Patent Law FAQ

Proper identification of priority applications is crucial for several reasons:

Proper identification of priority applications is essential to establishing accurate and complete relationships among various patent documents, especially in the context of electronic priority document exchange programs

This means that:

• It ensures accuracy in patent documentation
• It facilitates complete relationships between related patent documents
• It is particularly important for electronic priority document exchange programs

Accurate identification helps maintain the integrity of the patent system and ensures that priority claims are properly recognized and processed.

To learn more:

• priority applications
• patent documentation
• electronic exchange
• patent relationships

The USPTO typically does not send a filing receipt for a Continued Prosecution Application (CPA). This practice is mentioned in MPEP ¶ 2.35, which states:

This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

The reason for this is that a CPA is a continuation of an existing application rather than an entirely new filing. The USPTO communicates the acceptance of the CPA through other means, typically in the first Office action on the CPA. This approach streamlines the process and reduces redundant paperwork.

For more information on USPTO procedures, visit: USPTO procedures.

Amendments to refer to Continued Prosecution Applications (CPAs) as continuation or divisional applications are not allowed because they are unnecessary and can potentially cause confusion. The MPEP ¶ 2.34 explains:

“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”

This means that the CPA itself already serves as the legally required reference to the prior application. Adding additional references through amendments is redundant and could potentially lead to inconsistencies or misinterpretations in the patent record.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on patent law, visit: patent law.

According to MPEP 203.08, information about a patent application’s status can be provided to:

• The applicant
• The applicant’s assignee
• The attorney or agent of record
• Anyone with written authority from one of the above

The MPEP states: “Status information which may be given includes information as to whether the application has been filed, whether the application is awaiting action by the examiner, as well as other matters which do not involve the disclosure of confidential information.”

It’s important to note that the USPTO is prohibited from disclosing certain information to unauthorized parties, such as the date of filing, names of inventors, or specific details about the prosecution of the application.

To learn more:

• patent application status
• confidentiality
• USPTO information disclosure

The USPTO has designated specific offices to handle inquiries from high-level government sources. According to MPEP 203.08(a):

• Office of Policy and International Affairs: Handles inquiries from embassies, the Office of the U.S. Trade Representative, and the Department of State.
• Office of Governmental Affairs: Manages inquiries from Congress and the White House.

These offices are responsible for ensuring that such high-level inquiries are handled appropriately and consistently.

To learn more:

• USPTO
• Office of Policy and International Affairs
• Office of Governmental Affairs
• Official Inquiries

The MPEP ¶ 2.11 mentions several U.S. Code sections relevant to claiming the benefit of an earlier filing date:

This application is claiming the benefit of prior-filed application No.[1] under 35 U.S.C. 120, 121, 365(c), or 386(c).

These sections cover different scenarios:

• 35 U.S.C. 120: Benefit of earlier filing date in the United States
• 35 U.S.C. 121: Divisional applications
• 35 U.S.C. 365(c): Benefit of earlier filing date; national application
• 35 U.S.C. 386(c): Benefit of earlier filing date; international design application

Each of these sections provides specific conditions under which an application can claim the benefit of an earlier filing date.

For more information on earlier filing date, visit: earlier filing date.

For more information on patent law, visit: patent law.

The MPEP provides a table of states (countries) for which the right of priority under 35 U.S.C. 119(a)-(d) is recognized. These countries fall into three categories:

• Parties to the Patent Cooperation Treaty (PCT)
• Parties to the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: “Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized.”

For the most current list of recognized countries, refer to the WIPO website at www.wipo.int/pct/en/paris_wto_pct.html.

The United States recognizes the right of priority for patent applications filed in countries that are:

• Parties to the Patent Cooperation Treaty (PCT)
• Members of the Paris Convention for the Protection of Industrial Property
• Members of the World Trade Organization (WTO)

The MPEP states: Following is a table of states, i.e., countries, with respect to which the right of priority referred to in 35 U.S.C. 119(a) – (d) has been recognized. For the most up-to-date list of recognized countries, refer to the WIPO website.

To learn more:

• recognized countries
• priority claim
• PCT
• Paris Convention
• WTO

For a non-English provisional application, the English translation and accuracy statement must be filed in the provisional application itself, not in the non-provisional application claiming its benefit. MPEP ¶ 2.38 clearly states:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the non-provisional application claiming benefit, you must provide confirmation that these documents were filed in the provisional application. This two-step process ensures proper documentation and compliance with 37 CFR 1.78.

For more information on patent procedure, visit: patent procedure.

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

The location of the benefit claim reference depends on the filing date of the application:

• For applications filed before September 16, 2012: The reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS).
• For applications filed on or after September 16, 2012: The specific reference must be included in an application data sheet (ADS).

The MPEP states: “If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.”

It’s important to note that for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must also include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

For more information on application data sheet, visit: application data sheet.

For more information on divisional, visit: divisional.

According to the MPEP, a petition to restore the benefit of a provisional application should be addressed to:

“Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

It’s important to note that this petition must be filed in the subsequent nonprovisional application or international application designating the United States, not in the provisional application itself. Always ensure you’re following the most current USPTO guidelines for petition submissions, as procedures may be updated over time.

For more information on patent procedure, visit: patent procedure.

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

The location for filing your petition to restore the right of priority depends on the type of application you have. The MPEP provides guidance:

The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application.

Additionally, the MPEP specifies the mailing address for such petitions:

The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Ensure you file the petition in the correct application and send it to the appropriate address to avoid processing delays.

For more information on mailing address, visit: mailing address.

For more information on priority restoration, visit: priority restoration.

The English translation of a non-English provisional application must be filed in the provisional application itself, not in the non-provisional application claiming benefit. According to MPEP ¶ 2.38:

“An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[3].”

Additionally, you must confirm in your current application that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

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

The recommended presentation of foreign application numbers can be found in the WIPO Handbook on Industrial Property Information and Documentation. The MPEP provides specific guidance:

A complete updated list of the recommended presentation of a foreign application number based on the numbering system used by the foreign intellectual property office is maintained by the WIPO and can be found in the online WIPO Handbook on Industrial Property Information and Documentation

To access this information:

• Visit the WIPO website (www.wipo.int/standards/en/)
• Navigate to Part 7: Examples and Industrial Property Offices Practices
• Refer to Part 7.2.1: Presentation of Application Numbers

Additionally, the MPEP mentions a survey of current practices: www.wipo.int/export/sites/www/standards/en/pdf_/07-02-06.pdf

To learn more:

• foreign application numbers
• WIPO handbook
• application number presentation

The USPTO provides additional information about the Priority Document Exchange (PDX) program on its official website. According to the MPEP:

The Office website provides additional information concerning the priority document exchange program (www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx).

This website includes important details such as:

• A list of intellectual property offices participating in the PDX program
• Information necessary for each participating foreign intellectual property office to provide the USPTO with access to foreign applications

Applicants and practitioners are encouraged to visit this resource for the most up-to-date information on the PDX program and its participants.

For those needing information about the former procedures, the MPEP provides guidance: For more information pertaining to practice and procedure under former 37 CFR 1.60, see MPEP § 201.06(a) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/mpep.htm). This archived version of the MPEP contains the detailed procedures that were in place before the regulation was deleted.

To learn more:

• former 37 CFR 1.60
• archived procedures
• MPEP 8th Edition

To learn more:

• former 37 CFR 1.60

For those interested in the historical procedures under former 37 CFR 1.60, the MPEP provides guidance: For more information pertaining to practice and procedure under former 37 CFR 1.60, see MPEP § 201.06(a) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/mpep.htm). This archived version of the MPEP contains detailed information about the procedures that were in place before the rule change, which may be useful for historical reference or for understanding the processing of applications filed before December 1, 1997.

For comprehensive information about reissue applications, you should refer to MPEP Chapter 1400. As mentioned in MPEP 201.05, “A detailed treatment of reissue applications can be found in MPEP Chapter 1400.” This chapter provides in-depth coverage of various aspects of reissue applications, including:

• Eligibility requirements for filing a reissue application
• Types of defects that can be corrected
• Procedures for filing and prosecuting a reissue application
• Examination guidelines for reissue applications
• Special considerations for broadening reissues

By consulting MPEP Chapter 1400, patent attorneys, examiners, and inventors can gain a thorough understanding of the reissue application process and its requirements.

To learn more:

• reissue application information
• MPEP Chapter 1400
• patent correction resources

For those seeking more detailed information on benefit claims under 35 U.S.C. 386(c), the Manual of Patent Examining Procedure (MPEP) provides a specific reference. According to MPEP § 211.01(d):

See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).

This section of the MPEP offers comprehensive guidance on the intricacies of claiming benefit to international design applications, including procedural requirements and practical considerations for patent applicants and examiners.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on benefit claims, visit: benefit claims.

For amended patent applications, it’s important to understand the expected timelines and when it’s appropriate to make a status inquiry:

• Examiners are expected to act on amended applications within two months of receiving them.
• A status inquiry is generally not necessary until 5-6 months have passed without a response from the USPTO.
• If six months elapse without a response, you should inquire to avoid potential abandonment.

The MPEP advises: Amended applications are expected to be taken up by the examiner and an action completed within two months of the date the examiner receives the application. Accordingly, a status inquiry is not in order after reply by the attorney until 5 or 6 months have elapsed with no response from the Office. (MPEP 203.08)

It further states: However, in the event that a six month period has elapsed, and no response from the Office is received, applicant should inquire as to the status of the application to avoid potential abandonment.

For making inquiries, the MPEP recommends: Applicants are encouraged to use Patent Center or Private PAIR to make status inquiries.

To learn more:

• amended patent applications
• status inquiry
• Patent Center
• Private PAIR
• application abandonment

You should file a 37 CFR 1.48 request to correct inventorship in a Continued Prosecution Application (CPA) as soon as you realize there’s a need to add or remove an inventor. This should be done concurrently with or shortly after filing the CPA.

The MPEP ¶ 2.33 indicates:

Any request to add an inventor must be in the form of a request under 37 CFR 1.48.

It’s important to file this request promptly to ensure that the correct inventorship is recorded for your application. Failure to do so may result in the inventorship remaining the same as in the prior application, which could potentially affect the validity of your patent if granted.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

You should file a 37 CFR 1.48 request for a Continued Prosecution Application (CPA) whenever you need to add, remove, or change the order of inventors from the original application.

The MPEP ¶ 2.33 indicates: Any request to add an inventor must be in the form of a request under 37 CFR 1.48. This applies even if you’ve identified the new inventor in the CPA filing documents.

It’s best to file the 37 CFR 1.48 request as soon as you realize there’s a need to correct the inventorship. This ensures that the correct inventors are associated with the application throughout the examination process.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

Form Paragraph 2.35 should be used in specific circumstances during the patent examination process. According to the MPEP ¶ 2.35, this form paragraph is to be used:

in the first Office action of a CPA to advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established.

However, it’s important to note that this form paragraph should not be used in all situations. Specifically:

• It should only be used for design applications, as CPAs are only available for design applications.
• If the request for a CPA in a utility or plant application is improper and has been treated as an RCE (Request for Continued Examination), examiners should use form paragraph 7.42.15 instead.

Examiners should refer to MPEP § 706.07(h) for more information on handling improper CPA requests in utility or plant applications.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on patent examination, visit: patent examination.

An inventor might consider filing a continuation application in several scenarios. The MPEP 201.07 provides guidance on timing:

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.

Common reasons for filing a continuation include:

• To pursue broader or different claims based on the same disclosure
• To address issues raised in the prosecution of the parent application
• To keep the application pending while exploring commercial opportunities
• To submit new evidence or arguments in support of patentability

It’s important to note that the continuation must be filed before the parent application is patented, abandoned, or otherwise terminated.

For more information on patent strategy, visit: patent strategy.

For more information on USPTO, visit: USPTO.

Patent examiners should use MPEP ¶ 2.06 when they encounter an application that appears to qualify as a continuation-in-part (CIP) but lacks a proper benefit claim. The paragraph itself provides guidance:

This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.

Examiners use this paragraph to notify applicants that their application might be eligible for CIP status and to direct them to the proper procedures for claiming the benefit of the prior application’s filing date if desired.

For more information on patent examination, visit: patent examination.

Patent examiners should use the MPEP ¶ 2.01 form paragraph under specific circumstances. The MPEP provides the following guidance:

Examiner Note: […] 2. This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.

This means examiners should use this paragraph when:

• The application appears to contain subject matter that is independent and distinct from a prior application
• The application seems to qualify as a divisional
• The applicant has not yet properly claimed the benefit of the prior application’s filing date

The form paragraph serves as a prompt for the applicant to properly establish the benefit claim if they intend the application to be a divisional.

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

The timing for submitting a specific reference to a prior-filed application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a): The specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371: The specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.

It’s important to note that This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s).

For more information on filing deadline, visit: filing deadline.

For more information on specific reference, visit: specific reference.

For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of:

• Four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f)
• Four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage
• Sixteen months from the filing date of the prior application

The MPEP states: If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of: (1) four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f); (2) four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage; or (3) sixteen months from the filing date of the prior application.

To learn more:

• benefit claim
• time limit
• national stage application
• international application
• 35 U.S.C. 371

To learn more:

• 35 U.S.C. 371

The USPTO may require earlier submission of priority documents in certain circumstances. According to 37 CFR 1.55(g)(2), these circumstances include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

In these cases, the applicant may be required to submit the priority claim and certified copy of the foreign application earlier than the general deadline of the patent grant date.

To learn more:

• priority documents
• early submission
• USPTO requirements
• patent examination

The USPTO may require earlier filing of priority claims and certified copies in certain situations. According to 37 CFR 1.55(g)(2), these situations include:

• When the application is involved in an interference or derivation proceeding
• When necessary to overcome the date of a reference relied upon by the examiner
• When deemed necessary by the examiner

The MPEP explains that these requirements allow the USPTO to address priority issues promptly when they are relevant to ongoing proceedings or examination.

To learn more:

• priority claim timing
• certified copy filing
• USPTO requirements
• interference proceedings

A separate written request is required in specific situations, as outlined in MPEP 215.01:

A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired.

Additionally, a separate request is needed when:

• The foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating office.
• The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

To learn more:

• PDX
• Written Requests
• Foreign Applications
• Patent Procedure

A separate written request for PDX retrieval is needed in two specific situations:

1. When the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating office after the foreign priority has been claimed, as long as the time period set in 37 CFR 1.55 has not expired.
2. When the foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating foreign intellectual property office.

The MPEP provides Form PTO/SB/38 for such requests:

Applicants can use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

A reissue application is necessary to perfect a foreign priority claim in the following situations:

1. When the requirements of 35 U.S.C. 119(a)-(d) or (f) were not satisfied in the patented application or its parent prior to issuance.
2. When the requirements of 37 CFR 1.55 are not met.
3. When the correction sought would require further examination.

The MPEP provides an example: Further examination would be required where grant of the petition would cause the patent to be subject to a different statutory framework, e.g., where the foreign application has a pre-March 16, 2013 filing date in a patent that was examined under the first inventor to file (FITF) provisions of the AIA. In such situations, the filing of a reissue application with a petition for an unintentionally delayed priority claim would be required.

To learn more:

• reissue application
• foreign priority claim
• patent correction
• AIA provisions

A petition is required to correct a benefit claim in the following situations:

• When the benefit claim is filed after the required time period set forth in 37 CFR 1.78.
• When the benefit claim was included elsewhere in the application (e.g., in an oath or declaration) but was not recognized by the Office as shown by its absence on the first filing receipt, and the correction is sought after the expiration of the time period set in 37 CFR 1.78.

