record of the patent and the parent application(s) that priority is appropriate.” Id. The language “clear from the record” means the certificates of correction will be treated on a case-by-case basis. If the delayed benefit claim alleges an application is a “continuation,” yet there are several additional figures relative to the alleged parent application (which suggests the application may truly be a continuation-in-part), then the USPTO may deny the request for failing to meet the “clear from the record” standard.
Another key factor is whether the delayed benefit claim would change the statutory framework of the application. In other words, if a benefit claim changes the application from a post-AIA case to a pre-AIA case, the USPTO is likely to deny the certificate of correction. See MPEP § 1481.03. In such cases, a reissue application may be the patentee’s only option.
In general, a benefit claim may be added or corrected via reissue. In order to pursue a reissue, a patentee must admit that the originally-issued patent is “wholly or partly inoperative or invalid,” and must surrender their patent from the time of filing the reissue until the patent is reissued. See 35 U.S.C. § 251. A patent is not surrendered during the pendency of a certificate of correction, and thus, if a certificate of correction is available, it is almost always preferable to pursue a certificate of correction.
Is the matter an urgent one?
Petitions, including certificates of correction, take time. If the matter is an urgent one, such as when a patent is subject to a post grant proceeding, one may consider filing a petition to expedite in parallel with the petition seeking to correct the benefit claim. 37 CFR § 1.182 allows one to petition the Director for “Questions not specifically provided for,” and one can fashion a petition under this rule to expedite treatment of another petition. See U.S. Application No. 14/332,732, Decision dated January 23, 2015 (granting both the petition to expedite and the petition to correct benefit claim).
Illustrative cases on benefit claims
In most cases, the issue of whether a delayed benefit claim may be made is a matter of reading and following the relevant rules. Over the years, some odd scenarios have arisen. The overarching lesson from these cases is that one should not give short shrift to benefit claims.
One such case is that of Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., 741 F.3d 1359, 1365-66 (Fed. Cir. 2014). In Medtronic, the Federal Circuit held that a benefit claim was improper because the patentee’s usage of “this application” was too vague and did not constitute the required “specific reference” under the rules. Id. The patentee argued that a “reasonable person” would have been able to determine which application “this application” was referring to, but the Federal Circuit held that this “improperly places the burden of deciphering a priority claim upon the reader or the public.” Id. at 1366. Rather than burden the public, the Federal Circuit interpreted the “specific reference” standard as requiring the patentee to provide “precise details in priority claims down to the ‘application number.’” Id. citing 37 CFR § 1.78.
Per Medtronic, a benefit claim’s “specific reference” to the earlier-filed application(s) must be both accurate and precise. Inaccurate benefit claims can potentially lead to allegations of inequitable conduct, even in a post-Therasense world where the standard for inequitable conduct is heightened. See Asghari-Kamrani v. USAA, 220 F. Supp. 3d 707, 726-28 (E.D. Va. 2016) (declining to dismiss an inequitable conduct claim where a patentee allegedly mislabeled an application a “continuation” when in fact it was a “continuation-in-part”).
While the Asghari-Kamrani case may be on an extreme end of the spectrum, one should strive to avoid mistakes by following best practices. And if a mistake is identified, counsel should promptly remedy it by following the appropriate USPTO rules.
 This article presumes that the subject application was itself filed in a timely manner.