Patent Law FAQ

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.

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: 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. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

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 Application Process, visit: Patent Application Process.

A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:

• The filing date of the CPA request
• The parent application number

The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.

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

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

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

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

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

For more information on USPTO, visit: USPTO.

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.

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

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

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

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

Can a divisional application be filed without a restriction requirement?

While divisional applications are typically filed in response to a restriction requirement, they can be filed voluntarily without one. The MPEP 201.06 states:

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

However, the use of “often” implies that this is not always the case. Applicants may choose to file a divisional application voluntarily if they:

• Recognize distinct inventions in their application
• Want to pursue different claim scopes separately
• Need to address potential unity of invention issues proactively

It’s important to note that voluntarily filing a divisional application without a restriction requirement may affect the application of the safe harbor provision under 35 U.S.C. 121, which protects against double patenting rejections in certain cases.

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

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

Can a continuation-in-part application claim priority to a provisional application?

Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.

Key points to understand:

• Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
• New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
• One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
• Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.

Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.

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

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

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

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

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

A ‘bypass’ continuation application is a specific type of continuation application that is filed under 37 CFR 1.53(b) to ‘bypass’ the national stage of an international application. As explained in MPEP 201.06(c):

“A continuation application filed under 37 CFR 1.53(b) may be filed as a continuation of an international application designating the United States without entering the national stage under 35 U.S.C. 371. This is often referred to as a ‘bypass’ continuation application.”

This type of application allows applicants to pursue patent protection in the U.S. based on their international application without going through the formal national stage entry process. It can be advantageous in certain situations, such as when an applicant wants to modify claims or add new matter before U.S. examination.

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

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].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

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

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

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

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.

The deadline for filing an unintentionally delayed priority claim is 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 application

This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.

As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’

• The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
• The petition fee as set forth in § 1.17(m); and
• A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.

To learn more:

• unintentionally delayed priority claim
• deadline
• petition
• 37 CFR 1.55
• 37 CFR 1.78

To learn more:

• 37 CFR 1.55
• 37 CFR 1.78

What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?

If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed. (MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.

To learn more:

• provisional application
• nonprovisional application
• priority claim
• deadline
• patent filing

To learn more:

• filing deadline
• patent rights

English translations of non-English language foreign applications are not always required. However, 37 CFR 1.55(g)(3) specifies three situations where an English translation may be necessary:

“An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference or derivation proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.”

If a translation is required, it must be filed with a statement certifying that the translation is accurate. This ensures that the USPTO can properly evaluate the priority claim when necessary for examination or proceedings.

To learn more:

• English translation
• foreign priority documents
• patent application
• language requirements

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

When claiming benefit to multiple prior applications, applicants must carefully establish a chain of copendency. The MPEP 211.01(b) provides guidance:

“The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications.”

Key points to remember:

• References must be made in each intermediate application in the chain.
• A specific reference is required for each prior-filed application and cannot be incorporated by reference from a prior application.
• There is no limit to the number of prior applications through which a chain of copendency may be traced.

It’s crucial to properly reference all prior applications to ensure the desired benefit claims are recognized. Failure to do so may result in the need for a petition under 37 CFR 1.78 and payment of a petition fee.

To learn more:

• benefit claims
• multiple prior applications
• chain of copendency
• reference to prior applications

No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:

“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”

This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.

To learn more:

• provisional application priority
• patent filing
• USPTO
• priority claim

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

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.

A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.

According to the MPEP:

A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.

The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.

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

Yes, a continuation application can claim priority to multiple parent applications under certain conditions. According to MPEP 201.07:

‘A continuation application may be filed as a continuation of an earlier application of the same applicant… The continuation application may be filed before the patenting or abandonment of or termination of proceedings on the prior application.’

This means that:

• The continuation must have at least one common inventor with the parent application(s).
• The continuation must be filed while at least one of the parent applications is still pending.
• The continuation cannot introduce new matter beyond what was disclosed in the parent application(s).

When claiming priority to multiple parents, the continuation essentially combines the disclosures of the parent applications, as long as they form a continuous chain of copending applications.

To learn more:

• continuation application
• multiple parent applications
• priority claim
• patent application chain

To learn more:

• patent priority

The ‘statement of unintentional delay’ is a crucial component of a petition to accept an unintentionally delayed priority claim. According to MPEP 214.02:

The Director may require additional information where there is a question whether the delay was unintentional.

This statement must affirm that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional. It’s important to note that:

• The USPTO requires an additional explanation of the circumstances surrounding the delay that establishes the entire delay was unintentional.
• The statement must be signed by a person who has sufficient knowledge of the facts to support the statement.
• Providing an inadequate or insufficient explanation may lead to a request for further information, which could delay the petition process.

Applicants should be prepared to provide a detailed account of the circumstances that led to the delay, ensuring that it covers the entire period of delay and demonstrates that the delay was truly unintentional.

To learn more:

• statement of unintentional delay
• delayed priority claim
• petition
• MPEP 214.02

To learn more:

• MPEP 214.02

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

Can a continuation-in-part (CIP) application claim benefit to a provisional application?

Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:

“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”

However, it’s crucial to understand that:

• Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
• New matter added in the CIP will have the filing date of the CIP application itself.
• The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.

For more details on claiming benefit of provisional applications, see MPEP 211.

To learn more:

• continuation-in-part application
• provisional application
• benefit claim
• priority date

An inventor’s certificate is a form of intellectual property protection offered in some countries. It can form the basis for priority rights under certain conditions, as stated in 35 U.S.C. 119(d):

Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents…

This means that if an applicant had the option to file for either a patent or an inventor’s certificate in the foreign country, they can claim priority based on the inventor’s certificate application in the United States.

To learn more:

• inventor’s certificate
• patent priority
• foreign priority
• intellectual property

Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:

‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’

Key differences between provisional and non-provisional applications:

• Provisional applications have a simplified filing process and lower fees.
• They do not require formal patent claims or an oath or declaration.
• Provisional applications are not examined and automatically expire after 12 months.
• To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.

Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.

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

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

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

There are three main types of national applications for patents in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications that have entered the national stage in the United States

As stated in MPEP 201.01: “Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).”

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

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

Can a national application be converted to an international application?

Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.

For more information on conversion, visit: conversion.

A continuation application can have significant implications for the patent term. Here are key points to understand:

• Patent Term Calculation: The term of a patent stemming from a continuation application is generally calculated from the filing date of the earliest application in the chain to which priority is claimed.
• 20-Year Term: Under current U.S. law, utility and plant patents have a term of 20 years from the earliest effective U.S. filing date of the application.
• No Extension of Monopoly: As stated in MPEP 201.07, ‘The filing of a continuation application does not extend the term of the patent to be granted on the continuing application because the term of a patent issuing on a continuation application is measured from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).’
• Patent Term Adjustment: While the base term is not extended, a continuation may be eligible for patent term adjustment due to delays in prosecution, which can effectively extend the term.

It’s important to note that while continuation applications don’t extend the base patent term, they can provide strategic advantages in terms of claim scope and prosecution timing.