The MPEP states: If, however, an applicant includes a benefit claim elsewhere in the application and the claim is not recognized by the Office as shown by its absence on the first filing receipt, the Office will require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the correction is sought after expiration of the time period set in 37 CFR 1.78.

However, a petition is not required for certain corrections, such as changing the relationship of the applications or changing the filing date of a prior-filed application, as long as these corrections are made within the original time period.

To learn more:

• benefit claim
• petition
• correction
• 37 CFR 1.78
• filing receipt

To learn more:

• 37 CFR 1.78

A divisional application is often filed in response to a restriction requirement made by the patent examiner. As stated in the MPEP:

A divisional application is often filed as a result of a restriction requirement made by the examiner.

When an examiner determines that an application contains multiple independent and distinct inventions, they may issue a restriction requirement. The applicant can then elect one invention to pursue in the original application and file a divisional application to pursue the non-elected invention(s).

To learn more:

• divisional application
• restriction requirement
• patent examination procedure

A Continued Prosecution Application (CPA) is acceptable when it meets the requirements set forth in 37 CFR 1.53(d). According to MPEP § 201, the examiner will use specific language to indicate acceptance:

The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established.

It’s important to note that CPAs are now only available for design patent applications. For utility and plant applications, a Request for Continued Examination (RCE) would be used instead.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on patent examination, visit: patent examination.

The USPTO’s timing for retrieving foreign applications under PDX is described in MPEP 215.01:

In general, an attempt to retrieve an eligible foreign application to which priority is claimed in a U.S. application will be made by the USPTO when the application is docketed to an examiner. In any case the USPTO will not attempt electronic retrieval until the Office of Patent Application Processing has completed its review of the application.

Key points about the retrieval timing:

• The first attempt is typically made when the application is assigned to an examiner.
• Retrieval occurs after the Office of Patent Application Processing completes its review.
• Applicants should check the Private PAIR system to confirm successful retrieval.
• A successful retrieval usually takes about one week to complete.

To learn more:

• PDX
• USPTO Procedures
• Foreign Applications
• Retrieval Timing

The status of an application as ‘allowed’ has a specific timeframe. According to the MPEP:

“Its status as an ‘allowed’ application continues from the date of the notice of allowance until it issues as a patent, unless it is withdrawn from issue ( 37 CFR 1.313 ), or becomes abandoned for failure to pay the issue fee and any required publication fee ( 37 CFR 1.314 and 1.316 ).”

In other words, the ‘allowed’ status begins when the notice of allowance is sent and typically ends when the patent is issued. However, this status can be terminated if the application is withdrawn from issue or becomes abandoned due to non-payment of required fees.

To learn more:

• allowed application status
• notice of allowance
• patent issuance
• application withdrawal
• application abandonment

A patent application stops being considered ‘new’ when it receives its first action from the examiner. According to MPEP 203.01:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner.

This implies that once the examiner issues any official communication or action on the merits of the application, such as a non-final rejection or a notice of allowance, the application is no longer considered ‘new’ in the patent examination process.

To learn more:

• new application
• patent examination
• examiner action
• application status

The provisions of 35 U.S.C. 386(a) and (b) became effective for certain types of applications filed on or after May 13, 2015. According to MPEP 213.07:

The provisions of 35 U.S.C. 386(a) and (b) apply to nonprovisional applications, international applications (PCT) and international design applications filed on or after May 13, 2015, and patents issued therefrom. See 37 CFR 1.55(o).

This means that the right of priority under these sections is only applicable to:

• Nonprovisional applications
• International applications (PCT)
• International design applications

These applications must be filed on or after May 13, 2015, to be eligible for the priority rights under 35 U.S.C. 386(a) and (b). The same applies to patents issued from such applications.

For more information on 35 U.S.C. 386, visit: 35 U.S.C. 386.

For more information on effective date, visit: effective date.

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

A continuation application can be filed at various times during the patent application process. According to MPEP 201.07:

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.

This means you can file a continuation application:

• Before the parent application is granted a patent
• Before the parent application is abandoned
• Before proceedings on the parent application are terminated

However, for Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), there are additional timing restrictions:

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.

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

For more information on patent procedure, visit: patent procedure.

Benefit under 35 U.S.C. 386(c) for international design applications can only be claimed in specific types of applications filed on or after May 13, 2015. The MPEP states:

37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.

This means that applications filed before May 13, 2015, cannot claim the benefit of an international design application under 35 U.S.C. 386(c). It’s important for applicants to be aware of this date restriction when considering benefit claims for their patent applications.

To learn more:

• 35 U.S.C. 386(c)
• benefit claim
• international design application
• filing date
• nonprovisional application

To learn more:

• 35 U.S.C. 386(c)

The ability to claim benefit under 35 U.S.C. 386(c) for international design applications is subject to specific timing requirements. According to MPEP § 211.01(d):

37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.

This means that to claim the benefit of an international design application, the claiming application must have been filed on or after May 13, 2015. This date is significant as it marks the implementation of certain provisions of the Patent Law Treaties Implementation Act of 2012.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

For more information on filing date requirements, visit: filing date requirements.

A Request to Delete a Named Inventor can be filed at two specific times for a Continued Prosecution Application (CPA):

1. With the CPA filing: The request can be submitted along with the CPA when it is initially filed.
2. After the CPA filing: If the request is made after the CPA has been filed, it must follow a different procedure.

The MPEP ¶ 2.32 states:

Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.

This means that post-filing requests require additional documentation and must comply with the regulations for correction of inventorship.

A reissue application can be filed when an unexpired patent is found to be defective. The key criteria are:

• The original patent must still be in force (unexpired)
• There must be a defect in the patent that needs correction

It’s important to note that the reissue process is not for extending the term of a patent, but for correcting issues in the existing patent. For more detailed information on the timing and requirements, refer to MPEP Chapter 1400, which provides a comprehensive treatment of reissue applications.

To learn more:

• reissue application timing
• unexpired patent
• patent defect correction

A continuation application can be filed at various stages during the patent application process, as long as the parent application is still pending. The MPEP provides guidance on the timing:

“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.”

It’s important to note that there are some exceptions for specific types of applications, such as continued prosecution applications (CPAs) for design applications, which have additional timing requirements.

To learn more:

• continuation application timing
• patent application process
• CPA
• design applications

According to 37 CFR 1.78(j), benefit claims under 35 U.S.C. 386(c) can only be made in specific types of applications filed on or after May 13, 2015. The MPEP states:

“37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.”

This means that applications filed before May 13, 2015, cannot claim the benefit of an international design application under 35 U.S.C. 386(c). It’s important for applicants to be aware of this date restriction when considering their benefit claims.

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

An international design application designating the United States can claim priority based on several types of prior applications. According to MPEP 213.07:

Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

The types of prior applications that can be used for claiming priority include:

• A prior foreign application
• An international application (PCT) designating at least one country other than the United States
• A prior international design application designating at least one country other than the United States

These priority claims must comply with the conditions and requirements set forth in 35 U.S.C. 119(a)-(d) and 172, as well as the Hague Agreement and its Regulations.

For more information on foreign priority, visit: foreign priority.

For more information on Hague Agreement, visit: Hague Agreement.

For more information on prior applications, visit: prior applications.

Continued Prosecution Applications (CPAs) are limited to specific types of patent applications:

• Design Applications: CPAs are available for design applications filed before May 29, 2000.
• Plant Applications: CPAs can be used for plant patent applications.

It’s important to note that CPAs are not available for utility patent applications filed on or after May 29, 2000. For these applications, applicants should use a Request for Continued Examination (RCE) instead.

The MPEP ¶ 2.34 provides guidance on how CPAs reference prior applications:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.

This means that for eligible applications, the CPA automatically establishes the necessary reference to the prior application without requiring amendments to the specification.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on patent application types, visit: patent application types.

For more information on plant patents, visit: plant patents.

What types of national applications can be filed with the USPTO?

The United States Patent and Trademark Office (USPTO) accepts several types of national applications. These include:

• Utility patent applications: For new and useful processes, machines, articles of manufacture, or compositions of matter.
• Design patent applications: For new, original, and ornamental designs for articles of manufacture.
• Plant patent applications: For new varieties of asexually reproduced plants.
• Provisional patent applications: A temporary application that establishes a filing date but does not mature into an issued patent.

According to MPEP 201.01:

Applications for plant patents, design patents, and utility patents are national applications.

Each type of application has specific requirements and procedures. Utility, design, and plant patent applications can be filed as nonprovisional applications, while provisional applications are only available for utility patents.

For more information on design patent, visit: design patent.

For more information on provisional patent, visit: provisional patent.

For more information on USPTO, visit: USPTO.

Under U.S. patent laws, several types of national applications can be filed. The MPEP 201.01 states:

‘National applications include original (nonprovisional), reissue, and reexamination applications (including supplemental examination proceedings). The original application includes continuation, divisional, and continuation-in-part applications. National applications may be filed under 35 U.S.C. 111(a) or (b), 161, or 171.’

To break this down:

• Original (nonprovisional) applications: Standard utility patent applications
• Reissue applications: To correct errors in already granted patents
• Reexamination applications: To request the USPTO to reexamine an existing patent
• Continuation applications: Based on an earlier-filed application
• Divisional applications: Derived from a parent application to pursue different inventions
• Continuation-in-part applications: Adding new matter to a parent application
• Design patent applications (under 35 U.S.C. 171)
• Plant patent applications (under 35 U.S.C. 161)

For more information on reissue, visit: reissue.

For more information on USPTO, visit: USPTO.

Under 35 U.S.C. 111(a), two types of national applications can be filed:

• Nonprovisional applications: These are regular patent applications that, if granted, can result in an issued patent.
• Provisional applications: These provide a priority date but do not mature into patents without further action.

The MPEP 201.01 states: ‘National applications may be filed under 35 U.S.C. 111(a) as provisional applications under 35 U.S.C. 111(b) or as nonprovisional applications under 35 U.S.C. 111(a).’ Each type has specific requirements and serves different purposes in the patent application process.

For more information on nonprovisional applications, visit: nonprovisional applications.

For more information on patent filing, visit: patent filing.

For more information on USPTO, visit: USPTO.

A reissue application can be used to correct various types of defects in an unexpired patent. While the MPEP 201.05 doesn’t provide an exhaustive list in this section, it does state that a reissue application is for “a patent to take the place of an unexpired patent that is defective.” Common defects that can be addressed through reissue include:

• Errors in the specification or drawings
• Overly broad or narrow claims
• Failure to claim priority correctly
• Inventorship issues

For a more comprehensive list and detailed explanations of correctable defects, refer to MPEP Chapter 1400, which provides a thorough treatment of reissue applications and the types of defects they can address.

To learn more:

• patent defects
• reissue application corrections
• patent errors
• claim amendments

Patent law recognizes several types of continuing applications. According to the MPEP:

A continuing application is a continuation, divisional, or continuation-in-part application filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.

The three main types of continuing applications are:

• Continuation: Pursues additional claims to an invention disclosed in an earlier application.
• Divisional: Separates distinct inventions from a parent application into separate applications.
• Continuation-in-part (CIP): Adds new matter to the disclosure of the earlier application.

Each type serves different purposes in patent prosecution strategy.

For more information on divisional, visit: divisional.

For more information on patent prosecution, visit: patent prosecution.

According to the MPEP, specific types of applications can claim benefit under 35 U.S.C. 386(c). The relevant passage states:

37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.

This means that the following types of applications can claim benefit under 35 U.S.C. 386(c):

• Nonprovisional applications
• International applications
• International design applications
• Patents issuing from the above applications

It’s important to note that these applications must be filed on or after May 13, 2015, to be eligible for claiming this benefit. Provisional applications are notably absent from this list and cannot claim benefit under 35 U.S.C. 386(c).

To learn more:

• 35 U.S.C. 386(c)
• benefit claim
• nonprovisional application
• international application
• international design application

To learn more:

• 35 U.S.C. 386(c)

Continued Prosecution Applications (CPAs) are specifically for design patent applications. The MPEP ¶ 2.34 refers to CPAs in the context of design applications.

The MPEP ¶ 2.34 states: “In bracket 2, insert either –continuation– or –divisional–.”

This indicates that a CPA can be filed as either a continuation or a divisional of a prior design application. It’s important to note that CPAs are no longer available for utility or plant patent applications.

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

For more information on design patents, visit: design patents.

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

A Continued Prosecution Application (CPA) can be filed for specific types of applications. According to MPEP 201.06(d):

Effective July 14, 2003, CPA practice under 37 CFR 1.53(d) is not available for utility and plant applications.

This means that CPAs are limited to:

• Design applications: Applications for design patents can be filed as CPAs.
• Continuation applications: These must be based on an earlier application of the same type (i.e., design).
• Divisional applications: These must also be based on an earlier design application.

It’s important to note that continuation-in-part (CIP) applications cannot be filed as CPAs. Additionally, utility and plant patent applications are no longer eligible for CPA practice since July 14, 2003.

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

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

According to MPEP 201.01, national applications include:

• Original (nonprovisional) applications
• Reissue applications
• Reexamination proceedings

The MPEP specifically states:

‘National applications include original (nonprovisional) applications, reissue applications, and reexamination proceedings.’

Each of these types serves a different purpose in the patent process. Original applications are for new inventions, reissue applications are for correcting errors in existing patents, and reexamination proceedings are for reviewing the validity of granted patents.

For more information on reissue applications, visit: reissue applications.

According to MPEP 203.01, only nonprovisional applications can be considered ‘new’. The section states:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner.

This means that provisional applications, which are place-holder applications that don’t get examined, are not classified as ‘new’ applications under this definition. Only nonprovisional utility, design, or plant patent applications can have the ‘new’ status before they receive their first examiner action.

To learn more:

• new application
• nonprovisional application
• patent types
• application status

During patent prosecution, several types of affidavits or declarations may be filed. MPEP ¶ 2.03 mentions three common types:

“Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecution of the prior application…”

These affidavits serve different purposes:

• 37 CFR 1.130: Declarations of attribution or prior public disclosure
• 37 CFR 1.131: Affidavits of prior invention to overcome cited art
• 37 CFR 1.132: Affidavits traversing rejections or objections

Each of these affidavits provides specific evidence to support the patentability of an invention or to overcome rejections made by the patent examiner.

For more information on patent prosecution, visit: patent prosecution.

MPEP ¶ 2.03 mentions several types of affidavits or declarations that may be submitted during patent prosecution. Specifically, it refers to:

• Affidavits or declarations under 37 CFR 1.130 (Declaration of Attribution or Prior Public Disclosure under the AIA)
• Affidavits or declarations under 37 CFR 1.131 (Affidavit or Declaration of Prior Invention to Overcome Cited Patent or Publication)
• Affidavits or declarations under 37 CFR 1.132 (Affidavits Traversing Rejections or Objections)

These affidavits or declarations are commonly used to overcome rejections or provide evidence during patent prosecution.

For more information on patent prosecution, visit: patent prosecution.

Common types of affidavits or declarations filed in patent applications include those submitted under specific sections of the Code of Federal Regulations. As mentioned in MPEP ¶ 2.03, these include:

• 37 CFR 1.130: Declarations of attribution or prior public disclosure under the AIA
• 37 CFR 1.131: Affidavits of prior invention to overcome cited patents or publications
• 37 CFR 1.132: Affidavits or declarations traversing rejections or objections

These affidavits or declarations serve various purposes in patent prosecution, such as establishing inventorship, overcoming prior art, or addressing examiner rejections.

For more information on patent prosecution, visit: patent prosecution.

To claim the benefit of a prior application’s filing date for a divisional application, applicants must follow specific procedures. The MPEP ¶ 2.01 provides guidance:

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.

