37 CFR § 1.145 — Subsequent presentation of claims for different (MPEP Index) – BlueIron IP
37 CFR § 1.145 Subsequent presentation of claims for different
This page consolidates MPEP guidance interpreting 37 CFR § 1.145, including 14 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
This section discusses the rules governing the subsequent presentation of claims when filing a Continued Prosecution Application (CPA), preventing applicants from switching inventions by presenting independent and distinct claims.
What this section covers
- This section covers the rules for filing a Continued Prosecution Application (CPA) and how to present claims that are consistent with the original disclosure without introducing new matter.
Key obligations
- Applicants cannot obtain continued examination on claims that are independent and distinct from the invention previously claimed.
- Any new claims must be consistent with the original disclosure and not introduce new matter.
Practice notes
- Practitioners should ensure that any new claims in a CPA are consistent with the original disclosure and do not introduce new matter.
- Practitioners are warned against attempting to switch inventions by presenting independent and distinct claims in a CPA, as this is not allowed.
Official MPEP § 1.145 — Subsequent presentation of claims for different
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.145 Subsequent presentation of claims for different invention.
If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144 .
[Revised, 72 FR 46716, Aug. 21, 2007 (implementation enjoined and never became effective); revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009 (to remove changes made by the final rules in 72 FR 46716 from the CFR)]
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- Examination Procedure
- Allowance Practice
- Examiner Action
- Action Types
- Rce Practice
- Section 112
- Section 112A
- New Matter
| MPEP Section | Rules |
|---|---|
| MPEP § 201.06(d) | |
| MPEP § 706.07(b) | |
| MPEP § 706.07(h) | |
| MPEP § 821.03 |