How does the MPEP 409.03(f) guidance apply to continuation-in-part applications?

The guidance in MPEP 409.03(f) specifically addresses the issue of continuation-in-part (CIP) applications in relation to assignments. According to MPEP 409.03(f):

“An assignment of an application and any ‘reissue, division, or continuation of said application’ does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).”

This means that even if an original application has been assigned, and that assignment includes language covering continuations and divisions, it does not automatically cover a continuation-in-part application. This is because a CIP application, by definition, contains new matter not present in the original application.

When dealing with a CIP application under pre-AIA 37 CFR 1.47(b), applicants need to ensure that the assignment or proof of proprietary interest specifically covers the new matter included in the CIP. A new assignment or demonstration of proprietary interest may be necessary for the portions of the CIP that were not present in the original application.

To learn more:

• pre-AIA
• 37 CFR 1.47(b)
• continuation-in-part
• patent application
• assignment

To learn more:

• 37 CFR 1.47(b)