To learn more:

• continuation application
• patent term
• patent expiration
• patent term adjustment

The USPTO’s handling of preliminary amendments in continuation applications depends on when the application was filed and the nature of the amendment:

• For applications filed on or after September 21, 2004: A preliminary amendment that is present on the filing date of the application is considered part of the original disclosure.
• All preliminary amendments: Must be filed in compliance with 37 CFR 1.121, which includes providing a complete claim listing whenever a claim is added, canceled, or amended.
• Substitute specification: The Office may require a substitute specification for preliminary amendments.

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.

It’s important to note that the USPTO advises against filing a continuation application with a preliminary amendment that makes all desired changes. Instead, they recommend:

Filing a continuing application under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.

This approach ensures that the published application contains the intended set of claims, rather than those from the prior application.

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

A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:

An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.

This means that:

• A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
• A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
• Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

Can I claim priority to a provisional application filed in a foreign country?

No, you cannot claim priority to a provisional application filed in a foreign country. The MPEP 213.02 states:

‘Note that a foreign filed provisional application is not eligible for priority benefit.’

Priority claims can only be made to non-provisional applications or other types of applications that are recognized under the Paris Convention. Provisional applications are unique to the U.S. patent system and are not recognized as priority documents in foreign countries or under international agreements.

To learn more:

• provisional application
• foreign priority
• Paris Convention

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.

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 assignment of a priority right can significantly impact patent applications. According to MPEP 216:

‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’

Key points about the assignment of priority rights:

• Priority rights can be transferred separately from the application itself.
• The assignment must be executed before filing the later application claiming priority.
• An assignment of the entire right, title, and interest in an application includes the right of priority.
• Partial assignments of priority rights are possible but must be clearly documented.

Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.

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

Yes, it is possible to file a delayed benefit claim in an abandoned application, particularly for provisional applications. The MPEP 211.04 states:

“Effective December 18, 2013, 35 U.S.C. 119(e)(1) no longer requires that the amendment containing the specific reference to the earlier filed provisional application be submitted during the pendency of the application. Therefore, a petition to revive is no longer required to add or correct a benefit claim under 35 U.S.C. 119(e) in an abandoned nonprovisional application filed on or after November 29, 2000.”

This means you can file a petition under 37 CFR 1.78 to accept an unintentionally delayed claim for the benefit of a prior-filed provisional application in the abandoned nonprovisional application. This may be necessary to correct benefit claims in later-filed applications that claim benefit from the abandoned application.

To learn more:

• abandoned application
• delayed benefit claim
• provisional application
• petition

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 happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?

If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:

‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’

This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.

To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP 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.”

It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “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.”

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.

To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):

Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under §1.1023.

For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.

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

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

For more information on prior-filed application, visit: prior-filed application.

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.

To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:

• The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The CIP must contain or be amended to contain a specific reference to the earlier filed application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
• The CIP must have at least one common inventor with the prior-filed application.

Additionally, the MPEP notes:

“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”

It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.

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

For more information on prior-filed application, visit: prior-filed application.

When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:

1. A clear statement requesting the deletion of the inventor(s)
2. The name(s) of the inventor(s) to be deleted
3. The filing date of the CPA

The MPEP provides a template for acknowledging such requests:

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].

In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

For more information on USPTO, visit: USPTO.

Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.

The MPEP ¶ 2.10.01 states:

“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”

If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.

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

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

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

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

A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:

• Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
• New matter introduced in the CIP will have the filing date of the CIP application.
• Each claim in the CIP is evaluated independently for priority date determination.

MPEP 211.05 states:

A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.

This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.

To learn more:

• continuation-in-part
• CIP
• prior application
• filing date benefit
• new matter

To file a Continued Prosecution Application (CPA) in a design application, the following requirements must be met:

• The application must be a design application.
• The prior application must be a nonprovisional application.
• The application must be filed before the earliest of:
  • Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
  • Abandonment of the prior application; or
  • Termination of proceedings on the prior application.

As stated in the MPEP 201.06(d): “A continuation or divisional application that is a nonprovisional application may be filed as a CPA under 37 CFR 1.53(d) if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).”

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

For more information on CPA, visit: CPA.

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

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

Affidavits or declarations from a prior application do not automatically become part of a continuation or divisional application filed under 37 CFR 1.53(b). If an applicant wants to rely on these documents, they must take specific actions:

1. Make remarks of record in the new application referring to the affidavit or declaration.
2. Include a copy of the original affidavit or declaration filed in the prior application.

The MPEP states: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declaration filed in the prior nonprovisional application.

It’s important to note that this rule doesn’t apply to continued prosecution applications (CPAs) filed under 37 CFR 1.53(d), where affidavits and declarations do automatically become part of the new application.

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

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

A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.

According to MPEP ¶ 2.32:

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 paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.

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 inventorship, visit: inventorship.

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

When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 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 means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

The process for deleting a benefit claim depends on when your application was filed:

• For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
• For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.

However, be aware of the following considerations:

• The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
• If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
• If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
• Deleting a benefit claim may affect the publication date of the application.

The MPEP also notes an important caveat:

A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.

This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.

To learn more:

• delete benefit claim
• ADS
• patent application
• amendment
• specification

When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:

• Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
• Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
• The new matter may affect the application’s ability to overcome prior art references.

As stated in MPEP 211.05:

“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”

This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.

To learn more:

• continuation-in-part application
• new matter
• prior art
• effective filing date
• parent application

Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?

While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:

“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)

However, this exception comes with strict conditions:

• The delay in filing must have been unintentional.
• The nonprovisional application must be filed within 14 months from the provisional filing date.
• A petition to restore the right of priority must be filed promptly.

It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.

To learn more:

• provisional application
• nonprovisional application
• priority claim
• filing deadline

The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:

• It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
• The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
• The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.

The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’

This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.

The effective filing date for claims in a continuation-in-part (CIP) application can vary depending on the content of the claims. According to MPEP 201.08:

The effective filing date of a claimed invention in a continuation-in-part application is determined on a claim-by-claim basis and is dependent upon the sufficiency of the disclosure in the earlier application(s) to support the claimed invention with 35 U.S.C. 112(a) except for the best mode requirement.

This means:

• Claims that are fully supported by the earlier application(s) get the benefit of the earlier filing date(s).
• Claims that rely on newly added matter in the CIP have the filing date of the CIP as their effective filing date.

It’s crucial for patent applicants to carefully consider the implications of adding new matter in a CIP, as it can affect the priority date and potentially impact patentability.

To learn more:

• continuation-in-part
• CIP
• effective filing date
• claim priority
• 35 U.S.C. 112(a)

To learn more:

• 35 U.S.C. 112(a)

An abandoned patent application is one that has been removed from the USPTO’s docket of pending applications. According to MPEP 203.05, an application can become abandoned for several reasons:

An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:

• Formal abandonment by the applicant or their attorney/agent
• Failure to take appropriate action during prosecution
• Failure to pay the issue fee
• For provisional applications, not filing a nonprovisional application within 12 months

Abandonment can have serious consequences, but in some cases, it may be possible to revive an abandoned application.

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

The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:

The filing date of a continuation application is the filing date of the parent application.

However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:

• The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
• For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
• Each continuation in a chain reduces the effective patent term.

It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.

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

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

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

For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):

The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.

However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.

