MPEP § 201.07 — Continuation Application (Annotated Rules)
§201.07 Continuation Application
This page consolidates and annotates all enforceable requirements under MPEP § 201.07, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Continuation Application
This section addresses Continuation Application. Primary authority: 35 U.S.C. 120, 35 U.S.C. 119(e), and 37 CFR 1.78. Contains: 1 requirement, 1 prohibition, 2 guidance statements, 2 permissions, and 2 other statements.
Key Rules
Design Benefit Claims
A continuation application is an application for the invention(s) disclosed in a prior- filed copending nonprovisional application, international application designating the United States, or international design application designating the United States. The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.
A continuation application is an application for the invention(s) disclosed in a prior- filed copending nonprovisional application, international application designating the United States, or international design application designating the United States. The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.
At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office. A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application. In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. Use form paragraph 2.05 to remind applicant of possible continuation status.
At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office. A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application. In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. Use form paragraph 2.05 to remind applicant of possible continuation status.
Provisional Application Benefit
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “divisional” of the provisional application. See 37 CFR 1.78, especially paragraphs (a)-(c), and MPEP § 211 et seq. for requirements and information pertaining to entitlement to the benefit of the filing date of a provisional application.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation" of the provisional application.
Continuation Applications
The continuation application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application, but not an international design application). The inventorship in the continuation application must include at least one inventor named in the prior-filed application, and the continuation application must also claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
Benefit Claim in Specification
The continuation application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application, but not an international design application). The inventorship in the continuation application must include at least one inventor named in the prior-filed application, and the continuation application must also claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
Correcting Benefit Claims
At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office. A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application. In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. Use form paragraph 2.05 to remind applicant of possible continuation status.
Benefit Claim in ADS
At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office. A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application. In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. Use form paragraph 2.05 to remind applicant of possible continuation status.
Priority and Benefit Claims
2. This form paragraph should only be used if it appears that the application may be a continuation, but a benefit claim has not been properly established.
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
This application discloses and claims only subject matter disclosed in prior Application No. [1] , filed [2 ], and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 , 37 CFR 1.78 , and MPEP § 211 et seq .
- Continuation Application Must Include Prior Inventors and Benefit Claim
- Continuation Application Must Include Inventors from Prior Filed Application
- Application Not a Divisional of Provisional
- Continuation Application for Prior-Disclosed Inventions
- Continuation Application Must Not Include New Matter
- Application Not a Continuation of Provisional
Citations
| Primary topic | Citation |
|---|---|
| Provisional Application Benefit | 35 U.S.C. § 119(e) |
| Benefit Claim in Specification Continuation Applications | 35 U.S.C. § 120 |
| Benefit Claim in ADS Correcting Benefit Claims Design Benefit Claims | 37 CFR § 1.313(c) |
| Benefit Claim in ADS Correcting Benefit Claims Design Benefit Claims | 37 CFR § 1.51(b) |
| Benefit Claim in ADS Benefit Claim in Specification Continuation Applications Correcting Benefit Claims Design Benefit Claims | 37 CFR § 1.53(b) |
| Benefit Claim in ADS Correcting Benefit Claims Design Benefit Claims | 37 CFR § 1.53(d) |
| Benefit Claim in Specification Continuation Applications Provisional Application Benefit | 37 CFR § 1.78 |
| Benefit Claim in Specification Continuation Applications Provisional Application Benefit | MPEP § 211 |
| Benefit Claim in ADS Correcting Benefit Claims Design Benefit Claims | Form Paragraph § 2.05 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 201.07 — Continuation Application
Source: USPTO201.07 Continuation Application [R-08.2017]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
*****
- (d) Claims under 35 U.S.C. 120,
121, 365(c), or
386(c) for the benefit
of a prior-filed nonprovisional application, international application, or
international design application. An applicant in a nonprovisional
application (including a nonprovisional application resulting from an
international application or international design application), an
international application designating the United States, or an international
design application designating the United States may claim the benefit of one
or more prior-filed copending nonprovisional applications, international
applications designating the United States, or international design
applications designating the United States under the conditions set forth in
35
U.S.C. 120, 121, 365(c),
or 386(c) and this section.
- *****
- (2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
*****
A continuation application is an application for the invention(s) disclosed in a prior- filed copending nonprovisional application, international application designating the United States, or international design application designating the United States. The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.
The continuation application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application, but not an international design application). The inventorship in the continuation application must include at least one inventor named in the prior-filed application, and the continuation application must also claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “divisional” of the provisional application. See 37 CFR 1.78, especially paragraphs (a)-(c), and MPEP § 211et seq. for requirements and information pertaining to entitlement to the benefit of the filing date of a provisional application.
At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office. A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application. In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. Use form paragraph 2.05 to remind applicant of possible continuation status.
¶ 2.05 Possible Status as Continuation
This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.
Examiner Note:
- 1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
- 2. This form paragraph should only be used if it appears that the application may be a continuation, but a benefit claim has not been properly established.
- 3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “continuation” of the provisional application.