What is the effect of incorporating by reference a prior application in a continuation or divisional application?

Incorporating by reference a prior application in a continuation or divisional application can provide important benefits:

1. It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
2. For applications filed on or after September 21, 2004, it can help recover inadvertently omitted material.

The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.

It’s important to note that an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

For more information on 37 cfr 1.57, visit: 37 cfr 1.57.

For more information on continuation application, visit: continuation application.

For more information on Divisional application, visit: Divisional application.

For more information on incorporation by reference, visit: incorporation by reference.