How does the USPTO determine if an application qualifies as a continuation-in-part?

The USPTO generally does not make an upfront determination about whether an application qualifies as a continuation-in-part (CIP) unless it becomes necessary in a proceeding. According to the MPEP:

“The Office does not need to make a determination as to whether the requirement of 35 U.S.C. 120 that the earlier nonprovisional application discloses the invention of the second application in the manner provided by 35 U.S.C. 112(a) is met unless the filing date of the earlier nonprovisional application is relied upon in a proceeding before the Office.”

However, examiners may use form paragraph 2.06 to remind applicants of possible CIP status:

“This application repeats a substantial portion of prior Application No. [1], filed [2], and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application.”

Ultimately, it’s the applicant’s responsibility to properly claim CIP status and comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

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