To learn more:

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

The USPTO determines if a claim in a later-filed application is entitled to the benefit of an earlier filing date by evaluating whether:

• The subject matter of the claim is disclosed in the earlier-filed application.
• The disclosure in the earlier-filed application complies with the requirements of 35 U.S.C. 112(a), except for the best mode requirement.
• The disclosure enables one skilled in the art to make and use the claimed invention without undue experimentation.

As stated in MPEP 211.05:

“A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to ‘use’ the claimed invention.”

If the earlier application fails to provide adequate support or enablement for a claim in the later-filed application, that claim will not be entitled to the earlier filing date. This assessment is made on a claim-by-claim basis, and different claims within the same application may have different effective filing dates.

To learn more:

• benefit claim evaluation
• priority date determination
• enablement assessment
• written description requirement

The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:

• Claims that are fully supported by the parent application retain the parent’s filing date.
• Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.

The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application. This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.

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

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

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

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

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

For more information on CPA, visit: CPA.

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

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), which include continuations, divisionals, and continuation-in-part applications, the benefit claim must include specific information about the relationship between the applications. The MPEP states:

“For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”

This means that when making a benefit claim, you must explicitly state whether the current application is a:

• Continuation
• Divisional
• Continuation-in-part

of the prior application. This information helps the USPTO and others understand the relationship between related applications and ensures proper examination and treatment of the claims.

Remember, this requirement is in addition to other necessary information for the benefit claim, such as the application number and filing date of the prior application.

For more information on divisional, visit: divisional.

Continuation applications and provisional applications are distinct types of patent applications with different purposes and requirements. A key difference is that a continuation application is based on a prior nonprovisional application, while a provisional application is a standalone filing that can later be used as a priority document.

The MPEP specifically notes:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the provisional application.”

This guidance also applies to continuation applications. Provisional applications serve as temporary placeholders and do not undergo examination, while continuation applications are fully examined and build upon previously filed nonprovisional applications.

To learn more:

• continuation application
• provisional application
• patent types
• application differences

What happens if a continuation application is filed after the parent application has been abandoned?

If a continuation application is filed after the parent application has been abandoned, it may still be entitled to the benefit of the filing date of the prior application. The MPEP states:

“Where the prior application has been abandoned, the petition to revive under 37 CFR 1.137 (a) or (b) must be filed in the prior application, or in a subsequent nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior application, if the prior nonprovisional application is not pending and claims the benefit under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) of a provisional application.”

This means that even if the parent application is abandoned, you can still file a continuation application and potentially revive the parent application. However, specific procedures must be followed, including filing a petition to revive in the appropriate application.

For more information on reviving abandoned applications, refer to MPEP 711.

To learn more:

• continuation application
• abandoned application
• petition to revive
• 37 CFR 1.137

To learn more:

• 37 CFR 1.137

For an international design application to be used as a basis for benefit claims, it must meet certain conditions. The MPEP specifies:

To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023.

This means that the international design application must have a valid filing date as determined by the regulations set forth in 37 CFR 1.1023. These regulations outline the requirements for establishing a filing date for international design applications, which typically include submitting the necessary documents and fees to the International Bureau or an appropriate office.

Additionally, the application claiming benefit must comply with the requirements of 35 U.S.C. 120, which include proper copendency and specific reference to the earlier application.

To learn more:

• international design application
• benefit claim
• filing date
• 37 CFR 1.1023
• 35 U.S.C. 120

To learn more:

• 37 CFR 1.1023
• 35 U.S.C. 120

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 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

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

How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?

When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):

The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).

To properly mark changes in a corrected ADS:

• Insertions: Underline new text
• Deletions: Use strike-through or brackets for removed text
• Existing information: Include all information from the original ADS, even if unchanged

It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.

To learn more:

• ADS
• benefit claim
• correction
• marking changes
• patent application

For international applications entering the national stage in the United States under 35 U.S.C. 371, the process for filing a foreign priority claim is different from regular U.S. applications. According to MPEP 214.01:

“The claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT in an international application entering the national stage under 35 U.S.C. 371, except as provided in paragraph (e) of this section.”

This means that you need to follow the time limits specified in the Patent Cooperation Treaty (PCT) and its regulations when filing a priority claim for an international application entering the U.S. national stage.

For more detailed information on the timing and procedure for claiming priority in national stage applications, you should refer to MPEP § 213.06, which specifically deals with this topic.

To learn more:

• international application
• PCT
• national stage
• foreign priority
• filing deadline

To correctly add a new inventor to a Continued Prosecution Application (CPA), you must follow the procedures outlined in 37 CFR 1.48. The MPEP ¶ 2.33 states:

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

To add a new inventor:

1. File a request under 37 CFR 1.48 to correct the inventorship.
2. Include a statement from the new inventor agreeing to the addition.
3. Pay any required fees.
4. Provide an oath or declaration from the new inventor.

Failure to follow these steps may result in the inventorship remaining the same as in the prior application.

For more information on CPA, visit: CPA.

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03:

“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 do not automatically become a part of this application.”

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

This ensures that the examiner can consider the previously submitted evidence in the context of the new application.

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

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

The United States Patent and Trademark Office (USPTO) formally acknowledges a Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) through an official response. This acknowledgment serves as confirmation that the request has been received and processed.

The MPEP ¶ 2.32 provides the standard language used by examiners to acknowledge such requests:

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.

In this acknowledgment:

• [1] refers to the name(s) of the inventor(s) requested to be deleted
• [2] indicates the filing date of the CPA

This official response confirms that the USPTO has processed the request and updated the inventorship accordingly.

For more information on CPA, visit: CPA.

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

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
2. For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

• Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
• If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
• Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
• In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

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

A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:

A ‘continued prosecution application’ (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.

Key differences of CPAs compared to other continuing applications:

• Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
• Automatic abandonment: Filing a CPA automatically abandons the prior application.
• Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
• Examination continuation: The examination process continues from where it left off in the parent application.

It’s important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).

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

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

For more information on CPA, visit: CPA.

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

An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:

• The application discloses only subject matter that was previously disclosed in a prior application
• The application claims only subject matter that was disclosed in the prior application
• The application names at least one inventor who was also named in the prior application

The MPEP provides specific language for this assessment: “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)

If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.

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

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

How do I correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78?

To correct a benefit claim in a nonprovisional application after the time period set forth in 37 CFR 1.78, you need to file a petition to accept a delayed claim. The MPEP states:

“A petition to accept a delayed claim under 37 CFR 1.78(c) for the benefit of a prior-filed provisional application or under 37 CFR 1.78(e) for the benefit of a prior-filed nonprovisional application must be accompanied by:”

• The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application or the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed nonprovisional application, unless previously submitted;
• The petition fee set forth in 37 CFR 1.17(m); and
• A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) or 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional.

The Director may require additional information where there is a question whether the delay was unintentional.

For more detailed information, refer to MPEP 211.02(a).

To learn more:

• benefit claim
• nonprovisional application
• petition
• delayed claim

According to MPEP 203.05, you have 12 months from the filing date of your provisional application to file a nonprovisional application. The MPEP states:

“in the case of a provisional application, no later than 12 months after the filing date of the provisional application”

If you don’t file a nonprovisional application within this timeframe, your provisional application will be considered abandoned. This 12-month period is set by 35 U.S.C. 111(b)(5).

