How were continuation or divisional applications handled when a petition under 37 CFR 1.48 was filed in the prior application?

When a petition under 37 CFR 1.48 to add an inventor was filed in a prior application, the continuation or divisional application could be handled in one of two ways:

1. Filed with a copy of the executed declaration naming the correct inventive entity from the prior application.
2. Filed with a newly executed declaration naming the correct inventive entity.

The MPEP states:

“A continuation or divisional application filed under 37 CFR 1.53(b) of a prior application in which a petition (or request) under 37 CFR 1.48 to add an inventor was filed should be filed with a copy of the executed declaration naming the correct inventive entity from the prior application or a newly executed declaration naming the correct inventive entity.”

Importantly, the MPEP also notes that “A copy of any decision under 37 CFR 1.48 from the prior application is not required to be filed in the continuation or divisional application.” This simplifies the filing process by not requiring additional documentation related to the inventorship change in the prior application.

To learn more:

• 37 CFR 1.48
• continuation application
• divisional application
• inventorship change
• petition to add inventor

To learn more:

• 37 CFR 1.48