This means applicants should:

• Review 35 U.S.C. 120 for statutory requirements
• Consult MPEP § 211 for detailed guidance on claiming benefit
• Follow the procedures outlined in 37 CFR 1.78 for claiming benefit of an earlier-filed application

It’s crucial to properly establish the benefit claim to secure the earlier filing date for the divisional application.

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

For more information on USPTO procedures, visit: USPTO procedures.

Patent examiners should carefully evaluate applications that may potentially be continuations. The MPEP ¶ 2.05 provides guidance:

“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.”

Examiners should look for applications that disclose and claim only subject matter from a prior application and name at least one common inventor. If these conditions are met but a proper benefit claim is missing, examiners may use the specified form paragraph to notify the applicant of the possible continuation status and the need to establish a benefit claim if desired.

Patent examiners should consider several factors when determining if an application may be a continuation. The MPEP ¶ 2.05 provides guidance:

“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.”

Examiners should look for:

• Disclosure of only subject matter from the prior application
• Claims to subject matter disclosed in the prior application
• At least one common inventor with the prior application
• Proper benefit claim to the prior application

If these elements are present but the benefit claim is not properly established, examiners may use the form paragraph to notify the applicant.

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

If the United States Patent and Trademark Office (USPTO) doesn’t receive your priority document through the Priority Document Exchange (PDX) program within the specified time frame, you have options. According to MPEP 215.02(a):

The Office appreciates that an applicant may discover that the Office will not receive a copy of a foreign application through the priority document exchange program until after the expiration of the time frame specified in 37 CFR 1.55(f). In this situation, an applicant who otherwise meets the conditions of 37 CFR 1.55(i) may satisfy the requirement of 37 CFR 1.55(i)(3) by filing a certified copy of the foreign application in the Office within the pendency of the application and before the patent is granted.

If you find yourself in this situation:

1. File a certified copy of the foreign application directly with the USPTO.
2. Ensure this is done during the pendency of your application and before the patent is granted.
3. Consider filing a petition under 37 CFR 1.55(e) or (f) if necessary.

Remember, it’s ultimately the applicant’s responsibility to ensure the priority document is properly filed, even when using the PDX program.

For more information on certified copy, visit: certified copy.

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

For more information on late submission, visit: late submission.

For more information on PDX, visit: PDX.

For more information on priority document exchange, visit: priority document exchange.

If you missed the deadline for filing a benefit claim, you may still be able to claim the benefit by filing a petition for an unintentionally delayed benefit claim. The process differs based on the type of benefit claim:

• For benefit claims under 35 U.S.C. 119(e): File a petition under 37 CFR 1.78(c)
• For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c): File a petition under 37 CFR 1.78(e)

The MPEP states: “If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).”

The petition must include:

1. The reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted)
2. A petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional

The Director may require additional information if there’s a question about whether the delay was unintentional.

For more information on 37 CFR 1.78, visit: 37 CFR 1.78.

For more information on petition fee, visit: petition fee.

For more information on unintentional delay, visit: unintentional delay.

In the first Office action of a Continued Prosecution Application (CPA), examiners should include specific information to advise the applicant about the status of their application. The MPEP ¶ 2.35 provides guidance on this matter:

Use this form paragraph in the first Office action of a CPA to advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established.

This notice is crucial because:

• Applicants are not notified of the abandonment of the parent application
• A filing receipt is not normally sent for a CPA

By including this information, examiners ensure that applicants are fully informed about the status and treatment of their CPA request.

For more information on design patents, visit: design patents.

When applicants receive a Notice of Allowance, they should take specific actions regarding PDX as outlined in MPEP 215.01:

Upon receipt of a Notice of Allowance, applicants should check to see whether the Office has received a copy of the foreign application under the priority document exchange program because successful retrieval of priority documents cannot be guaranteed.

Important steps for applicants:

• Verify that the USPTO has received the foreign priority document.
• If the document hasn’t been received, consider filing a paper certified copy.
• Ensure the priority document is received before the patent is granted.
• Be aware that if a certified copy is filed after the issue fee is paid, the patent won’t include the priority claim unless corrected by a certificate of correction.

It’s crucial to confirm receipt of the priority document to maintain the priority claim in the issued patent.

To learn more:

• Notice of Allowance
• PDX
• Priority Documents
• Patent Issuance

If an applicant receives no response to a status inquiry, the MPEP provides the following guidance:

• The MPEP states: If after a reasonable amount of time no reply has been received, applicants may contact the TC customer service center or CRU.
• For regular patent applications, contact the Technology Center (TC) customer service center at (571) 272-3900.
• For reexamination proceedings, contact the Central Reexamination Unit (CRU) at (571) 272-7705.
• When following up, provide all relevant information, including application number, filing date, and any previous communication references.

It’s important to allow a reasonable time for a response before escalating the inquiry, and to use the appropriate contact channels as specified in the MPEP.

To learn more:

• status inquiries
• follow-up
• Technology Center
• Central Reexamination Unit

When examining a patent application, it’s crucial for the examiner to verify and indicate whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met. These sections relate to the right of priority for foreign applications.

The MPEP instructs: However, the examiner must still indicate in the Office action and on the bib-data sheet whether the conditions of35 U.S.C. 119(a)-(d)or(f)have been met. (MPEP 202)

This means the examiner should:

• Review the foreign priority claim
• Determine if all conditions for the claim have been satisfied
• Indicate the status of the claim in the Office action
• Mark the bib-data sheet accordingly

If the conditions are met, this information will be reflected on the front page of the issued patent and in the Official Gazette listing. For more information on foreign priority claims, see MPEP § 213.

For more information on foreign priority, visit: foreign priority.

For more information on patent examination, visit: patent examination.

When a patent examiner encounters an application that appears to be a divisional but lacks a proper benefit claim, they should follow the guidance provided in MPEP ¶ 2.01. The MPEP states:

“This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.”

In such cases, the examiner should:

1. Recognize that the application may potentially be a divisional based on its content and relationship to a prior application.
2. Note that the applicant has not properly established a benefit claim to the prior application.
3. Use the appropriate form paragraph (as mentioned in MPEP ¶ 2.01) to inform the applicant about the potential divisional status and the need to establish a proper benefit claim.
4. Direct the applicant’s attention to the relevant laws and regulations for claiming benefit, specifically: 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.

By following these steps, the examiner ensures that the applicant is aware of the potential divisional status and has the opportunity to properly establish the benefit claim if desired.

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

To claim priority based on an inventor’s certificate, applicants must meet specific requirements outlined in 37 CFR 1.55(l):

To claim the right of priority on the basis of an application for an inventor’s certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in this section, must include an affidavit or declaration.

The affidavit or declaration must state that:

• The applicant had the option to file for either a patent or an inventor’s certificate in the foreign country
• This option existed for the particular subject matter of the invention

It’s important to note that the affidavit is only required to ascertain the general existence of this option in the foreign country, not to probe into the eligibility of the particular applicant.

To learn more:

• inventor’s certificate
• patent priority
• foreign priority
• affidavit requirements

If you miss the 12-month deadline for claiming the benefit of a provisional application, you have two main options:

1. Delete the claim to the benefit of the prior-filed provisional application.
2. File a petition to restore the benefit of the provisional application.

The MPEP states:

“Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This petition must be filed in the subsequent application and include specific requirements, such as a reference to the provisional application, a petition fee, and a statement that the delay was unintentional.

For more information on patent procedure, visit: patent procedure.

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

The timeframe for receiving a Notice of Allowance (PTOL-85) after a Notice of Allowability (Form PTOL-37) is generally within three months. However, if you don’t receive the Notice of Allowance within this period, it may be appropriate to make a status inquiry.

The MPEP states: A Notice of Allowability, Form PTOL-37, is routinely mailed in every application determined to be allowable. Thus, the mailing of a form PTOL-37 in addition to a formal Notice of Allowance and Fee(s) Due (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant may believe the new application may have been passed to issue on the first examination. (MPEP 203.08)

However, the MPEP also notes an exception: As an exception, a status inquiry would be appropriate where a Notice of Allowance (PTOL-85) is not received within three months from receipt of form PTOL-37.

If you haven’t received your Notice of Allowance after three months from receiving the Notice of Allowability, it’s advisable to check the status of your application through Patent Center or contact the Application Assistance Unit.

To learn more:

• Notice of Allowance
• Notice of Allowability
• patent application timeline
• status inquiry
• PTOL-85
• PTOL-37

The transition application statement is a requirement for certain applications that bridge the pre-AIA and AIA periods. Here are the key points:

• It applies to nonprovisional applications filed on or after March 16, 2013, that claim priority to a foreign application filed before March 16, 2013.
• The statement is required if the application contains or contained a claim to an invention with an effective filing date on or after March 16, 2013.
• The applicant must provide this statement within a specified time period.
• International design applications are exempt from this requirement.

As stated in the MPEP: If a nonprovisional application filed on or after March 16, 2013, claims priority to a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date (as defined in 35 U.S.C. 100(i)) on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. This requirement helps the USPTO determine which law applies to the application.

To learn more:

• transition application statement
• AIA
• pre-AIA
• foreign priority
• effective filing date

The timeliness requirement for priority documents in the PDX program is crucial for patent applicants. MPEP 215.02(a) states:

“If the priority document is retrieved after the application is allowed, the patent will not include the priority claim unless the applicant promptly files a request for a Certificate of Correction under 35 U.S.C. 255 and 37 CFR 1.323.”

Key points about the timeliness requirement:

• Priority documents should be retrieved before the application is allowed
• If retrieved after allowance, a Certificate of Correction is required
• Applicants should monitor the retrieval status and take action if necessary

To learn more:

• timeliness requirement
• PDX program
• priority documents
• patent allowance
• Certificate of Correction

The time period for filing a priority claim in an international design application designating the United States depends on whether it’s a nonprovisional international design application or not. According to MPEP 213.07:

In an international design application designating the United States, the claim for priority may be made in accordance with the Hague Agreement and the Hague Agreement Regulations.

For nonprovisional international design applications, the MPEP states:

In a nonprovisional international design application, the priority claim and certified copy must be furnished in accordance with the time period and other conditions set forth in paragraph (g) of this section.

This refers to 37 CFR 1.55(g), which generally requires the priority claim to be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. However, it’s important to consult the specific regulations and the Hague Agreement for precise deadlines and requirements, as they may vary depending on the specific circumstances of the application.

For more information on Hague Agreement, visit: Hague Agreement.

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

What is the time period for correcting a benefit claim under 37 CFR 1.78?

The time period for correcting a benefit claim under 37 CFR 1.78 is crucial for patent applicants. According to MPEP 211.02(a):

The time period for making a claim for benefit of a prior-filed application under 37 CFR 1.78(a)(3) and 37 CFR 1.78(d)(3) is specified in 37 CFR 1.78(a)(4) and 37 CFR 1.78(d)(3).

The specific time periods are:

• For nonprovisional applications: The later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior application
• For design applications: The later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior application
• For international applications entering the national stage: The time period in 37 CFR 1.55 for claiming priority to foreign applications applies

It’s important to note that if you miss these deadlines, you may need to file a petition under 37 CFR 1.78(c) or (e) to accept an unintentionally delayed benefit claim.

To learn more:

• benefit claim
• time period
• 37 CFR 1.78
• patent application
• correction

To learn more:

• 37 CFR 1.78

For international design applications designating the United States, there is generally no specific time limit for submitting a certified copy of the priority document. The MPEP 213.07 explains:

‘In accordance with Hague Agreement Rule 7(5)(f), a copy of the priority document may be submitted to the International Bureau within three months from the date of filing of the international design application. The copy of the priority document so submitted will be considered to satisfy the requirement for a certified copy of the priority document in accordance with 37 CFR 1.55(m).’

However, it’s important to note that if the USPTO requires a certified copy for specific reasons (e.g., to overcome a reference), you may need to submit it within a specified timeframe as requested by the Office.

To learn more:

• time limit
• certified copy
• priority document
• international design application

What is the time limit for submitting a certified copy of a foreign application for priority claim?

The time limit for submitting a certified copy of a foreign application for a priority claim depends on the specific circumstances of your application. According to MPEP 213.04:

The time period for filing a certified copy of the foreign application in the United States application (or written statement) is no later than the date the issue fee is paid.

However, there are some exceptions and additional considerations:

• If you file the priority claim within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application, you may not need to file a certified copy immediately.
• If the foreign application was filed in a foreign intellectual property office participating in a priority document exchange agreement with the USPTO, the exchange may satisfy the certified copy requirement.
• In some cases, an interim copy of the foreign application or a statement that the copy was previously filed may be sufficient.

Note: While it’s possible to file the certified copy after paying the issue fee, it requires an additional processing fee and must be done before the patent is granted. To avoid complications and extra fees, it’s best to submit the certified copy as early as possible during the application process.

To learn more:

• certified copy
• foreign application
• priority claim
• time limit
• issue fee

The time limit for submitting a benefit claim depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.
• For national stage applications under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced, four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application.

As stated in MPEP 211.02: This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c).

For more information on national stage application, visit: national stage application.

For more information on time limit, visit: time limit.

For utility or plant applications filed under 35 U.S.C. 111(a), the benefit claim must be made during the pendency of the application and within the later of:

• Four months from the actual filing date of the later-filed application, or
• Sixteen months from the filing date of the prior-filed application

As stated in the MPEP: If the application is a utility or plant application filed under 35 U.S.C. 111(a), the benefit claim of the prior application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) must be made during the pendency of the application and within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application.

To learn more:

• benefit claim
• time limit
• utility application
• plant application
• 35 U.S.C. 111(a)

To learn more:

• 35 U.S.C. 111(a)

The time limit for filing a U.S. nonprovisional application claiming priority to a foreign application is generally 12 months from the filing date of the foreign application. For design applications, the time limit is 6 months.

As stated in the MPEP, The United States nonprovisional application must be filed not later than twelve months (six months in the case of a design application) after the date on which the foreign application was filed, unless the right of priority has been restored. (MPEP 213.03)

It’s important to note that this period is subject to certain provisions, such as the extension to the next business day if the deadline falls on a weekend or federal holiday.

To learn more:

• Priority claim
• Foreign application
• Nonprovisional application
• Filing deadline

The time limit for filing a request to retrieve a foreign application through the Priority Document Exchange (PDX) program is specified in 37 CFR 1.55(i)(4). According to the MPEP:

The request must be filed within the later of sixteen months from the filing date of the prior foreign application, four months from the actual filing date of an application under 35 U.S.C. 111(a), four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) (§ 1.491(a)), or four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or the request must be accompanied by a petition under paragraph (e) or (f) of this section.

It’s important to note that if you miss this deadline, you may need to file a petition to accept a delayed priority claim or submit a certified copy of the foreign application directly.

To learn more:

• Priority Document Exchange
• Time Limit
• Foreign Application Retrieval
• Patent Application

There is no specific time limit for filing a reissue application. According to MPEP 201.05, ‘A reissue application can be filed at any time during the enforceability of a patent.’ This means that as long as the original patent is still enforceable, a reissue application can be filed.

However, it’s important to note that there are limitations on what can be claimed in a reissue application based on when it’s filed:

• If filed within two years from the grant of the original patent, both narrowing and broadening reissue claims are permitted.
• If filed more than two years from the grant of the original patent, only narrowing reissue claims are allowed.

The MPEP states: ‘A broadening reissue application filed on or after September 16, 2012 must be applied for by all of the inventors (or alternatively the assignee of the entire interest), and the application must be filed within two years from the grant of the original patent.’

To learn more:

• reissue application
• time limit
• enforceability
• broadening reissue
• narrowing reissue

When filing a reissue application to correct a priority claim, it’s crucial to adhere to the time limits set by law. The MPEP specifies:

‘The reissue application must be filed within the time period set forth in 35 U.S.C. 119(a)-(d) or (f).’