To learn more:

• provisional applications
• nonprovisional applications
• patent filing deadlines

Can a provisional application be used as a prior-filed application for benefit claims?

Yes, a provisional application can be used as a prior-filed application for benefit claims in certain circumstances. According to MPEP 211.01:

‘The prior application may be a provisional application under 35 U.S.C. 111(b) or a nonprovisional application under 35 U.S.C. 111(a).’

However, there are specific requirements and limitations when claiming the benefit of a provisional application:

• The nonprovisional application must be filed within 12 months of the provisional application’s filing date (or 14 months with a grantable petition under 37 CFR 1.78(b)).
• The provisional application must adequately support and enable the subject matter of the claims in the nonprovisional application.
• The specific reference to the provisional application must be included in an application data sheet (ADS) or the first sentence of the specification.

It’s important to note that while a nonprovisional application can claim the benefit of a provisional application, a provisional application cannot claim the benefit of or priority to any other application.

To learn more:

• provisional application
• priority claim
• benefit claim
• prior-filed application

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03: 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 do not automatically become a part of this application.

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

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

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

How does a provisional application affect public disclosure of an invention?

Filing a provisional application does not automatically result in public disclosure of your invention. The MPEP 201.04 states: ‘A provisional application will not be published, and, therefore, no publication fee is required.’

This means that your invention remains confidential when you file a provisional application. However, it’s crucial to understand that:

• The confidentiality only applies to the USPTO’s handling of your application.
• If you publicly disclose your invention yourself, it could affect your ability to obtain patents in some countries.
• The 12-month grace period for filing a nonprovisional application starts from the provisional filing date, not from any public disclosure you might make.

Always consult with a patent attorney before making any public disclosures about your invention, even after filing a provisional application.

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

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

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.

Patent examiners use specific criteria to determine if an application may qualify as a continuation-in-part (CIP). According to MPEP ¶ 2.06, an examiner should consider the following:

• The application repeats a substantial portion of a prior application.
• The application adds disclosure not presented in the prior application.
• The application names the inventor or at least one joint inventor named in the prior application.

The MPEP states: Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. However, examiners are advised to use this determination cautiously: 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.

If you filed a translation of the non-English provisional application and a statement of accuracy in the nonprovisional application before November 25, 2005, you do not need to provide them again. The MPEP ¶ 2.38 states in the Examiner Note:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This exception only applies to translations filed in the nonprovisional application before the specified date. For all other cases, the translation and statement must be filed in the provisional application itself.

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

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

If you submitted the reference to the prior application within the required time period but in the wrong location, you may not need to file a petition. The MPEP provides guidance on this situation:

If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required. (MPEP § 211)

However, you are still required to submit the reference in compliance with 37 CFR 1.78. This means:

• For applications filed on or after September 16, 2012: File an ADS in compliance with 37 CFR 1.76 with the reference.
• For applications filed before September 16, 2012: File either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76.

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

No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:

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

This means:

• The divisional application must be limited to the subject matter disclosed in the parent application
• No new matter can be added to the divisional application
• The claims in the divisional must be supported by the disclosure of the parent application

If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.

To learn more:

• divisional application
• new matter
• continuation-in-part
• CIP
• patent disclosure

If you receive a filing receipt with missing or incorrect benefit claim information, you can request a corrected filing receipt. However, the Office will only grant such a request if the proper reference to the prior application is included:

• For applications filed on or after September 16, 2012: in an Application Data Sheet (ADS)
• For applications filed prior to September 16, 2012: in the first sentence(s) of the specification or an ADS

This reference must be made within the time period required by 37 CFR 1.78, with a few exceptions. As stated in the MPEP:

The Office may notify applicants on or with the filing receipt that a benefit claim may not have been recognized because the benefit claim was improper but applicants are advised that only the benefit claims that are listed on the filing receipt have been recognized by the Office.

It’s crucial to review your filing receipt promptly and carefully to avoid the need for a petition and associated fees.

To learn more:

• filing receipt
• benefit claim
• ADS
• patent application
• correction

An ‘allowed’ application is a nonprovisional patent application that has been examined and determined to meet all statutory requirements. The Manual of Patent Examining Procedure (MPEP) states:

“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.”

This means that the patent examiner has reviewed the application and found it to be in compliance with all applicable laws and regulations, and has subsequently issued a notice of allowance to the applicant.

To learn more:

• allowed application
• patent examination
• notice of allowance
• statutory requirements

The USPTO recognizes that some countries have restrictions on who can apply for patents versus inventor’s certificates. As stated in MPEP 213.05:

It is recognized that certain countries that grant inventors’ certificates also provide by law that their own nationals who are employed in state enterprises may only receive inventors’ certificates and not patents on inventions made in connection with their employment. This will not impair their right to be granted priority in the United States based on the filing of the inventor’s certificate.

This means that even if an applicant was restricted to filing for an inventor’s certificate in their home country due to employment or nationality, they can still claim priority in the US based on that filing. The key factor is whether the option to file for either a patent or an inventor’s certificate generally existed in the country for the particular subject matter, not whether the specific applicant had that choice.

To learn more:

• inventor’s certificate
• patent priority
• foreign priority
• restricted options

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: 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. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

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 Application Process, visit: Patent Application Process.

A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:

• The filing date of the CPA request
• The parent application number

The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.

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

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

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

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

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

For more information on USPTO, visit: USPTO.

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.

Can a divisional application be filed without a restriction requirement?

While divisional applications are typically filed in response to a restriction requirement, they can be filed voluntarily without one. The MPEP 201.06 states:

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

However, the use of “often” implies that this is not always the case. Applicants may choose to file a divisional application voluntarily if they:

• Recognize distinct inventions in their application
• Want to pursue different claim scopes separately
• Need to address potential unity of invention issues proactively

It’s important to note that voluntarily filing a divisional application without a restriction requirement may affect the application of the safe harbor provision under 35 U.S.C. 121, which protects against double patenting rejections in certain cases.

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

Can a continuation-in-part application claim priority to a provisional application?

Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.

Key points to understand:

• Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
• New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
• One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
• Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.

Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.

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

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

A ‘bypass’ continuation application is a specific type of continuation application that is filed under 37 CFR 1.53(b) to ‘bypass’ the national stage of an international application. As explained in MPEP 201.06(c):

“A continuation application filed under 37 CFR 1.53(b) may be filed as a continuation of an international application designating the United States without entering the national stage under 35 U.S.C. 371. This is often referred to as a ‘bypass’ continuation application.”

This type of application allows applicants to pursue patent protection in the U.S. based on their international application without going through the formal national stage entry process. It can be advantageous in certain situations, such as when an applicant wants to modify claims or add new matter before U.S. examination.

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

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].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

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

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

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

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.

A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.

According to the MPEP:

A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.

The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.

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

Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:

‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’

Key differences between provisional and non-provisional applications:

• Provisional applications have a simplified filing process and lower fees.
• They do not require formal patent claims or an oath or declaration.
• Provisional applications are not examined and automatically expire after 12 months.
• To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.

Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.

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

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

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

There are three main types of national applications for patents in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications that have entered the national stage in the United States

As stated in MPEP 201.01: “Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).”

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

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

Can a national application be converted to an international application?

Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.

For more information on conversion, visit: conversion.

The USPTO’s handling of preliminary amendments in continuation applications depends on when the application was filed and the nature of the amendment:

• For applications filed on or after September 21, 2004: A preliminary amendment that is present on the filing date of the application is considered part of the original disclosure.
• All preliminary amendments: Must be filed in compliance with 37 CFR 1.121, which includes providing a complete claim listing whenever a claim is added, canceled, or amended.
• Substitute specification: The Office may require a substitute specification for preliminary amendments.

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.

It’s important to note that the USPTO advises against filing a continuation application with a preliminary amendment that makes all desired changes. Instead, they recommend:

Filing a continuing application under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.

This approach ensures that the published application contains the intended set of claims, rather than those from the prior application.

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

A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:

An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.

This means that:

• A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
• A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
• Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

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.

To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP 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.”

It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “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.”

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.

To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):

Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under §1.1023.

For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.

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

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

For more information on prior-filed application, visit: prior-filed application.

To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:

• The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The CIP must contain or be amended to contain a specific reference to the earlier filed application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
• The CIP must have at least one common inventor with the prior-filed application.

Additionally, the MPEP notes:

“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”

It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.

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

For more information on prior-filed application, visit: prior-filed application.

When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:

1. A clear statement requesting the deletion of the inventor(s)
2. The name(s) of the inventor(s) to be deleted
3. The filing date of the CPA

The MPEP provides a template for acknowledging such requests:

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].

In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

For more information on USPTO, visit: USPTO.

To file a Continued Prosecution Application (CPA) in a design application, the following requirements must be met:

• The application must be a design application.
• The prior application must be a nonprovisional application.
• The application must be filed before the earliest of:
  • Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
  • Abandonment of the prior application; or
  • Termination of proceedings on the prior application.

As stated in the MPEP 201.06(d): “A continuation or divisional application that is a nonprovisional application may be filed as a CPA under 37 CFR 1.53(d) if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).”

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

For more information on CPA, visit: CPA.

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

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

Affidavits or declarations from a prior application do not automatically become part of a continuation or divisional application filed under 37 CFR 1.53(b). If an applicant wants to rely on these documents, they must take specific actions:

1. Make remarks of record in the new application referring to the affidavit or declaration.
2. Include a copy of the original affidavit or declaration filed in the prior application.

The MPEP states: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declaration filed in the prior nonprovisional application.

It’s important to note that this rule doesn’t apply to continued prosecution applications (CPAs) filed under 37 CFR 1.53(d), where affidavits and declarations do automatically become part of the new application.

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

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

A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.

According to MPEP ¶ 2.32:

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 paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.

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 inventorship, visit: inventorship.

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

When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 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 means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:

The filing date of a continuation application is the filing date of the parent application.

However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:

• The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
• For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
• Each continuation in a chain reduces the effective patent term.

It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.

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

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

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

The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:

• Claims that are fully supported by the parent application retain the parent’s filing date.
• Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.

The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application. This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.

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

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

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

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

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

For more information on CPA, visit: CPA.

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

To correctly add a new inventor to a Continued Prosecution Application (CPA), you must follow the procedures outlined in 37 CFR 1.48. The MPEP ¶ 2.33 states:

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

To add a new inventor:

1. File a request under 37 CFR 1.48 to correct the inventorship.
2. Include a statement from the new inventor agreeing to the addition.
3. Pay any required fees.
4. Provide an oath or declaration from the new inventor.

Failure to follow these steps may result in the inventorship remaining the same as in the prior application.

For more information on CPA, visit: CPA.

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03:

“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 do not automatically become a part of this application.”

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

This ensures that the examiner can consider the previously submitted evidence in the context of the new application.

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

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

The United States Patent and Trademark Office (USPTO) formally acknowledges a Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) through an official response. This acknowledgment serves as confirmation that the request has been received and processed.

The MPEP ¶ 2.32 provides the standard language used by examiners to acknowledge such requests:

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.

In this acknowledgment:

• [1] refers to the name(s) of the inventor(s) requested to be deleted
• [2] indicates the filing date of the CPA

This official response confirms that the USPTO has processed the request and updated the inventorship accordingly.

For more information on CPA, visit: CPA.

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

A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:

A ‘continued prosecution application’ (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.

Key differences of CPAs compared to other continuing applications:

• Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
• Automatic abandonment: Filing a CPA automatically abandons the prior application.
• Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
• Examination continuation: The examination process continues from where it left off in the parent application.

It’s important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).

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

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

For more information on CPA, visit: CPA.

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

An examiner determines if an application qualifies as a continuation under MPEP ¶ 2.05 by assessing the following criteria:

• The application discloses only subject matter that was previously disclosed in a prior application
• The application claims only subject matter that was disclosed in the prior application
• The application names at least one inventor who was also named in the prior application

The MPEP provides specific language for this assessment: “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)

If all these criteria are met, the examiner may notify the applicant that the application may constitute a continuation. The examiner will then proceed with the appropriate examination procedures for continuation applications.

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

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

Affidavits or declarations filed in a prior application do not automatically become part of a new application. As stated in MPEP ¶ 2.03: 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 do not automatically become a part of this application.

To rely on an earlier-filed affidavit or declaration, the applicant must:

• Make remarks of record in the new application
• Include a copy of the original affidavit or declaration filed in the prior application

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

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

How does a provisional application affect public disclosure of an invention?

Filing a provisional application does not automatically result in public disclosure of your invention. The MPEP 201.04 states: ‘A provisional application will not be published, and, therefore, no publication fee is required.’

This means that your invention remains confidential when you file a provisional application. However, it’s crucial to understand that:

• The confidentiality only applies to the USPTO’s handling of your application.
• If you publicly disclose your invention yourself, it could affect your ability to obtain patents in some countries.
• The 12-month grace period for filing a nonprovisional application starts from the provisional filing date, not from any public disclosure you might make.

Always consult with a patent attorney before making any public disclosures about your invention, even after filing a provisional application.

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

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

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.

Patent examiners use specific criteria to determine if an application may qualify as a continuation-in-part (CIP). According to MPEP ¶ 2.06, an examiner should consider the following:

• The application repeats a substantial portion of a prior application.
• The application adds disclosure not presented in the prior application.
• The application names the inventor or at least one joint inventor named in the prior application.

The MPEP states: Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. However, examiners are advised to use this determination cautiously: 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.

An abandoned patent application is one that has been removed from the USPTO’s docket of pending applications. According to MPEP 203.05, an application can become abandoned for several reasons:

An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:

• Formal abandonment by the applicant or their attorney/agent
• Failure to take appropriate action during prosecution
• Failure to pay the issue fee
• For provisional applications, not filing a nonprovisional application within 12 months

Abandonment can have serious consequences, but in some cases, it may be possible to revive an abandoned application.

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

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

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

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

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.

Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.

The MPEP ¶ 2.10.01 states:

“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”

If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.

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

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

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

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

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), which include continuations, divisionals, and continuation-in-part applications, the benefit claim must include specific information about the relationship between the applications. The MPEP states:

“For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”

This means that when making a benefit claim, you must explicitly state whether the current application is a:

• Continuation
• Divisional
• Continuation-in-part

of the prior application. This information helps the USPTO and others understand the relationship between related applications and ensures proper examination and treatment of the claims.