This means that the reissue application must typically be filed within 12 months from the filing date of the foreign application. However, there may be exceptions or additional considerations depending on specific circumstances. It’s advisable to consult with a patent attorney or the USPTO directly for guidance on your particular situation.

The time limit for filing a petition to accept a delayed benefit claim depends on the type of application:

• For nonprovisional applications: The petition must be filed within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application.
• For design applications: The petition must be filed within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application.
• For international applications entering the national stage under 35 U.S.C. 371: The time limit is four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f).

As stated in MPEP 211.04: “If the later-filed application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, this period is 4 months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f).”

To learn more:

• delayed benefit claim
• petition time limit
• national stage applications
• nonprovisional applications
• design applications

A nonprovisional application claiming the benefit of a provisional application under 35 U.S.C. 119(e) must be filed within 12 months after the provisional application’s filing date, unless the benefit has been restored. The MPEP states:

“When a later-filed application is claiming the benefit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed, unless the benefit of the provisional application has been restored.”

If the 12-month deadline falls on a Saturday, Sunday, or federal holiday in Washington, D.C., the nonprovisional application can be filed on the next business day.

To learn more:

• provisional application
• nonprovisional application
• filing deadline
• patent benefit

What is the time limit for filing a divisional application?

There is no specific time limit for filing a divisional application, but there are important considerations that effectively create a practical time frame:

1. Parent Application Status: The divisional application must be filed while the parent application is still pending. Once the parent application is either abandoned or issued as a patent, it’s no longer possible to file a divisional from it.
2. Priority Claim: To claim the benefit of the parent application’s filing date, the divisional must be filed within the time periods specified in 35 U.S.C. 120, 121, 365(c), or 386(c).
3. Patent Term: The 20-year patent term is calculated from the earliest non-provisional U.S. filing date. Filing a divisional later in the parent’s pendency will result in a shorter potential patent term for the divisional.

The MPEP 201.06 states:

A divisional application is often filed as a result of a restriction requirement made by the examiner.

While this doesn’t specify a time limit, it implies that divisional applications are typically filed in response to office actions during the examination process. Applicants should consider filing a divisional promptly after receiving a restriction requirement to ensure they don’t miss any deadlines and to maximize the potential patent term.

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

For more information on filing deadline, visit: filing deadline.

The time limit for filing a delayed claim for foreign priority after patent issuance is specified in 37 CFR 1.55(g). According to MPEP 216.01:

‘The time period set in 37 CFR 1.55(g) for filing a claim for priority and the certified copy required under 37 CFR 1.55(f) is the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.’

However, for patents that have already been issued, the claim must be filed within the period set forth in 37 CFR 1.55(g). This typically means that the claim should be filed as soon as possible after realizing the oversight, as any delay beyond the statutory period would require explanation and potentially affect the grant of the petition.

The time limit for filing a certified copy of a foreign application depends on the type of application:

1. For applications under 35 U.S.C. 111(a): A certified copy of the foreign application must be filed within the later of four months from the actual filing date of the application, or sixteen months from the filing date of the prior foreign application, as stated in 37 CFR 1.55(f)(1).
2. For applications under 35 U.S.C. 371 (national stage applications): A certified copy of the foreign application must be filed within the time limit set forth in the PCT and the Regulations under the PCT, as per 37 CFR 1.55(f)(2).

If these time limits are not met, a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in § 1.17(g) must accompany the certified copy.

To learn more:

• certified copy
• foreign application
• time limit
• 37 CFR 1.55

To learn more:

• 37 CFR 1.55

For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) sets the time limit for filing a certified copy of the foreign application. The certified copy must be filed within the later of:

• Four months from the actual filing date of the application, or
• Sixteen months from the filing date of the prior foreign application

This time limit does not apply to design applications. For international applications entering the national stage under 35 U.S.C. 371, the time limit is set forth in 37 CFR 1.55(f)(2).

It’s important to note that there are exceptions to these time limits, as provided in 37 CFR 1.55(h), (i), and (j).

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

For more information on time limit, visit: time limit.

For applications filed under 35 U.S.C. 111(a) on or after March 16, 2013, 37 CFR 1.55(f)(1) requires that a certified copy of the foreign application be filed within the later of:

• Four months from the actual filing date of the application, or
• Sixteen months from the filing date of the prior foreign application

This time period does not apply to design applications. There are three exceptions to this requirement, as outlined in 37 CFR 1.55(h), (i), and (j).

To learn more:

• foreign priority
• certified copy
• filing deadline
• patent application

The time limit for filing a benefit claim depends on the type of application:

• For applications filed under 35 U.S.C. 111(a), the reference must be submitted within the later of:
  • Four months from the actual filing date of the application, or
  • Sixteen months from the filing date of the prior application
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the reference must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on time limit, visit: time limit.

The time limit for claiming benefit of a prior application depends on the type of application:

• For utility or plant applications filed under 35 U.S.C. 111(a), the benefit claim must be made within the later of:
  • Four months from the actual filing date of the later-filed application, or
  • Sixteen months from the filing date of the prior-filed application
• For nonprovisional applications entering the national stage from an international application under 35 U.S.C. 371, the benefit claim must be made within the later of:
  • Four months from the date on which the national stage commenced
  • Four months from the date of the initial submission to enter the national stage
  • Sixteen months from the filing date of the prior application

As stated in the MPEP: “This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c) unless a petition to accept an unintentionally delayed benefit claim is granted.”

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

For more information on 35 U.S.C. 371, visit: 35 U.S.C. 371.

For more information on time limit, visit: time limit.

The statement requirement for transition applications was introduced as part of the implementation of the first inventor to file provisions of the America Invents Act (AIA). Transition applications are:

• Nonprovisional applications filed on or after March 16, 2013
• Applications that claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013

The statement requirement is outlined in 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6). As stated in the MPEP:

The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect (unless the later-filed application is a nonprovisional international design application).

The statement must be provided within specified time limits. Applicants are not required to provide the statement if they reasonably believe the application does not contain claims with an effective filing date on or after March 16, 2013.

For more information on America Invents Act, visit: America Invents Act.

For more information on first inventor to file, visit: first inventor to file.

For more information on transition applications, visit: transition applications.

For a Continued Prosecution Application (CPA), the specific reference requirement under 35 U.S.C. 120 is satisfied by the CPA request itself. According to MPEP § 201.06(d):

“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”

This means that when you file a CPA request, it automatically serves as the required reference to the prior application under 35 U.S.C. 120. No additional amendments or references in the specification are necessary to establish this connection.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.”

This means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

The Transco Products decision is significant in determining benefit claims because it established that a later-filed application does not need to use the exact same words as the prior-filed application to satisfy the written description requirement. According to MPEP 211.05:

‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus). While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error in the specification, but also recognize the appropriate correction. In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971).’

This means that the USPTO will consider whether the prior-filed application provides sufficient support for the claims in the later-filed application, even if the exact wording is different, as long as the support is express, implicit, or inherent in the original disclosure.

To learn more:

• Transco Products
• benefit claims
• written description
• express disclosure
• implicit disclosure
• inherent disclosure

The term ‘original application’ has a specific meaning in patent law, as outlined in MPEP 201.02:

‘Original’ application is used in the patent statutes and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application.

This definition is significant because it distinguishes original applications from reissue applications, which are used to correct errors in already-granted patents. Original applications encompass:

• First-time filings of new inventions
• Continuing applications (continuations, divisionals, and continuations-in-part)

Understanding this term is crucial for patent applicants and examiners, as it affects how an application is processed and what rights it may claim, particularly in terms of priority dates and the scope of patent protection.

For more information on patent application types, visit: patent application types.

For more information on patent procedure, visit: patent procedure.

What is the significance of the term ‘nonprovisional’ in patent applications?

The term ‘nonprovisional’ in patent applications is significant because it distinguishes these applications from provisional applications:

• Examination: Nonprovisional applications undergo substantive examination by the USPTO, while provisional applications do not.
• Patent Grant: Only nonprovisional applications can mature into granted patents.
• Duration: Nonprovisional applications have a standard 20-year term from the filing date, while provisional applications expire after 12 months.
• Content Requirements: Nonprovisional applications must include formal patent claims and other specific elements not required in provisional applications.

The MPEP 201.01 mentions nonprovisional applications in the context of original applications: ‘Original applications include all applications other than reissue applications. Original applications may be nonprovisional or provisional.’

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

For more information on patent examination, visit: patent examination.

For more information on patent grant, visit: patent grant.

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

What is the significance of the term ‘copending’ in continuation applications?

The term ‘copending’ is crucial in the context of continuation applications. According to MPEP 201.07:

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 significance of ‘copending’ is as follows:

• Timing: It means that the continuation application must be filed before the prior application is patented, abandoned, or terminated.
• Continuous chain: It ensures a continuous chain of pending applications, maintaining the priority date of the original filing.
• Benefit claims: Copendency is required for a continuation to claim the benefit of the earlier filing date of the parent application.

If applications are not copending, the continuation may lose the benefit of the earlier filing date, potentially affecting patentability if intervening prior art exists.

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

For more information on patent procedure, visit: patent procedure.

What is the significance of the term ‘carved out’ in relation to divisional applications?

The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.”

The significance of ‘carved out’ includes:

• It implies that the divisional application is derived from a portion of the parent application.
• The divisional application focuses on a specific invention or set of claims that are distinct from those in the parent application.
• The subject matter in the divisional is entirely based on the disclosure in the parent application.
• No new matter can be added to the divisional application beyond what was disclosed in the parent.

This term emphasizes that while the divisional application is separate, it is intrinsically linked to the parent application’s original disclosure, ensuring that the applicant doesn’t gain an unfair advantage by introducing new subject matter.

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

For more information on invention disclosure, visit: invention disclosure.

For more information on patent filing, visit: patent filing.

The date September 21, 2004, is significant in relation to 37 CFR 1.57(b) because it marks the effective date of the provisions now contained in this regulation. The MPEP states that one reason an amendment might not comply with 37 CFR 1.57(b) is if the present application was filed before September 21, 2004, the effective date of the provisions now in 37 CFR 1.57(b).

This means that applications filed before this date cannot use the incorporation by reference procedure outlined in 37 CFR 1.57(b) to add inadvertently omitted material. For such applications, different rules and procedures would apply for addressing omitted material.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

For more information on effective date, visit: effective date.

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

What is the significance of the Paris Convention in foreign priority claims?

The Paris Convention plays a crucial role in foreign priority claims for patent applications. Its significance includes:

• Establishing the right of priority for patent applications among member countries.
• Allowing applicants to file in multiple countries while maintaining the original filing date.
• Providing a 12-month priority period for utility patents (6 months for design patents).
• Ensuring equal treatment of foreign and domestic applicants in member countries.

According to MPEP 213: “The right of priority is defined in Article 4 of the Paris Convention for the Protection of Industrial Property and is based on the first filing in a Paris Convention country.” This convention facilitates international patent protection by allowing inventors to secure priority dates across multiple jurisdictions.

The Paris Convention plays a crucial role in international patent applications. As stated in MPEP 213.01:

The right of priority under the Paris Convention for the Protection of Industrial Property (Paris Convention) is recognized in the United States.

This means that applicants can claim priority based on an earlier filing in any Paris Convention member country. The Paris Convention facilitates patent protection across multiple countries by allowing a grace period for filing in other member nations while maintaining the priority date of the first filing.

To learn more:

• Paris Convention
• priority rights
• international patent applications

What is the significance of the four-month time period in filing a certified copy?

The four-month time period is significant in filing a certified copy of a foreign application for priority claims. According to MPEP 213.04, “If the certified copy is not filed within the four-month period, the certified copy must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee.” This means that if you file the certified copy within four months of the actual filing date of the application (or entry into the national stage for PCT applications), you don’t need to provide any explanation or pay additional fees. However, if you miss this four-month window, you’ll need to file a petition explaining the delay and pay an additional fee. This rule encourages prompt filing of priority documents and helps streamline the examination process.

To learn more:

• certified copy
• four-month period
• petition
• good cause
• delay

What is the significance of the four-month and sixteen-month time periods for filing a priority claim?

The four-month and sixteen-month time periods are crucial deadlines for filing a priority claim in a U.S. patent application. According to MPEP 214.01:

“The claim for priority must be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application in an original application filed under 35 U.S.C. 111(a).”

These time periods are significant because:

• They provide applicants with a window to properly claim priority to a foreign application.
• The four-month period starts from the U.S. filing date, giving applicants time to prepare and submit the priority claim after filing their U.S. application.
• The sixteen-month period from the foreign filing date ensures that priority claims are made within a reasonable time frame relative to the original foreign filing.
• Filing within these periods allows for the priority claim to be considered timely without requiring additional petitions or fees.

It’s important to note that failing to meet these deadlines may result in the need for a petition to accept an unintentionally delayed priority claim under 37 CFR 1.55(e), which involves additional requirements and fees.

The filing date mentioned in MPEP ¶ 2.05 is significant because it establishes the priority date for the continuation application. The MPEP states:

“This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application.” (MPEP ¶ 2.05)

The significance of the filing date [2] includes:

• Establishing the priority date for the continuation application
• Determining the relevant prior art for examination
• Calculating patent term adjustments
• Assessing eligibility for certain types of patent term extensions

By referencing the filing date of the prior application, the continuation application can benefit from the earlier filing date, potentially providing an advantage in terms of patentability and patent term.

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

What is the significance of the filing date in a divisional application?

The filing date of a divisional application is crucial for several reasons:

• Benefit of earlier filing date: A divisional application is entitled to the benefit of the filing date of the prior-filed application, as stated in MPEP 201.06(c): ‘A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed before the patenting or abandonment of or termination of proceedings on the prior-filed application.’
• Prior art considerations: The earlier filing date can be used to overcome prior art references that might otherwise be applicable.
• Patent term calculations: The filing date may affect the calculation of the patent term.
• Priority claims: It establishes the basis for any priority claims to foreign applications.

It’s important to note that the divisional application must be filed while the parent application is still pending to claim the benefit of the earlier filing date.

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

For more information on patent term, visit: patent term.

For more information on prior art, visit: prior art.

The filing date of a Continued Prosecution Application (CPA) is significant for several reasons. In the context of inventorship, the MPEP ¶ 2.33 mentions:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

The filing date [2] is important because:

• It establishes the effective date for the CPA.
• It determines the timeline for filing certain documents, such as inventor oaths or declarations.
• It affects the calculation of patent term adjustment.
• It’s used as a reference point for determining whether changes to inventorship were properly requested.

Always keep the CPA filing date in mind when managing patent application procedures and deadlines.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

What is the significance of the filing date in a continuation-in-part application?

The filing date of a continuation-in-part (CIP) application is crucial for determining the effective date of certain disclosures. According to MPEP 201.08:

“The effective filing date of a claimed invention in a CIP application is determined on a claim-by-claim basis and not an application-by-application basis.”

This means:

• Subject matter carried over from the parent application retains the parent’s filing date.
• New matter introduced in the CIP receives the filing date of the CIP application.
• Claims in the CIP are evaluated individually to determine which filing date applies based on their content.

Understanding this distinction is crucial for patent practitioners when assessing prior art and determining the scope of protection for inventions disclosed in CIP applications.

To learn more:

• CIP
• filing date
• effective date
• prior art
• patent protection

What is the significance of the effective filing date in patent applications?

The effective filing date is a crucial concept in patent law that determines which prior art can be used against a patent application. According to MPEP 2152:

The effective filing date of a claimed invention is used to determine what qualifies as prior art that may be used to reject the claims of the application.