Remember, this requirement is in addition to other necessary information for the benefit claim, such as the application number and filing date of the prior application.

For more information on divisional, visit: divisional.

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
2. For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

• Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
• If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
• Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
• In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

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

If you filed a translation of the non-English provisional application and a statement of accuracy in the nonprovisional application before November 25, 2005, you do not need to provide them again. The MPEP ¶ 2.38 states in the Examiner Note:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This exception only applies to translations filed in the nonprovisional application before the specified date. For all other cases, the translation and statement must be filed in the provisional application itself.

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

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

If you submitted the reference to the prior application within the required time period but in the wrong location, you may not need to file a petition. The MPEP provides guidance on this situation:

If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) are not required. (MPEP § 211)

However, you are still required to submit the reference in compliance with 37 CFR 1.78. This means:

• For applications filed on or after September 16, 2012: File an ADS in compliance with 37 CFR 1.76 with the reference.
• For applications filed before September 16, 2012: File either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76.

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

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

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

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

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

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

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.

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.

What happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?

If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:

‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’

This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.

The assignment of a priority right can significantly impact patent applications. According to MPEP 216:

‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’

Key points about the assignment of priority rights:

• Priority rights can be transferred separately from the application itself.
• The assignment must be executed before filing the later application claiming priority.
• An assignment of the entire right, title, and interest in an application includes the right of priority.
• Partial assignments of priority rights are possible but must be clearly documented.

Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.

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

The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:

• It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
• The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
• The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.

The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’

This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.

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.

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: 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. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

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 Application Process, visit: Patent Application Process.

A Continued Prosecution Application (CPA) request for design patents must include specific information to be considered acceptable. According to MPEP ¶ 2.30, the key elements are:

• The filing date of the CPA request
• The parent application number

The MPEP states: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. Here, [1] represents the filing date of the CPA request, and [2] is the parent application number. These details are crucial for establishing the continuity between the parent application and the CPA.

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

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

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

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

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

For more information on USPTO, visit: USPTO.

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.

An applicant can restore the right of priority if the U.S. application is filed after the 12-month deadline (or 6-month deadline for design applications) but within 2 months of the expiration of that period. This can be done through a petition process, provided the delay was unintentional.

According to MPEP 213.03: “As provided in 37 CFR 1.55(c), if the subsequent application has a filing date which is after the expiration of the twelve-month period (or six-month period in the case of a design application), but within two months from the expiration of the period, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.55(c), if the delay in filing the subsequent application within the period was unintentional.”

The petition to restore the right of priority must include:

• The priority claim identifying the prior foreign application
• The petition fee
• A statement that the delay in filing was unintentional

The USPTO may require additional information to establish that the delay was unintentional.

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

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

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

Can a divisional application be filed without a restriction requirement?

While divisional applications are typically filed in response to a restriction requirement, they can be filed voluntarily without one. The MPEP 201.06 states:

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

However, the use of “often” implies that this is not always the case. Applicants may choose to file a divisional application voluntarily if they:

• Recognize distinct inventions in their application
• Want to pursue different claim scopes separately
• Need to address potential unity of invention issues proactively

It’s important to note that voluntarily filing a divisional application without a restriction requirement may affect the application of the safe harbor provision under 35 U.S.C. 121, which protects against double patenting rejections in certain cases.

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

35 U.S.C. 365 addresses the right of priority for international applications in two key aspects:

1. National applications based on international applications
2. International applications based on foreign applications

The MPEP states:

“35 U.S.C. 365(a) provides that a national application shall be entitled to the right of priority based on a prior international application of whatever origin, which designated any country other than, or in addition to, the United States.”

“35 U.S.C. 365(b) provides that an international application designating the United States shall be entitled to the right of priority of a prior foreign application which may either be another international application or a regularly filed foreign application.”

These provisions ensure that applicants can claim priority based on international applications, enhancing the flexibility of the international patent system.

Can a continuation-in-part application claim priority to a provisional application?

Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.

Key points to understand:

• Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
• New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
• One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
• Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.

Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.

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

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

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

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

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

A ‘bypass’ continuation application is a specific type of continuation application that is filed under 37 CFR 1.53(b) to ‘bypass’ the national stage of an international application. As explained in MPEP 201.06(c):

“A continuation application filed under 37 CFR 1.53(b) may be filed as a continuation of an international application designating the United States without entering the national stage under 35 U.S.C. 371. This is often referred to as a ‘bypass’ continuation application.”

This type of application allows applicants to pursue patent protection in the U.S. based on their international application without going through the formal national stage entry process. It can be advantageous in certain situations, such as when an applicant wants to modify claims or add new matter before U.S. examination.

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

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].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

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

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

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

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.

The deadline for filing an unintentionally delayed priority claim is 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 application

This is stated in 37 CFR 1.55(d)(1) for foreign priority claims and 37 CFR 1.78(a)(4) for domestic benefit claims. However, a petition may be filed to accept an unintentionally delayed claim under 37 CFR 1.55(e) or 37 CFR 1.78(c) and (e) after this period.

As stated in MPEP 214.02: ‘A petition to accept an unintentionally delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) requires:’

• The priority claim under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or 386(b) in an application data sheet (§ 1.76(b)(6)), identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
• The petition fee as set forth in § 1.17(m); and
• A statement that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional.

To learn more:

• unintentionally delayed priority claim
• deadline
• petition
• 37 CFR 1.55
• 37 CFR 1.78

To learn more:

• 37 CFR 1.55
• 37 CFR 1.78

What happens if I miss the 12-month deadline for filing a nonprovisional application after a provisional application?

If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you lose the right to claim that benefit. The MPEP states: A provisional application is not entitled to the right of priority under 35 U.S.C. 119(e) unless the full fee set forth in 37 CFR 1.16(d) has been paid and the basic filing fee set forth in 37 CFR 1.16(a) has been paid on or before the date the provisional application was filed. (MPEP 201.04) Additionally, you cannot extend this 12-month period. However, you may still file a nonprovisional application; it just won’t have the earlier priority date of the provisional application.

To learn more:

• provisional application
• nonprovisional application
• priority claim
• deadline
• patent filing

To learn more:

• filing deadline
• patent rights

English translations of non-English language foreign applications are not always required. However, 37 CFR 1.55(g)(3) specifies three situations where an English translation may be necessary:

“An English language translation of a non-English language foreign application is not required except: (i) When the application is involved in an interference or derivation proceeding; (ii) When necessary to overcome the date of a reference relied upon by the examiner; or (iii) When specifically required by the examiner.”

If a translation is required, it must be filed with a statement certifying that the translation is accurate. This ensures that the USPTO can properly evaluate the priority claim when necessary for examination or proceedings.

To learn more:

• English translation
• foreign priority documents
• patent application
• language requirements

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

When claiming benefit to multiple prior applications, applicants must carefully establish a chain of copendency. The MPEP 211.01(b) provides guidance:

“The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications.”

Key points to remember:

• References must be made in each intermediate application in the chain.
• A specific reference is required for each prior-filed application and cannot be incorporated by reference from a prior application.
• There is no limit to the number of prior applications through which a chain of copendency may be traced.

It’s crucial to properly reference all prior applications to ensure the desired benefit claims are recognized. Failure to do so may result in the need for a petition under 37 CFR 1.78 and payment of a petition fee.

To learn more:

• benefit claims
• multiple prior applications
• chain of copendency
• reference to prior applications

No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:

“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”

This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.

To learn more:

• provisional application priority
• patent filing
• USPTO
• priority claim

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

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.

A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.

According to the MPEP:

A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.

The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.

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

Yes, a continuation application can claim priority to multiple parent applications under certain conditions. According to MPEP 201.07:

‘A continuation application may be filed as a continuation of an earlier application of the same applicant… The continuation application may be filed before the patenting or abandonment of or termination of proceedings on the prior application.’

This means that:

• The continuation must have at least one common inventor with the parent application(s).
• The continuation must be filed while at least one of the parent applications is still pending.
• The continuation cannot introduce new matter beyond what was disclosed in the parent application(s).

When claiming priority to multiple parents, the continuation essentially combines the disclosures of the parent applications, as long as they form a continuous chain of copending applications.

To learn more:

• continuation application
• multiple parent applications
• priority claim
• patent application chain

To learn more:

• patent priority

The ‘statement of unintentional delay’ is a crucial component of a petition to accept an unintentionally delayed priority claim. According to MPEP 214.02:

The Director may require additional information where there is a question whether the delay was unintentional.

This statement must affirm that the entire delay between the date the priority claim was due and the date the priority claim was filed was unintentional. It’s important to note that:

• The USPTO requires an additional explanation of the circumstances surrounding the delay that establishes the entire delay was unintentional.
• The statement must be signed by a person who has sufficient knowledge of the facts to support the statement.
• Providing an inadequate or insufficient explanation may lead to a request for further information, which could delay the petition process.

Applicants should be prepared to provide a detailed account of the circumstances that led to the delay, ensuring that it covers the entire period of delay and demonstrates that the delay was truly unintentional.

To learn more:

• statement of unintentional delay
• delayed priority claim
• petition
• MPEP 214.02

To learn more:

• MPEP 214.02

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

Can a continuation-in-part (CIP) application claim benefit to a provisional application?

Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:

“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”

However, it’s crucial to understand that:

• Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
• New matter added in the CIP will have the filing date of the CIP application itself.
• The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.

For more details on claiming benefit of provisional applications, see MPEP 211.

To learn more:

• continuation-in-part application
• provisional application
• benefit claim
• priority date

An inventor’s certificate is a form of intellectual property protection offered in some countries. It can form the basis for priority rights under certain conditions, as stated in 35 U.S.C. 119(d):

Applications for inventors’ certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor’s certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents…

This means that if an applicant had the option to file for either a patent or an inventor’s certificate in the foreign country, they can claim priority based on the inventor’s certificate application in the United States.

To learn more:

• inventor’s certificate
• patent priority
• foreign priority
• intellectual property

Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:

‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’

Key differences between provisional and non-provisional applications:

• Provisional applications have a simplified filing process and lower fees.
• They do not require formal patent claims or an oath or declaration.
• Provisional applications are not examined and automatically expire after 12 months.
• To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.

Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.

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

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

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

There are three main types of national applications for patents in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications that have entered the national stage in the United States

As stated in MPEP 201.01: “Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).”

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

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

Can a national application be converted to an international application?

Yes, a national application can be converted to an international application under certain conditions. The MPEP states: “A national application may be converted to an international application by filing a PCT international application within one year from the earliest U.S. filing date of the national application and including the United States of America as a designated state.” (MPEP 201.01) This conversion allows applicants to seek patent protection internationally while maintaining the priority date of their original national filing. It’s important to note that this conversion must be done within the one-year timeframe to preserve priority rights.

For more information on conversion, visit: conversion.

A continuation application can have significant implications for the patent term. Here are key points to understand:

• Patent Term Calculation: The term of a patent stemming from a continuation application is generally calculated from the filing date of the earliest application in the chain to which priority is claimed.
• 20-Year Term: Under current U.S. law, utility and plant patents have a term of 20 years from the earliest effective U.S. filing date of the application.
• No Extension of Monopoly: As stated in MPEP 201.07, ‘The filing of a continuation application does not extend the term of the patent to be granted on the continuing application because the term of a patent issuing on a continuation application is measured from the filing date of the earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c).’
• Patent Term Adjustment: While the base term is not extended, a continuation may be eligible for patent term adjustment due to delays in prosecution, which can effectively extend the term.

It’s important to note that while continuation applications don’t extend the base patent term, they can provide strategic advantages in terms of claim scope and prosecution timing.

To learn more:

• continuation application
• patent term
• patent expiration
• patent term adjustment

The USPTO’s handling of preliminary amendments in continuation applications depends on when the application was filed and the nature of the amendment:

• For applications filed on or after September 21, 2004: A preliminary amendment that is present on the filing date of the application is considered part of the original disclosure.
• All preliminary amendments: Must be filed in compliance with 37 CFR 1.121, which includes providing a complete claim listing whenever a claim is added, canceled, or amended.
• Substitute specification: The Office may require a substitute specification for preliminary amendments.

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.

It’s important to note that the USPTO advises against filing a continuation application with a preliminary amendment that makes all desired changes. Instead, they recommend:

Filing a continuing application under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.

This approach ensures that the published application contains the intended set of claims, rather than those from the prior application.

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

A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:

An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.

This means that:

• A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
• A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
• Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

Can I claim priority to a provisional application filed in a foreign country?

No, you cannot claim priority to a provisional application filed in a foreign country. The MPEP 213.02 states:

‘Note that a foreign filed provisional application is not eligible for priority benefit.’

Priority claims can only be made to non-provisional applications or other types of applications that are recognized under the Paris Convention. Provisional applications are unique to the U.S. patent system and are not recognized as priority documents in foreign countries or under international agreements.

To learn more:

• provisional application
• foreign priority
• Paris Convention

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.

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 assignment of a priority right can significantly impact patent applications. According to MPEP 216:

‘The right of priority is a personal right of the applicant or his successor in title. It may be transferred to the extent and subject to the conditions provided for in the statutes.’

Key points about the assignment of priority rights:

• Priority rights can be transferred separately from the application itself.
• The assignment must be executed before filing the later application claiming priority.
• An assignment of the entire right, title, and interest in an application includes the right of priority.
• Partial assignments of priority rights are possible but must be clearly documented.

Proper assignment of priority rights is crucial for maintaining the earlier effective filing date, which can be critical for patentability and avoiding prior art rejections.

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

Yes, it is possible to file a delayed benefit claim in an abandoned application, particularly for provisional applications. The MPEP 211.04 states:

“Effective December 18, 2013, 35 U.S.C. 119(e)(1) no longer requires that the amendment containing the specific reference to the earlier filed provisional application be submitted during the pendency of the application. Therefore, a petition to revive is no longer required to add or correct a benefit claim under 35 U.S.C. 119(e) in an abandoned nonprovisional application filed on or after November 29, 2000.”

This means you can file a petition under 37 CFR 1.78 to accept an unintentionally delayed claim for the benefit of a prior-filed provisional application in the abandoned nonprovisional application. This may be necessary to correct benefit claims in later-filed applications that claim benefit from the abandoned application.