Key points about the effective filing date:

• It can be the actual filing date of the application or an earlier date if the application claims priority to a prior-filed application.
• For AIA applications, it determines which version of 35 U.S.C. 102 applies (pre-AIA or AIA).
• It affects the scope of prior art that can be cited against the application.
• Different claims within the same application may have different effective filing dates.

Understanding the effective filing date is essential for both patent applicants and examiners in assessing patentability and managing priority claims.

For more information on effective filing date, visit: effective filing date.

For more information on prior art, visit: prior art.

The change from 37 CFR 1.60 to 37 CFR 1.53(b) represents a significant shift in the procedure for filing continuation and divisional applications. After December 1, 1997, all such applications are processed under 37 CFR 1.53(b), which may have different requirements and procedures. Patent applicants need to be aware of this change to ensure they are following the correct, current procedures when filing continuation or divisional applications.

To learn more:

• 37 CFR 1.53(b)
• patent application procedure changes
• continuation applications
• divisional applications

To learn more:

• 37 CFR 1.53(b)

What is the significance of the Application Data Sheet (ADS) in correcting or adding a benefit claim?

The Application Data Sheet (ADS) plays a crucial role in correcting or adding a benefit claim after filing. According to MPEP 211.02(a):

A corrected ADS (along with a petition under 37 CFR 1.78 and the petition fee) is required to correct a benefit claim if the benefit claim was not included on the original ADS.

This means that if you need to correct or add a benefit claim that wasn’t included in the original ADS, you must submit:

• A corrected ADS
• A petition under 37 CFR 1.78
• The required petition fee

The corrected ADS should contain all of the information from the original ADS, with the changes to the benefit claim marked in accordance with 37 CFR 1.76(c).

To learn more:

• ADS
• benefit claim
• patent application
• correction
• petition

What is the significance of the Access Code on the Request to Retrieve Electronic Priority Application?

The Access Code on the Request to Retrieve Electronic Priority Application plays a crucial role in the priority document exchange process. The MPEP states:

‘The Request to Retrieve Electronic Priority Application must include the Access Code assigned to that application by the applicant or applicant’s representative.’

This Access Code is essential because it allows the USPTO to securely retrieve the priority document from the foreign office. Without the correct Access Code, the USPTO cannot access and retrieve the document, which could lead to issues with establishing priority for your application.

It’s important to ensure that the Access Code you provide on the Request form is accurate and matches the one assigned by the foreign office. Incorrect or missing Access Codes can result in delays or failures in retrieving the priority document, potentially affecting your patent application’s priority claim.

What is the significance of the ‘time period set in 37 CFR 1.55’ for filing priority claims?

The time period set in 37 CFR 1.55 is crucial for securing your priority claim in a patent application. MPEP 213.04 states: ‘The time period set in 37 CFR 1.55 for filing a priority claim and certified copy cannot be extended.’ This strict deadline ensures that priority claims are made promptly, allowing for efficient examination and preventing delays in the patent process. Failing to meet this deadline can result in the waiver of your priority claim, potentially affecting the patentability of your invention if intervening prior art exists. It’s essential to be aware of and adhere to this time period to protect your invention’s priority date.

To learn more:

• 37 CFR 1.55
• priority claim
• filing deadline
• patent application

To learn more:

• 37 CFR 1.55

What is the significance of the ‘right of priority’ in international patent applications?

The ‘right of priority’ is a crucial concept in international patent applications. According to MPEP 211.01(c), ‘The right of priority is defined in 35 U.S.C. 119(a).’ This right allows applicants to claim priority from an earlier filed application, which can be beneficial in establishing the novelty and non-obviousness of an invention. Specifically, the MPEP states:

‘Under certain circumstances, the right of priority may be restored even if the filing is made after the 12-month priority period. See 37 CFR 1.55(c).’

This provision offers flexibility to applicants who may have missed the standard priority deadline, potentially preserving their patent rights in certain situations.

To learn more:

• right of priority
• international patent applications
• 35 U.S.C. 119(a)
• 37 CFR 1.55(c)

To learn more:

• 35 U.S.C. 119(a)
• 37 CFR 1.55(c)

What is the significance of the ‘original disclosure’ in a divisional application?

The ‘original disclosure’ is crucial in a divisional application because it defines the scope of what can be included in the divisional. According to MPEP 201.06:

‘The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, i.e., the original disclosure of the parent or original nonprovisional application or provisional application.’

This means that no new matter can be added to a divisional application. The divisional must rely entirely on the content disclosed in the original parent application. This ensures that the divisional application doesn’t extend beyond the scope of what was initially invented and disclosed.

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

For more information on new matter, visit: new matter.

What is the significance of the ‘365(c)’ filing date in claiming benefit of a nonprovisional application?

The ‘365(c)’ filing date is crucial when claiming the benefit of a nonprovisional application that was filed as a PCT application and entered the national stage. According to MPEP 211.01(b):

‘If the prior nonprovisional application is an international application that was filed as a PCT application and entered the national stage under 35 U.S.C. 371, the 365(c) filing date of the international application is the filing date to be used in determining copendency.’

This means that when determining if applications are copendent for benefit claims, the PCT filing date (365(c) date) is used rather than the U.S. national stage entry date. This can be significant for maintaining continuous priority chains in international patent applications.

To learn more:

• 365(c) filing date
• PCT applications
• national stage entry
• copendency
• benefit claims

Regional patent offices play a crucial role in the international patent system, particularly for priority claims. MPEP 213.01 recognizes several regional patent offices whose applications can serve as the basis for priority claims in the United States. These include:

• European Patent Office (EPO)
• Eurasian Patent Office (EAPO)
• African Intellectual Property Organization (OAPI)
• African Regional Intellectual Property Organization (ARIPO)

The significance of these regional offices is explained in MPEP 213.01:

‘The United States will recognize claims for right of priority based on applications filed under such multilateral international agreements as the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).’

This recognition allows applicants to file a single application with a regional patent office and still maintain priority rights in the United States. It streamlines the international patent application process and provides more flexibility for inventors seeking protection in multiple countries.

Filing dates are crucial in patent law as they establish priority and can affect the patentability of an invention. The MPEP 201.02 discusses various application types and their relationship to filing dates:

• Original applications (including first filings and continuing applications) generally retain their filing date for priority purposes.
• Continuing applications (continuations, divisionals, and continuations-in-part) can benefit from the filing date of the parent application under specific conditions outlined in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
• Substitute applications, however, do not obtain the benefit of the filing date of the prior application.

The MPEP states:

A substitute application does not obtain the benefit of the filing date of the prior application.

This emphasizes the importance of maintaining active applications and understanding the implications of different application types on priority dates.

For more information on continuing applications, visit: continuing applications.

For more information on patent applications, visit: patent applications.

What is the significance of copendency in continuation applications?

Copendency is a crucial requirement for continuation applications. It refers to the condition where the continuation application is filed before the prior application is patented, abandoned, or terminated. The MPEP 201.07 states:

‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement; and the later-filed application must be copending with the prior application.’

The significance of copendency includes:

• Maintaining Priority: It ensures the continuation application can claim the benefit of the earlier filing date.
• Unbroken Chain: It maintains an unbroken chain of applications, which is essential for establishing a continuous line of priority.
• Preventing Loss of Rights: Filing a continuation before the parent application is concluded prevents the loss of patent rights that could occur if new claims are needed after the parent application is no longer pending.

Failure to maintain copendency can result in the loss of the earlier priority date, potentially affecting the patentability of the invention if intervening prior art exists.

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

For more information on copendency, visit: copendency.

For more information on patent priority, visit: patent priority.

Claiming benefit to a prior application is crucial for divisional applications as it allows the divisional to retain the earlier filing date of the parent application. This can be significant for:

• Establishing priority over potential prior art
• Extending the potential patent term
• Maintaining continuity in the patent family

The MPEP ¶ 2.01 states:

“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.”

To properly claim this benefit, applicants must comply with the requirements set forth in 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211, which include making a proper benefit claim and ensuring continuity of disclosure.

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

For more information on patent law, visit: patent law.

Adding new disclosure in a continuation-in-part (CIP) application is a key characteristic that distinguishes it from other types of continuing applications. The MPEP ¶ 2.06 describes a CIP as an application that:

repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application.

The significance of adding new disclosure includes:

• Allowing applicants to expand on their original invention with new developments or improvements
• Potentially broadening the scope of patent protection
• Creating a new filing date for the added material, which can be crucial for overcoming prior art
• Possibly extending the patent term for the new material

However, it’s important to note that the new disclosure will not benefit from the earlier filing date of the prior application. This can affect patentability if relevant prior art emerges between the filing dates of the original application and the CIP.

For more information on prior art, visit: prior art.

What is the significance of a national application being made under 35 U.S.C. 111?

A national application made under 35 U.S.C. 111 signifies that it is filed directly with the United States Patent and Trademark Office (USPTO) and follows the standard U.S. patent application process.

The MPEP 201.01 states: ‘A national application is one that was filed in the United States Patent and Trademark Office (USPTO) under 35 U.S.C. 111.’ This means that the application is subject to U.S. patent laws and procedures from the outset.

Applications filed under 35 U.S.C. 111 include:

• Original (nonprovisional) applications
• Reissue applications
• Design applications
• Plant applications
• Provisional applications

These applications are distinct from international applications that enter the national stage in the U.S. under 35 U.S.C. 371.

For more information on patent application types, visit: patent application types.

For more information on patent law, visit: patent law.

For more information on USPTO, visit: USPTO.

37 CFR 1.55(h) provides an important provision for satisfying the requirement for a certified copy of a foreign application. Key points include:

• It allows the certified copy requirement to be met through a prior-filed nonprovisional application.
• The prior-filed application must be one for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).
• The prior-filed application must contain the certified copy and be identified as such.
• This provision can simplify the process of perfecting priority claims in related applications.

The MPEP states: 37 CFR 1.55(h) provides that the requirement for a certified copy of the foreign application will be considered satisfied in an application if a prior-filed nonprovisional application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the foreign application and the prior-filed nonprovisional application is identified as containing a certified copy of the foreign application.

This provision can be particularly useful when requesting a certificate of correction to perfect a priority claim in a patent that claims benefit from an earlier application containing the certified copy.

Applications filed under 37 CFR 1.53(d) have a unique treatment of affidavits and declarations. According to MPEP ¶ 2.03:

“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”

Key points about 37 CFR 1.53(d) applications:

• They are continuation or divisional applications of a nonprovisional application
• Affidavits and declarations from the parent application are automatically incorporated
• This includes documents submitted under 37 CFR 1.130, 1.131, and 1.132
• No additional action is required to include these documents in the new application

This automatic incorporation simplifies the process for applicants filing continuation or divisional applications under 37 CFR 1.53(d).

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

For more information on patent prosecution, visit: patent prosecution.

35 U.S.C. 386 establishes the right of priority for international design applications. It addresses two key scenarios:

1. National applications claiming priority from international design applications
2. International design applications claiming priority from prior foreign applications

The MPEP explains:

“Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

“Pursuant to 35 U.S.C. 386(b) and 37 CFR 1.55, an international design application designating the United States may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 and the Hague Agreement and Regulations thereunder with respect to a prior foreign application, international application (PCT) designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.”

These provisions apply to applications filed on or after May 13, 2015, and patents issued from such applications.

35 U.S.C. 111(a) and (b) are important sections of the patent law that define two different types of national patent applications. According to MPEP 201.01:

‘National applications may be filed under 35 U.S.C. 111(a) or (b), 161, or 171.’

To elaborate:

• 35 U.S.C. 111(a) refers to nonprovisional applications. These are full patent applications that can potentially result in an issued patent.
• 35 U.S.C. 111(b) refers to provisional applications. These are simplified applications that establish a priority date but do not themselves result in an issued patent.

The choice between filing under 111(a) or 111(b) depends on the inventor’s strategy and readiness to pursue full patent protection. Provisional applications (111(b)) provide a way to quickly establish a priority date, while nonprovisional applications (111(a)) begin the formal examination process.

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

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

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

What is the role of the Technology Center in handling status inquiries?

Technology Centers (TCs) play a specific role in handling certain types of status inquiries. MPEP 203.08 states:

“Inquiries which cannot be answered by the UCC will be forwarded to the TC for response.”

This means that more complex or specific inquiries that require expertise in a particular technological area are directed to the appropriate TC. TCs have access to more detailed information about applications in their field and can provide more specific guidance within the limits of USPTO policy.

To learn more:

• Technology Center
• status inquiries
• USPTO Contact Center

The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:

“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”

The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on patent procedure, visit: patent procedure.

The right of priority in international patent law refers to the right to rely on a foreign application when filing a patent application in another country. This concept originated in the Paris Convention for the Protection of Industrial Property, which the United States adhered to in 1887.

As stated in the MPEP: The right to rely on a foreign application is known as the right of priority in international patent law and this phrase has been adopted in the U.S. statute. This right allows applicants to claim the filing date of an earlier foreign application, providing certain conditions are met.

To learn more:

• right of priority
• international patent law
• Paris Convention
• foreign application

The Patent Law Treaties Implementation Act (PLTIA) introduced the concept of restoration of the right of priority. This provision allows applicants to file a subsequent application and still claim priority or benefit even if they missed the standard 12-month deadline (6-month for design applications).

As stated in the MPEP: Notable changes to the law and rules included the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. (MPEP 210)

Key points about restoration of the right of priority:

• It applies to both foreign priority claims and domestic benefit claims to provisional applications.
• The subsequent application must be filed within 14 months from the filing date of the prior foreign application or provisional application (8 months for design applications).
• The delay in filing the subsequent application must be unintentional.
• A petition for restoration of the right of priority must be filed.

The specific requirements and procedures for restoration of the right of priority are outlined in 37 CFR 1.55(c) for foreign priority claims and 37 CFR 1.78(b) for domestic benefit claims.

For more information on PLTIA, visit: PLTIA.

For more information on unintentional delay, visit: unintentional delay.

For a valid foreign priority claim, the U.S. application and the foreign application must name the same inventor or have at least one joint inventor in common. This requirement ensures that the right of priority is properly linked between the applications.

As stated in MPEP 213.02: “Pursuant to 35 U.S.C. 119(a), the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns. Consistent with longstanding Office policy, this is interpreted to mean that the U.S. and foreign applications must name the same inventor or have at least one joint inventor in common.”

The MPEP further clarifies: “Joint inventors A and B in a nonprovisional application filed in the United States Patent and Trademark Office may properly claim the benefit of an application filed in a foreign country by A and another application filed in a foreign country by B, i.e., A and B may each claim the benefit of their foreign filed applications.”

This requirement ensures that the priority right is properly linked to the inventive entity responsible for the invention in both the foreign and U.S. applications.

For more information on foreign priority, visit: foreign priority.

For more information on joint inventors, visit: joint inventors.

When claiming foreign priority, applicants are generally required to file a certified copy of the foreign application within a specified time period. The requirements and deadlines for filing the certified copy depend on the type of application and the circumstances of the filing.

According to MPEP 213.04: “37 CFR 1.55(g) sets forth the requirements for filing a priority claim, certified copy of foreign application, and translation that are applicable in all applications.”

Key points about the certified copy requirement include:

• The certified copy must be filed within the pendency of the application, unless filed with a petition.
• For applications filed under 35 U.S.C. 111(a), the certified copy must typically be filed within the later of four months from the actual filing date or sixteen months from the filing date of the prior foreign application.
• For national stage applications under 35 U.S.C. 371, the certified copy must be filed within the time limit set forth in the PCT and the Regulations under the PCT.
• If the certified copy is not filed within the required time period, it must be accompanied by a petition and fee, along with a showing of good and sufficient cause for the delay.
• In some cases, the requirement may be satisfied through the priority document exchange program or by identifying a previously filed application containing the certified copy.

The MPEP also notes: “If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.”

For more information on certified copy, visit: certified copy.

For more information on filing requirements, visit: filing requirements.

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

What is the required oath or declaration for a divisional application?

For a divisional application, a new oath or declaration is generally required. However, there are exceptions:

• If the application is filed on or after September 16, 2012, a copy of the oath or declaration from the prior nonprovisional application may be used, provided that it complies with 37 CFR 1.63, 1.64, or 1.67 for the divisional application.
• If the divisional application was filed before September 16, 2012, and the prior application was filed on or after September 16, 2012, a copy of the oath or declaration from the prior application can be used in the divisional application.

As stated in MPEP 201.06: “A new oath or declaration is required in a divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior nonprovisional application is used in the divisional application, unless the divisional application is filed on or after September 16, 2012.”

To learn more:

• divisional application
• oath
• declaration
• patent filing

What is the relationship between priority claims and the effective filing date?

The relationship between priority claims and the effective filing date is crucial in determining the patentability of an invention. According to MPEP 216:

“The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis.”

This means that each claim in a patent application may have a different effective filing date, depending on its content and the priority claims it can support. The effective filing date is important because it determines which prior art can be used against the claim during examination and potential litigation.

• If a claim is fully supported by an earlier application, its effective filing date may be the filing date of that earlier application.
• If a claim contains new matter not disclosed in any earlier application, its effective filing date will be the actual filing date of the current application.

Understanding this relationship is crucial for inventors and patent practitioners to properly claim priority and protect their inventions.

For more information on effective filing date, visit: effective filing date.

What is the relationship between a provisional application and a nonprovisional application?

A provisional application serves as a placeholder for a later-filed nonprovisional application. According to MPEP 201.04:

“A provisional application may serve as a basis for claiming benefit under 35 U.S.C. 119(e) in a later filed nonprovisional application or an international application designating the United States.”

This means that a provisional application can establish an earlier filing date for a subsequent nonprovisional application, provided the nonprovisional is filed within 12 months of the provisional and properly claims benefit to it.

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

For more information on patent filing, visit: patent filing.

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

What is the relationship between a divisional application and its parent application?

A divisional application is closely related to its parent application, as it stems from the same invention disclosure. According to MPEP 201.06, “A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.” This means that:

• The divisional application contains a subset of the subject matter from the parent application.
• It claims an independent or distinct invention from what is claimed in the parent application.
• It cannot introduce new matter beyond what was disclosed in the parent application.
• It can claim the benefit of the parent application’s filing date.

The relationship allows for separate prosecution of different aspects of an invention while maintaining the priority date of the original disclosure.

To learn more:

• divisional application
• parent application
• patent relationship
• invention disclosure

What is the relationship between a divisional application and a restriction requirement?

A divisional application is often filed in response to a restriction requirement issued by the USPTO. The MPEP 201.06 explains:

“A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.'”

The relationship between a divisional application and a restriction requirement is as follows:

• When an examiner determines that a single application contains two or more independent or distinct inventions, they may issue a restriction requirement.
• The applicant must then elect one invention to pursue in the original application.
• The non-elected invention(s) can be pursued in one or more divisional applications.
• Divisional applications allow applicants to protect multiple inventions disclosed in a single parent application without violating the principle of double patenting.

It’s important to note that while divisional applications are often filed in response to restriction requirements, they can also be filed voluntarily if the applicant recognizes distinct inventions in their application before receiving a restriction requirement.

To learn more:

• divisional application
• restriction requirement
• patent prosecution
• USPTO

What is the relationship between a divisional application and a continuation application?

Divisional applications and continuation applications are both types of continuing applications, but they serve different purposes. The MPEP 201.06 provides insight into the nature of divisional applications:

“A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.'”

In contrast, a continuation application typically contains the same disclosure as the parent application but with different claims. The key differences are:

• Divisional Application: Filed to pursue distinct inventions that were subject to a restriction requirement in the parent application.
• Continuation Application: Filed to pursue additional aspects of the same invention disclosed in the parent application.

Both types of applications claim the benefit of the parent application’s filing date, but they differ in their purpose and the scope of claims they can contain. It’s important to choose the appropriate type of continuing application based on the specific circumstances and inventive concepts you wish to protect.

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

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

What is the relationship between a continuation-in-part application and its parent application?

A continuation-in-part (CIP) application is a type of patent application that has a unique relationship with its parent application. According to MPEP 201.08:

“A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.”

This means that a CIP application:

• Contains some or all of the subject matter from the parent application
• Introduces new subject matter not present in the parent application
• Must be filed while the parent application is still pending

The relationship between a CIP and its parent is important for determining priority dates and the scope of patent protection.

For more information on new matter, visit: new matter.

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

The USPTO has established special procedures for handling official inquiries to ensure consistency and compliance with government directives. As stated in MPEP 203.08(a):

This procedure is used so that there will be uniformity in the handling of contacts from the indicated sources, and also so that compliance with directives of the Department of Commerce is attained.

These procedures help the USPTO maintain a standardized approach to high-level inquiries and ensure that responses align with broader governmental policies.

To learn more:

• USPTO
• Official Inquiries
• Department of Commerce
• Uniformity

The Priority Document Exchange (PDX) program is designed to facilitate the electronic exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, the PDX program allows participating foreign intellectual property offices to exchange priority documents with the United States Patent and Trademark Office (USPTO) at no cost to the applicant. This program aims to streamline the process of submitting priority documents, reducing the burden on applicants and improving efficiency in patent examination procedures.

To learn more:

• Priority Document Exchange
• PDX
• USPTO
• foreign intellectual property offices

The PDX (Priority Document Exchange) program serves to facilitate the exchange of priority documents between participating intellectual property offices. According to MPEP 215.01, ‘The PDX program eliminates the need for applicants to submit paper certified copies of foreign applications in participating intellectual property offices.’ This streamlines the process, reducing both the burden on applicants and the workload for patent offices.

The affidavit required for claiming priority based on an inventor’s certificate serves a specific purpose, as outlined in MPEP 213.05:

The affidavit or declaration specified under 37 CFR 1.55(l) is only required for the purpose of ascertaining whether, in the country where the application for an inventor’s certificate originated, this option generally existed for applicants with respect to the particular subject matter of the invention involved.

The affidavit is not intended to investigate the specific applicant’s eligibility to exercise the option in their particular case. Rather, it’s meant to confirm that in the country where the inventor’s certificate was filed, applicants generally had the right to choose between applying for a patent or an inventor’s certificate for the subject matter in question.

This requirement ensures compliance with the treaty and statute governing priority rights, while recognizing that some countries may have restrictions based on factors such as employment or nationality.

To learn more:

• inventor’s certificate
• patent priority
• foreign priority
• affidavit purpose

What is the purpose of MPEP 203.08 – Status Inquiries?

MPEP 203.08 – Status Inquiries outlines the procedures for handling status inquiries about patent applications. The section states:

“The Office receives numerous telephone and written requests for information concerning the status of patent applications. These status inquiries may be made to the USPTO Contact Center (UCC), the Technology Center (TC) or the Patent Examining Group.”

This section provides guidance to both applicants and USPTO staff on how to handle these inquiries efficiently and in compliance with privacy regulations.

To learn more:

• status inquiries
• USPTO Contact Center
• Technology Center
• Patent Examining Group

The purpose of MPEP ¶ 2.33 is to provide guidance to patent examiners when they encounter a situation where a new inventor is identified in a Continued Prosecution Application (CPA) for design applications. It states:

Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA.

This paragraph helps examiners address situations where applicants have named new inventors in a CPA without following the proper procedure. It reminds both examiners and applicants that a formal request under 37 CFR 1.48 is required to change inventorship, even in a CPA.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

For more information on patent examination, visit: patent examination.

MPEP ¶ 2.32 provides guidance for patent examiners on how to acknowledge and process requests to delete a named inventor in Continued Prosecution Applications (CPAs) for design patents. The paragraph serves several purposes:

• It offers a standardized response for examiners to use when acknowledging the receipt of a request to delete an inventor.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and procedure for inventor deletion requests in CPAs.

The paragraph states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This standardized language ensures consistency in USPTO communications and helps applicants understand that their request has been processed successfully.

For more information on CPA, visit: CPA.

For more information on patent examination, visit: patent examination.

For more information on USPTO communication, visit: USPTO communication.

MPEP ¶ 2.32 provides guidance for patent examiners on how to respond to requests for deleting a named inventor in a Continued Prosecution Application (CPA) for design patents. The paragraph serves several purposes:

• It offers a template for examiners to acknowledge receipt of a statement requesting inventor deletion.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and requirements for inventorship changes in CPAs.

The paragraph states: Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This standardized language ensures consistent communication between the USPTO and applicants regarding inventorship changes in CPAs.

For more information on CPA, visit: CPA.

For more information on patent examination, visit: patent examination.

For more information on USPTO communication, visit: USPTO communication.

MPEP ¶ 2.15 provides guidance on how to properly claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c). It outlines the requirements for including a specific reference to the prior-filed application and the timeframes within which this reference must be submitted.

The paragraph states: If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. This means that applicants must explicitly reference the prior application to claim its benefits.

For more information on specific reference, visit: specific reference.

MPEP ¶ 2.05 Possible Status as Continuation serves as a guideline for patent examiners when handling applications that may qualify as continuations. Its primary purpose is to:

• Instruct examiners on how to handle applications that disclose and claim only subject matter disclosed in a prior application
• Provide language for examiners to use when notifying applicants about the possible status of their application as a continuation
• Ensure proper classification and processing of continuation applications

The MPEP states: “This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names an inventor or inventors named in the prior application. Accordingly, this application may constitute a continuation or division.” (MPEP ¶ 2.05)

This guidance helps maintain consistency in the examination process and ensures that applicants are properly informed about the potential status of their applications.

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

For more information on patent examination, visit: patent examination.

Form Paragraph 2.38 in the MPEP serves several important purposes regarding non-English provisional applications:

1. It notifies the applicant that an English translation and/or a statement of translation accuracy is required for a non-English language provisional application.
2. It informs the applicant about the specific documents that are missing from their application.
3. It provides clear instructions on what the applicant needs to do to rectify the situation.
4. It warns the applicant about the potential consequences of not providing the required documents.

The MPEP states: Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.

This form paragraph is a crucial tool for patent examiners to communicate requirements and potential issues to applicants, ensuring that all necessary documents are properly filed for claiming benefit to a non-English provisional application.

For more information on patent examination, visit: patent examination.

For more information on USPTO communication, visit: USPTO communication.

Filing a continuation application serves several important purposes in patent prosecution. The MPEP indicates:

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.

Key reasons for filing a continuation include:

• Pursuing broader or different claim scope based on the same disclosure
• Addressing remaining rejections or objections from the parent application
• Submitting new evidence or arguments to overcome prior art rejections
• Maintaining pendency for ongoing improvements or to counter competitor activities
• Separating distinct inventions identified during examination of the parent

Continuations allow applicants to refine their patent strategy while maintaining the priority date of the original filing, which can be crucial in fast-moving technological fields.

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

For more information on patent strategy, visit: patent strategy.

What is the purpose of a divisional application under 37 CFR 1.53(b)?

A divisional application under 37 CFR 1.53(b) serves to pursue claims to a distinct invention that was disclosed but not claimed in a parent application. According to the MPEP:

“A divisional application is often filed as a result of a restriction requirement made by the examiner.”

This allows inventors to protect multiple inventions that may have been included in a single original application but were deemed to be separate and distinct by the USPTO. Divisional applications maintain the benefit of the filing date of the parent application for the common subject matter.

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

For more information on patent filing, visit: patent filing.

What is the purpose of a divisional application in patent law?

A divisional application is a type of patent application that allows an inventor to pursue protection for different aspects of an invention that were disclosed but not claimed in a parent application. According to MPEP 201.06:

A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.’

The main purposes of a divisional application are:

• To protect multiple inventions disclosed in a single parent application
• To respond to a restriction requirement issued by the USPTO
• To pursue broader or different claim scope than what was allowed in the parent application

Divisional applications are filed under 37 CFR 1.53(b) and can benefit from the filing date of the parent application for the common subject matter.

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

For more information on patent law, visit: patent law.

The proper procedure for correcting inventorship in a Continued Prosecution Application (CPA) is to file a request under 37 CFR 1.48. This applies whether you’re adding or removing an inventor. The MPEP guidance states: ‘Any request to add an inventor must be in the form of a request under 37 CFR 1.48.’ This formal request ensures that the USPTO properly processes and recognizes the change in inventorship.

For more information on CPA, visit: CPA.

For more information on patent procedure, visit: patent procedure.

If a benefit claim is not filed within the required time period, it may still be accepted through a petition process. According to MPEP ¶ 2.15:

A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)).

The petition must include:

1. The reference to the prior application (unless previously submitted)
2. The petition fee under 37 CFR 1.17(m)
3. A statement that the entire delay between the date the benefit claim was due and the date the claim was filed was unintentional

The Director may request additional information if there’s a question about whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

For more information on unintentional delay, visit: unintentional delay.

The process for restoring the benefit of a provisional application after the 12-month deadline involves filing a petition under 37 CFR 1.78(b). This petition must be filed in the subsequent application (nonprovisional or international application designating the US) within 14 months of the provisional application’s filing date. The MPEP outlines the requirements:

“A petition under 37 CFR 1.78(b) requires: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet); (B) the petition fee as set forth in 37 CFR 1.17(m); and (C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.”

The Director may require additional information to determine if the delay was unintentional. If granted, this restoration allows an application to validly claim the benefit of a provisional application filed up to 14 months earlier.

To learn more:

• provisional application
• benefit restoration
• patent petition
• 37 CFR 1.78(b)

To learn more:

• 37 CFR 1.78(b)

The USPTO has a specific process for handling inquiries from embassies. According to MPEP 203.08(a):

Inquiries referred to in this section such as correspondence from embassies, the Office of the U.S. Trade Representative, and the Department of State should immediately be transmitted to the Administrator of the Office of Policy and International Affairs, and a staff member of that office should be notified by phone that such correspondence has been received at 571-272-9300.

This procedure ensures that international inquiries are handled consistently and in line with the USPTO’s international policies.

To learn more:

• USPTO
• Embassies
• International Affairs
• Official Inquiries

When a claim to priority and certified copy of a foreign application are received during the pendency of a patent application, the examiner generally follows these steps:

• Checks for obvious formal defects in the documents
• Verifies that the documents correspond to the application identified in the application data sheet
• For original applications filed under 35 U.S.C. 111(a) and international applications entering the national stage under 35 U.S.C. 371, ensures the claim for foreign priority is timely

The examiner does not typically examine the subject matter to determine if the applicant is entitled to the benefit of the foreign filing date unless it’s necessary for patentability reasons. As stated in the MPEP, The subject matter of the application is not examined to determine whether the applicant is actually entitled to the benefit of the foreign filing date on the basis of the disclosure thereof unless such determination is required for patentability reasons.

For more information on application data sheet, visit: application data sheet.

For more information on certified copy, visit: certified copy.

For more information on foreign priority, visit: foreign priority.

For more information on patent examination, visit: patent examination.

If a priority claim needs to be corrected after a patent has been issued, it must be done through a certificate of correction. The MPEP Section 213.04 states:

“If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323.”

To obtain a certificate of correction, the patent owner must file a request with the USPTO, pay the required fee, and provide a statement explaining the error and how it occurred. The USPTO will then review the request and, if approved, issue a certificate of correction to be attached to the patent.

To learn more:

• certificate of correction
• priority claim correction
• post-grant correction
• patent amendment

What is the process for adding a benefit claim after the time period set forth in 37 CFR 1.78?

To add a benefit claim after the time period set forth in 37 CFR 1.78, you must file a petition to accept an unintentionally delayed benefit claim. The MPEP 211.02(a) outlines the process:

1. File a petition under 37 CFR 1.78(c) for claiming the benefit of a prior-filed provisional application, or under 37 CFR 1.78(e) for claiming the benefit of a prior-filed nonprovisional application.
2. Pay the petition fee (currently $2,000 for nonprovisional applications).
3. Submit a corrected application data sheet (ADS) including the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior-filed application.
4. Provide a statement that the entire delay between the date the benefit claim was due and the date the benefit claim was filed was unintentional.

The MPEP states: “The Director may require additional information where there is a question whether the delay was unintentional.” It’s crucial to ensure all requirements are met to avoid potential rejection of the petition.

To learn more:

• benefit claim
• delayed claim
• petition
• unintentional delay

The procedure for submitting a priority document in an international application is outlined in PCT Rule 17. According to the MPEP:

Where the priority of an earlier national or international application is claimed under Article 8, a copy of that earlier application, certified by the authority with which it was filed (‘the priority document’), shall… be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date.

The applicant has three options:

1. Submit the priority document directly to the International Bureau or the receiving Office.
2. Request the receiving Office to prepare and transmit the priority document to the International Bureau (if the priority document is issued by the receiving Office).
3. Request the International Bureau to retrieve the priority document from a digital library in accordance with the Administrative Instructions.

It’s important to note that failure to comply with these requirements may result in the designated Office disregarding the priority claim, subject to certain conditions specified in PCT Rule 17.

To learn more:

• priority document
• international application
• PCT
• submission procedure

What is the procedure for correcting or adding a benefit claim in a design application?

The procedure for correcting or adding a benefit claim in a design application differs from that of utility applications. According to MPEP 211.02(a):

“For design applications, an application may be amended to claim priority to or the benefit of a prior-filed application after the application issues as a patent by filing a reissue application. Note that the copendency requirement of 35 U.S.C. 120 must still be met.”

This means that for design applications:

• Corrections or additions to benefit claims cannot be made after the application has issued as a patent through a Certificate of Correction.
• The only way to correct or add a benefit claim after issuance is by filing a reissue application.
• The copendency requirement under 35 U.S.C. 120 must still be satisfied, meaning the applications must have been co-pending at some point.

It’s important to note that this procedure is specific to design applications and differs from the process for utility applications.

To learn more:

• design application
• benefit claim
• reissue application
• copendency

The Priority Document Exchange (PDX) program is a system that allows participating intellectual property offices to exchange priority documents electronically. This program simplifies the process of submitting certified copies of foreign priority applications for patent applicants.

According to the MPEP, The Office website provides information concerning the priority document exchange program ( www.uspto.gov/patents/basics/international-protection/electronic-priority-document-exchange-pdx ). This information includes participating offices and instructions for accessing foreign applications.

To learn more:

• Priority Document Exchange
• PDX
• Foreign Priority
• Patent Application

The priority document exchange program is a system that allows participating patent offices to exchange priority documents electronically. According to MPEP 215.02(a):

“Applicants may use the priority document exchange program to obtain a copy of a foreign application filed in a participating foreign intellectual property office.”

This program simplifies the process of obtaining priority documents for patent applications filed in multiple countries.

To learn more:

• priority document exchange
• patent applications
• foreign applications

The priority document exchange program is a bilateral or multilateral agreement between the USPTO and participating foreign intellectual property offices that allows for the electronic exchange of priority documents. This program can satisfy the requirement for filing a certified copy of a foreign application under certain conditions.

According to 37 CFR 1.55(i), the certified copy requirement will be considered satisfied if:

• The foreign application was filed in a participating foreign intellectual property office
• The claim for priority is presented in an application data sheet (ADS)
• The applicant provides the necessary information for the participating office to provide the USPTO with access to the foreign application
• The USPTO receives a copy of the foreign application from the participating office during the pendency of the application and before the patent is granted

This provision can significantly simplify the process of meeting the certified copy requirement for applicants whose priority applications are from participating countries.

For more information on certified copy, visit: certified copy.

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

For more information on priority document exchange, visit: priority document exchange.

The Priority Document Exchange (PDX) program is an electronic system that allows participating intellectual property offices to exchange priority documents securely. According to MPEP 215.01, “Under the PDX program, the participating offices electronically transmit priority documents to each other as needed.” This program eliminates the need for applicants to submit paper certified copies of priority documents in participating offices.

The Paris Convention for the Protection of Industrial Property is an international agreement that establishes key principles for intellectual property protection, including patents. It was first signed in 1883 and has been revised several times since then.

The Convention is significant in patent law because it established the right of priority, which allows patent applicants to claim priority based on an earlier filing in any country that is a member of the Paris Convention. This right is referenced in MPEP 213, which states:

‘The right of priority is defined in 35 U.S.C. 119(a)… Under this statute, an applicant who has filed a first foreign application is entitled to claim the benefit of the filing date of the first foreign application in a subsequent U.S. national patent application…’

This provision helps inventors protect their inventions internationally by giving them a grace period to file in multiple countries while maintaining the priority date of their first filing.

The Paris Convention is an international treaty that establishes priority rights for patent applications. According to MPEP 213, “The right of priority is defined in 35 U.S.C. 119(a)” and is based on this convention. It allows inventors who file a patent application in one member country to claim priority for up to 12 months when filing in other member countries.

Key points of the Paris Convention include:

• Establishing a 12-month priority period for patents
• Allowing applicants to claim priority based on earlier filings in member countries
• Ensuring equal treatment of foreign and domestic applicants in member countries

What is the Paris Convention and how does it relate to patent filing?

The Paris Convention for the Protection of Industrial Property, commonly known as the Paris Convention, is an international treaty that plays a crucial role in patent filing. According to MPEP 213.01:

The Paris Convention for the Protection of Industrial Property sets forth the concept of a ‘convention application’ and a ‘right of priority.’

This means that applicants from member countries can use their first filing date in one member country as the effective filing date in other member countries, provided they file within 12 months. This treaty facilitates international patent protection by allowing inventors to secure a priority date in multiple countries.

To learn more:

• Paris Convention
• International Patents
• Priority Date
• Convention Application

The legal basis for denying amendments to Continued Prosecution Application (CPA) specifications that attempt to reference prior applications stems from both federal regulations and patent law. Specifically:

• 37 CFR 1.53(d)(7): This regulation establishes that a CPA request itself serves as the specific reference required by 35 U.S.C. 120.
• 35 U.S.C. 120: This statute outlines the requirements for claiming the benefit of an earlier filing date in the United States.

According to MPEP ¶ 2.34:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.

This means that the CPA filing itself legally establishes the necessary connection to the prior application, making any specification amendment both redundant and impermissible.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on patent law, visit: patent law.

The legal basis for claiming the benefit of an international design application designating the United States is found in 35 U.S.C. 386(c). This statute allows a nonprovisional application to claim the benefit of a prior international design application, subject to the conditions and requirements of 35 U.S.C. 120.

As stated in the MPEP: Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States. This means that applicants can potentially secure an earlier effective filing date for their nonprovisional application by claiming the benefit of a previously filed international design application.

To learn more:

• international design application
• benefit claim
• nonprovisional application
• 35 U.S.C. 386(c)
• 35 U.S.C. 120

To learn more:

• 35 U.S.C. 386(c)
• 35 U.S.C. 120

New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:

‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’

This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.

To learn more:

• new matter
• benefit claims
• written description requirement
• prior-filed application

Incorporating by reference in patent applications can have significant impacts:

• It allows applicants to include the content of another document without reproducing it in full.
• The incorporated material becomes part of the application as if it were explicitly included.
• It can provide support for claims and help meet disclosure requirements.

MPEP 211.05 mentions:

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)).

This highlights the importance of including incorporation by reference statements at the time of filing to ensure their effectiveness. Applicants should carefully consider what materials to incorporate and ensure they are properly referenced to support their claims and meet disclosure requirements.

To learn more:

• incorporating by reference
• patent applications
• disclosure requirements
• claim support

What is the impact of a terminal disclaimer on claiming benefit of a prior-filed application?

A terminal disclaimer can affect the ability to claim benefit of a prior-filed application. According to MPEP 211.01(b):

Any nonprovisional application claiming the benefit of one or more prior-filed copending nonprovisional applications or international applications designating the United States must include a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications.

However, if a terminal disclaimer has been filed in the prior application, it may limit the ability to claim benefit. The MPEP states:

If the prior application has been published, the validity of the patent may be affected if the continuing application is not filed within one year of the publication date of the prior-filed application. See MPEP § 211.05 for more information on the effects of publication of patent applications.

It’s crucial to consider the implications of terminal disclaimers when claiming benefit, as they can affect patent term and validity.

To learn more:

• terminal disclaimer
• prior-filed application
• benefit claim

What is the impact of a defective priority or benefit claim?

A defective priority or benefit claim can have significant consequences for a patent application. According to MPEP 211.01, if the claim for priority or benefit is not properly made:

‘If the claim for priority or benefit is not included in an ADS, the claim for priority or benefit must be included in the first sentence(s) of the specification following the title or in an application data sheet. The specific reference to the prior application must be in the first sentence(s) of the specification following the title or in an application data sheet unless the reference appeared in a preliminary amendment filed on filing.’

The impacts of a defective claim can include:

• Loss of priority date: This can affect the assessment of prior art against the application.
• Potential rejection: Claims may be rejected if intervening prior art exists between the filing dates of the prior and current applications.
• Inability to overcome certain rejections: Without the earlier priority date, it may be harder to overcome rejections based on intervening art.
• Possible patent term reduction: If the defect is not corrected promptly, it could affect the patent term adjustment.

To avoid these issues, applicants should ensure that priority or benefit claims are properly made in accordance with 37 CFR 1.78 and correct any defects promptly using the procedures outlined in the MPEP.

To learn more:

• defective priority claim
• defective benefit claim
• patent application
• prior art

The Hague Agreement Concerning International Registration of Industrial Designs is an international treaty that allows applicants to file a single international design application to seek protection in multiple countries. The United States became a party to the Hague Agreement on May 13, 2015.

According to 35 U.S.C. 385:

An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.

This means that an international design application that designates the US is treated similarly to a national design patent application. The MPEP clarifies: Unless otherwise clear from the wording, reference to ‘design application’ or ‘application for a design patent’ in this chapter includes an international design application that designates the United States.

For detailed information on international design applications, refer to MPEP Chapter 2900.

For more information on design patents, visit: design patents.

For more information on Hague Agreement, visit: Hague Agreement.

For more information on international design applications, visit: international design applications.

What is the filing deadline for a continuation application?

A continuation application must be filed before the patenting, abandonment, or termination of proceedings on the prior application. The MPEP 201.07 states:

“To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.”

Key points to remember:

• There is no specific time limit for filing a continuation as long as the parent application is still pending.
• The continuation must be filed before the parent application is patented, abandoned, or otherwise terminated.
• If you want to file after the parent is patented, you must file a reissue application instead.

It’s crucial to monitor the status of the parent application closely to ensure timely filing of the continuation.

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

For more information on filing deadline, visit: filing deadline.

What is the filing date requirement for a divisional application?

A divisional application must be filed before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.”

This means that the divisional application must be filed while the parent application is still pending, ensuring continuity in the examination process.

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

For more information on patent procedure, visit: patent procedure.

The filing date of a nonprovisional application under 37 CFR 1.53(b) depends on the type of application and when it was filed:

• For utility and plant applications filed on or after December 18, 2013: The filing date is the date on which the specification, with or without claims, is received in the USPTO.
• For design applications: The filing date is the date on which the specification, including at least one claim, and any required drawings are received in the USPTO.
• For applications filed before December 18, 2013: The filing date was the date on which the specification containing a description and at least one claim, and any required drawings were received in the USPTO.

The MPEP states:

For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office.

This change in filing date requirements was part of the implementation of the Patent Law Treaties Implementation Act of 2012.

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

For more information on patent application requirements, visit: patent application requirements.

What is the filing date of a divisional application?

A divisional application is entitled to the filing date of the parent application. According to MPEP 201.06, “A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed as a nonprovisional application that discloses and claims only subject matter disclosed in the prior-filed (parent) application.” This means that the divisional application inherits the filing date of its parent application, provided it meets the necessary requirements.

To learn more:

• divisional application
• filing date
• parent application
• patent application

The filing date of a Continued Prosecution Application (CPA) is determined by when the request for the CPA is received by the USPTO. As stated in the MPEP, The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. This means that the CPA’s filing date is not the same as the filing date of the prior application, but rather the date when the USPTO receives the proper CPA request.

To learn more:

• CPA
• Filing Date
• Patent Application

What is the filing date of a continuation-in-part application?

The filing date of a continuation-in-part (CIP) application is the date on which the application is filed with the USPTO. According to MPEP 201.08, “A continuation-in-part application is entitled to the benefit of the filing date of an earlier nonprovisional application as to common subject matter.” However, it’s important to note that any new matter introduced in the CIP application is only entitled to the filing date of the CIP itself.

For the common subject matter, the CIP can claim the benefit of the earlier application’s filing date under 35 U.S.C. 120. This can be crucial for establishing priority and determining the relevant prior art for patentability assessments.

According to MPEP 201.06(c), the filing date for a divisional or continuation application filed under 37 CFR 1.53(b) is determined as follows:

‘The filing date of an application filed under 37 CFR 1.53(b) is the date on which a specification, with or without claims, is received in the Office.’

This means that the filing date is established when the USPTO receives the specification, regardless of whether claims are included. It’s important to note that other application components, such as drawings or fees, are not required to secure the filing date.

To learn more:

• filing date
• divisional application
• continuation application
• 37 CFR 1.53(b)
• specification

To learn more:

• 37 CFR 1.53(b)

What is the filing date for a Continued Prosecution Application (CPA)?

The filing date for a Continued Prosecution Application (CPA) is determined based on when it is filed. According to MPEP 201.06(d):

The filing date of a CPA is the date on which a request on a separate paper for an application under 37 CFR 1.53(d) is filed. A request for a CPA is a specific reference to the prior application as required by 35 U.S.C. 120.

This means that the CPA’s filing date is the day when the separate request for a CPA is submitted, not the filing date of the prior application. It’s important to note that this request must specifically reference the prior application to comply with 35 U.S.C. 120.

To learn more:

• CPA
• filing date
• Continued Prosecution Application
• 35 U.S.C. 120

To learn more:

• 35 U.S.C. 120

The Electronic Priority Document Exchange (PDX) program is a system that allows for the electronic transmission of priority documents between participating foreign intellectual property offices. As stated in the MPEP:

Electronic Priority Document Exchange (PDX) agreements provide for the electronic transmission of priority documents to and from participating foreign intellectual property offices.

This program simplifies the process of obtaining certified copies of foreign priority applications, which is crucial for establishing priority claims in patent applications.

While restoration of the right of priority allows for valid priority claims up to 14 months from the earliest priority date (or 8 months for design applications), pre-AIA applications are still subject to the 12-month statutory bar under pre-AIA 35 U.S.C. 102(b) and (d). MPEP 213.03 clarifies: ‘It should be noted that although an application may now validly claim priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) or (b), or 386(a) or (b) to a foreign application filed up to fourteen months earlier (or eight months earlier in the case of a design application) in view of the restoration provision of 37 CFR 1.55(c), an application subject to examination under pre-AIA first to invent laws (rather than the first inventor to file provisions of the AIA) would still be subject to the 12-month statutory time periods in pre-AIA 35 U.S.C. 102(b) and (d) which are measured from the U.S. filing date.’

This means that while the priority claim may be valid, the earlier filed foreign application could still be used as prior art against a pre-AIA application if it was published more than one year before the U.S. filing date.

For more information on pre-AIA, visit: pre-AIA.

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.

What is the effect of filing a CPA on pending appeals or interferences?

Filing a Continued Prosecution Application (CPA) has significant effects on pending appeals or interferences. According to MPEP 201.06(d):

The filing of a CPA is a specific request to expressly abandon the prior application as of the filing date granted the CPA and to continue prosecution of the prior application in the CPA.

This means that when a CPA is filed:

• Any pending appeal in the prior application is automatically withdrawn.
• Any pending interference proceeding in the prior application is terminated.

It’s important to note that these actions occur automatically upon the granting of a filing date to the CPA. Applicants should carefully consider the status of any pending appeals or interferences before filing a CPA, as these proceedings cannot be continued in the CPA.

For more information on CPA, visit: CPA.

For more information on patent prosecution, visit: patent prosecution.

Filing a Continued Prosecution Application (CPA) has a significant effect on the prior application. According to MPEP 201.06(d):

‘A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA.’

This means that:

• The prior application is automatically and expressly abandoned when the CPA is filed.
• The abandonment is effective as of the CPA filing date.
• Any claims or amendments in the prior application that were not entered are not carried over to the CPA.

It’s important to note that while the prior application is abandoned, the CPA is a continuation of that application, maintaining continuity for purposes such as priority claims and patent term calculations.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

An international application designating the United States has significant legal effects under U.S. patent law. According to MPEP 211.01(c), which cites 35 U.S.C. 363:

An international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.

This means that from its international filing date, the application is treated as if it were a pending U.S. application. The MPEP further clarifies:

It is therefore clear that an international application which designates the United States has the effect of a pending U.S. application from the international application filing date until its abandonment as to the United States.

This status continues until the application is either granted as a patent, abandoned, or the proceedings are terminated. This provision allows applicants to claim the benefit of the international filing date in subsequent U.S. applications, subject to meeting other statutory requirements.

To learn more:

• international application
• US designation
• PCT
• national application effect

A preliminary amendment filed with a continuation or divisional application can have significant effects:

1. If present on the filing date, it is considered part of the original disclosure.
2. It must comply with the requirements of 37 CFR 1.121 for amendments.
3. The Office may require a substitute specification for extensive preliminary amendments.
4. The application will be classified and assigned based on the claims that will be before the examiner after entry of the preliminary amendment.

The MPEP states: Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

However, applicants should be cautious about introducing new matter through a preliminary amendment. The MPEP advises: Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part.

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

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

For more information on new matter, visit: new matter.

A delayed submission of a benefit claim can have significant implications for patent term adjustment (PTA). According to MPEP 211.04:

“If a petition under 37 CFR 1.78 to accept an unintentionally delayed benefit claim is granted, the petition decision will notify applicant that the patent term adjustment statement in the notice of allowance may need to be revised if the patent issues on a date that is more than four months after the date the petition was filed.”

This means that if the petition is granted and the patent issues more than four months after the petition filing date, the patent term adjustment may need to be recalculated. The delay in submitting the benefit claim could potentially reduce the patent term adjustment, as it may be considered applicant delay under the PTA rules.

It’s important for applicants to be aware that delayed benefit claims can affect the overall patent term, potentially shortening the effective life of the patent.

To learn more:

• delayed benefit claim
• patent term adjustment
• PTA
• applicant delay
• petition

What is the effect of a continuation-in-part application on patent term?

A continuation-in-part (CIP) application can have a significant impact on patent term. According to the MPEP 201.08:

The term of a patent issuing from a continuation-in-part application may be barred or limited by any prior applications or patents from which benefit is claimed.

This means that:

• The patent term for subject matter carried over from the parent application is calculated from the filing date of the parent application.
• The patent term for new subject matter introduced in the CIP is calculated from the filing date of the CIP application.
• This can result in different expiration dates for different claims within the same patent.

It’s crucial for inventors and patent practitioners to carefully consider the timing and content of CIP applications to maximize patent protection and term.

For more information on patent term, visit: patent term.

What is the effect of a benefit claim on the effective filing date of a continuing application?

A benefit claim to a prior-filed application can significantly impact the effective filing date of a continuing application. The MPEP 211.01(b) explains:

‘The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. It is possible for different claims in a later-filed application to receive different effective filing dates.’

This means that:

• Each claim in a continuing application may have a different effective filing date
• The effective date depends on when the claimed subject matter was first disclosed in a parent application
• Claims fully supported by the parent application get the parent’s filing date as their effective date
• New matter introduced in the continuing application gets the actual filing date of that application

It’s crucial for applicants to carefully consider the content of prior applications when making benefit claims, as this can affect patentability determinations and the scope of prior art that can be cited against the claims.

To learn more:

• effective filing date
• continuing application
• benefit claim
• claim-by-claim basis
• prior art

The Digital Access Service (DAS) is an electronic system that allows participating intellectual property offices to exchange priority documents securely. For international design applications:

• Applicants can authorize the retrieval of priority documents through DAS.
• This eliminates the need to manually file certified copies in some cases.
• The USPTO or IB can retrieve the priority document electronically if available.

MPEP 213.07 states: The certified copy of the foreign application must be filed within the later of four months from the filing date of the international design application, or sixteen months from the filing date of the prior foreign application, except as provided in paragraphs (h), (i), and (j) of this section. DAS can help meet these deadlines more efficiently.

To learn more:

• Digital Access Service
• DAS
• priority documents
• electronic retrieval

The requirements for filing a foreign priority claim differ for applications filed before and after September 16, 2012. The key difference lies in where the priority claim must be presented:

• For applications filed on or after September 16, 2012: The priority claim must be presented in an Application Data Sheet (ADS). This is specified in 37 CFR 1.55(d)(1): For applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, 37 CFR 1.55(d)(1) requires the claim for priority to be presented in an application data sheet.
• For applications filed before September 16, 2012: The priority claim can be presented either in an Application Data Sheet or in the oath or declaration. As stated in the MPEP: For applications filed under 35 U.S.C. 111(a) prior to September 16, 2012, unless provided in an application data sheet, the oath or declaration under 37 CFR 1.63 must identify the foreign application for patent or inventor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which priority is claimed, by specifying the application number, country, day, month, and year of its filing.

Regardless of the filing date, the priority claim must include the same essential information: the application number, country (or intellectual property authority), and filing date (day, month, and year) of the foreign application. The difference is primarily in the document where this information must be presented.

There is a significant difference in how affidavits are handled between applications filed under 37 CFR 1.53(b) and 37 CFR 1.53(d). According to MPEP ¶ 2.03:

“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”

In summary:

• For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly included and referenced.
• For 37 CFR 1.53(d) applications: Affidavits from the parent nonprovisional application automatically become part of the new application.

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

The main difference between utility and design patents is in what they protect:

• Utility patents protect the way an article is used and works. They cover new and useful processes, machines, manufactures, or compositions of matter.
• Design patents protect the way an article looks. They cover new, original, and ornamental designs for an article of manufacture.

The MPEP distinguishes between these types of patents by referencing different sections of U.S. Code: utility patents are provided for by 35 U.S.C. 101, while design patents are provided for by 35 U.S.C. 171.

For more information on design patent, visit: design patent.

The process for deleting an inventor from a Continued Prosecution Application (CPA) differs depending on when the request is made:

• At CPA Filing: You can submit a statement requesting the deletion of an inventor when filing the CPA. This is a straightforward process that doesn’t require additional paperwork.
• After CPA Filing: If you need to delete an inventor after the CPA has been filed, you must follow a more formal procedure. The MPEP states:
  

  “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”

This means that post-filing inventor deletions require a formal request under 37 CFR 1.48, which typically involves additional documentation and potentially fees.

For more information on CPA, visit: CPA.

The process for correcting inventorship in a Continued Prosecution Application (CPA) differs depending on when the correction is requested:

• At CPA filing: Inventorship can be corrected by submitting a statement requesting deletion of a named inventor along with the CPA filing. This process is straightforward and does not require additional procedures.
• After CPA filing: The MPEP states, Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48. This means additional documentation and possibly fees are required for post-filing inventorship changes.

It’s generally simpler to correct inventorship at the time of CPA filing if possible.

For more information on CPA, visit: CPA.

For more information on patent procedure, visit: patent procedure.

The main differences between claiming benefit under 35 U.S.C. 119(e) and 35 U.S.C. 120 are:

• 35 U.S.C. 119(e):
  • Used for claiming benefit of a provisional application
  • Does not require specifying the relationship between applications
  • Example: “This application claims the benefit of U.S. Provisional Application No. 61/123,456, filed January 1, 2020.”
• 35 U.S.C. 120:
  • Used for claiming benefit of a nonprovisional application
  • Requires specifying the relationship (continuation, divisional, or continuation-in-part)
  • Example: “This application is a continuation of U.S. Application No. 12/345,678, filed January 1, 2020.”

MPEP 211.02 advises: “Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recommended that applicants claim the benefit to a provisional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).”

It’s important to use the correct statute when making benefit claims to ensure proper recognition and avoid potential issues with patent term calculations.

To learn more:

• benefit claim
• priority claim
• provisional application
• nonprovisional application
• patent term

The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d). According to MPEP ¶ 2.03:

“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”

In summary:

• For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly incorporated.
• For 37 CFR 1.53(d) applications: Affidavits from the parent application are automatically included.

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

For more information on patent applications, visit: patent applications.

The distinction between unintentional and intentional delay is crucial when filing a delayed benefit claim. The MPEP 211.04 addresses this:

‘A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by: … (3) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.’

An unintentional delay may be caused by oversight, administrative error, or other circumstances not intended to delay the filing. Intentional delay, on the other hand, implies a deliberate choice not to file the benefit claim on time. Only unintentional delays can be remedied through a petition. Intentional delays are not excusable and will result in the denial of the delayed benefit claim.

To learn more:

• unintentional delay
• intentional delay
• delayed benefit claim
• petition requirements

According to MPEP 201.02, there are important distinctions between ‘original’ and ‘substitute’ applications:

Original Application: This term is used in patent statutes and rules to refer to an application that is not a reissue application. An original application can be either a first filing or a continuing application.

Substitute Application: The MPEP defines a substitute application as follows:

A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. […] A substitute application does not obtain the benefit of the filing date of the prior application.

The key difference is that a substitute application does not retain the filing date of the prior application, unlike certain types of continuing applications.

For more information on patent filing, visit: patent filing.

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

According to the MPEP, there is no substantial difference between an ‘allowed’ application and an application ‘in issue’. The MPEP uses these terms interchangeably:

“An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant.”

Both terms refer to an application that has passed examination and is awaiting issuance as a patent, provided that all necessary fees are paid and no issues arise that would necessitate withdrawal from issue.

To learn more:

• allowed application
• application in issue
• patent examination
• notice of allowance

What is the difference between a utility patent and a design patent application?

Utility patents and design patents protect different aspects of an invention, and their applications are processed differently. According to MPEP 201.02:

‘A utility application is a nonprovisional application that is not a design application. A design application is an application for a design patent.’

Key differences include:

• Utility Patent Application:
  • Protects the functional aspects of an invention
  • Covers how an invention works or is used
  • Has a term of 20 years from the filing date
• Design Patent Application:
  • Protects the ornamental design of a functional item
  • Covers how an invention looks
  • Has a term of 15 years from the grant date

Inventors should carefully consider which type of patent application best suits their invention’s nature and intended protection.

For more information on design patent, visit: design patent.

For more information on patent application types, visit: patent application types.

For more information on USPTO, visit: USPTO.

What is the difference between a parent application and a child application in patent law?

In patent law, the terms ‘parent application’ and ‘child application’ refer to the relationship between related patent applications. According to MPEP 201.02:

“The term parent application is used to refer to the immediate prior application from which a continuing application claims priority.”

“A child application is an application that claims the benefit of an earlier filing date from a parent application.”

Key differences:

• Parent application: The original or earlier-filed application
• Child application: A subsequent application that claims priority from the parent
• Child applications can be continuations, divisionals, or continuations-in-part
• The parent-child relationship establishes a priority claim under 35 U.S.C. 120

Understanding this relationship is crucial for determining priority dates and the scope of patent protection in related applications.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

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

For more information on patent application types, visit: patent application types.

While MPEP 203.03 specifically discusses amended nonprovisional applications, it’s important to understand the distinction between nonprovisional and provisional applications:

• Nonprovisional Application: This is a formal patent application that can result in an issued patent. It undergoes examination and can be amended, as described in MPEP 203.03.
• Provisional Application: This is a temporary application that establishes a priority date but does not undergo examination and cannot be amended.

The amended status discussed in MPEP 203.03 applies only to nonprovisional applications, as provisional applications are not examined or amended.

To learn more:

• nonprovisional application
• provisional application
• patent types
• patent prosecution

The terms ‘national application,’ ‘provisional application,’ and ‘nonprovisional application’ are defined in 37 CFR 1.9(a). Specifically:

• A national application refers to a U.S. patent application that is not an international application.
• A provisional application is a type of patent application that allows filing without a formal patent claim or any information disclosure statement.
• A nonprovisional application is a regular patent application that includes a specification, claims, and other formal requirements.

These definitions help distinguish between different types of patent applications in the U.S. patent system.

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

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

For more information on USPTO, visit: USPTO.

A national application is filed directly with the United States Patent and Trademark Office (USPTO) under U.S. patent laws, while an international application is filed under the Patent Cooperation Treaty (PCT).

According to MPEP 201.01: ‘National applications include original (nonprovisional), reissue, design, plant, and provisional applications.’ These applications are processed solely within the U.S. patent system.

International applications, on the other hand, are filed under the PCT and can potentially lead to patent protection in multiple countries. They enter the national phase in individual countries at a later stage.

For more information on USPTO, visit: USPTO.

MPEP 201.01 distinguishes between national applications and international applications:

• National applications are filed directly with the USPTO under 35 U.S.C. 111(a) or enter the national stage from an international application after complying with 35 U.S.C. 371.
• International applications are filed under the Patent Cooperation Treaty (PCT).

The MPEP states: The term ‘national application’ as used in this title refers to a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371. (MPEP 201.01)

International applications become national applications when they enter the national stage in a specific country, such as the United States. This process involves meeting the requirements of 35 U.S.C. 371.

For more information on international applications, visit: international applications.

For more information on national stage entry, visit: national stage entry.

What is the difference between a divisional and a continuation application?

While both divisional and continuation applications are types of continuing applications, they serve different purposes:

• Divisional Application: Filed to pursue claims to an invention that was not elected in a previous application due to a restriction requirement.
• Continuation Application: Filed to pursue additional claims to the same invention disclosed in the parent application.

The MPEP 201.06(c) states: “A divisional application is often filed as a result of a restriction requirement made by the examiner.” In contrast, a continuation typically doesn’t arise from a restriction requirement but rather from the applicant’s desire to pursue additional aspects of the same invention.

Both types can be filed under 37 CFR 1.53(b) and may claim the benefit of the parent application’s filing date.

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

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

There is a significant difference in how Continued Prosecution Applications (CPAs) are treated for utility/plant applications versus design applications. According to the examiner’s note in MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This indicates that for utility or plant applications, an improper CPA request is treated as a Request for Continued Examination (RCE). However, for design applications, CPA requests are generally accepted and processed as described in MPEP ¶ 2.35. This distinction is important for applicants to understand when considering their continued prosecution options.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on patent application types, visit: patent application types.

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

Continued Prosecution Applications (CPAs) are primarily used for design patent applications. For utility or plant applications, improper CPA requests are typically treated as Requests for Continued Examination (RCE). The MPEP ¶ 2.35 notes:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This distinction is important for applicants to understand when considering their options for continuing prosecution of their patent applications.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.