To learn more:

• abandoned application
• delayed benefit claim
• provisional application
• petition

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 happens if a certified copy is not received within the time period set in 37 CFR 1.55(f)?

If a certified copy is not received within the time period set in 37 CFR 1.55(f), the USPTO will send a Notice of Allowance and Issue Fee Due (Notice of Allowance) with a requirement for the certified copy. As stated in the MPEP:

‘If a certified copy of the foreign application is not filed within the time period specified in 37 CFR 1.55(f) and the exceptions in 37 CFR 1.55(h), (i), and (j) are not applicable, the certified copy of the foreign application must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).’

This means that if you miss the deadline, you’ll need to file a petition explaining the delay and pay an additional fee. It’s crucial to submit the certified copy or ensure it’s retrievable through the priority document exchange program to avoid complications in the patent application process.

To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP 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.”

It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “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.”

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.

To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):

Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under §1.1023.

For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.

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

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

For more information on prior-filed application, visit: prior-filed application.

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.

To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:

• The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The CIP must contain or be amended to contain a specific reference to the earlier filed application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
• The CIP must have at least one common inventor with the prior-filed application.

Additionally, the MPEP notes:

“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”

It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.

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

For more information on prior-filed application, visit: prior-filed application.

When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:

1. A clear statement requesting the deletion of the inventor(s)
2. The name(s) of the inventor(s) to be deleted
3. The filing date of the CPA

The MPEP provides a template for acknowledging such requests:

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].

In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

For more information on USPTO, visit: USPTO.

Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.

The MPEP ¶ 2.10.01 states:

“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”

If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.

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

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

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

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

A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:

• Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
• New matter introduced in the CIP will have the filing date of the CIP application.
• Each claim in the CIP is evaluated independently for priority date determination.

MPEP 211.05 states:

A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.

This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.

To learn more:

• continuation-in-part
• CIP
• prior application
• filing date benefit
• new matter

To file a Continued Prosecution Application (CPA) in a design application, the following requirements must be met:

• The application must be a design application.
• The prior application must be a nonprovisional application.
• The application must be filed before the earliest of:
  • Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
  • Abandonment of the prior application; or
  • Termination of proceedings on the prior application.

As stated in the MPEP 201.06(d): “A continuation or divisional application that is a nonprovisional application may be filed as a CPA under 37 CFR 1.53(d) if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).”

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

For more information on CPA, visit: CPA.

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

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

Affidavits or declarations from a prior application do not automatically become part of a continuation or divisional application filed under 37 CFR 1.53(b). If an applicant wants to rely on these documents, they must take specific actions:

1. Make remarks of record in the new application referring to the affidavit or declaration.
2. Include a copy of the original affidavit or declaration filed in the prior application.

The MPEP states: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declaration filed in the prior nonprovisional application.

It’s important to note that this rule doesn’t apply to continued prosecution applications (CPAs) filed under 37 CFR 1.53(d), where affidavits and declarations do automatically become part of the new application.

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

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

A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.

According to MPEP ¶ 2.32:

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 paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.

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 inventorship, visit: inventorship.

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

When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 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 means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

The process for deleting a benefit claim depends on when your application was filed:

• For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
• For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.

However, be aware of the following considerations:

• The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
• If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
• If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
• Deleting a benefit claim may affect the publication date of the application.

The MPEP also notes an important caveat:

A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.

This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.

To learn more:

• delete benefit claim
• ADS
• patent application
• amendment
• specification

When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:

• Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
• Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
• The new matter may affect the application’s ability to overcome prior art references.

As stated in MPEP 211.05:

“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”

This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.

To learn more:

• continuation-in-part application
• new matter
• prior art
• effective filing date
• parent application

Can I file a U.S. nonprovisional application claiming priority to a provisional application after 12 months?

While it’s generally recommended to file within 12 months, there is a limited exception that allows for filing a nonprovisional application claiming priority to a provisional application after the 12-month period. The MPEP explains:

“A nonprovisional application filed not later than twelve months after the date on which the provisional application was filed … will have its filing date restored to the filing date of the provisional application for the purpose of establishing copendency with the provisional application under 35 U.S.C. 119(e).” (MPEP 213.03)

However, this exception comes with strict conditions:

• The delay in filing must have been unintentional.
• The nonprovisional application must be filed within 14 months from the provisional filing date.
• A petition to restore the right of priority must be filed promptly.

It’s important to note that this exception is not automatic and requires a petition process. If granted, it allows the nonprovisional application to claim the benefit of the provisional application’s filing date.

To learn more:

• provisional application
• nonprovisional application
• priority claim
• filing deadline

The ‘In re Van Esdonk’ case (187 USPQ 671, Comm’r Pat. 1975) is an important precedent in patent law regarding the perfection of foreign priority claims. Key points about this case include:

• It involved a situation where a claim to foreign priority benefits had not been filed in the application prior to patent issuance.
• The application was a continuation of an earlier application that had satisfied the requirements of 35 U.S.C. 119(a)-(d) or (f).
• The Commissioner held that perfecting a priority claim in the parent application satisfies the statute for the continuation application.

The MPEP states: In re Van Esdonk, a claim to foreign priority benefits had not been filed in the application prior to issuance of the patent. However, the application was a continuation of an earlier application in which the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied. Accordingly, the Commissioner held that the ‘applicants’ perfection of a priority claim under 35 U.S.C. 119 in the parent application will satisfy the statute with respect to their continuation application.’

This case is significant because it allows for the perfection of foreign priority claims in continuation applications based on the parent application’s compliance, even after patent issuance.

The effective filing date for claims in a continuation-in-part (CIP) application can vary depending on the content of the claims. According to MPEP 201.08:

The effective filing date of a claimed invention in a continuation-in-part application is determined on a claim-by-claim basis and is dependent upon the sufficiency of the disclosure in the earlier application(s) to support the claimed invention with 35 U.S.C. 112(a) except for the best mode requirement.

This means:

• Claims that are fully supported by the earlier application(s) get the benefit of the earlier filing date(s).
• Claims that rely on newly added matter in the CIP have the filing date of the CIP as their effective filing date.

It’s crucial for patent applicants to carefully consider the implications of adding new matter in a CIP, as it can affect the priority date and potentially impact patentability.

To learn more:

• continuation-in-part
• CIP
• effective filing date
• claim priority
• 35 U.S.C. 112(a)

To learn more:

• 35 U.S.C. 112(a)

An abandoned patent application is one that has been removed from the USPTO’s docket of pending applications. According to MPEP 203.05, an application can become abandoned for several reasons:

An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:

• Formal abandonment by the applicant or their attorney/agent
• Failure to take appropriate action during prosecution
• Failure to pay the issue fee
• For provisional applications, not filing a nonprovisional application within 12 months

Abandonment can have serious consequences, but in some cases, it may be possible to revive an abandoned application.

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

The filing date of a continuation application can significantly affect its patent term. While the continuation application gets the benefit of the earlier filing date for prior art purposes, its actual filing date is used to calculate the patent term. According to MPEP 201.07:

The filing date of a continuation application is the filing date of the parent application.

However, this refers to the priority date for prior art purposes. The actual patent term is calculated from the filing date of the continuation application itself. Here’s how it works:

• The patent term is generally 20 years from the filing date of the earliest non-provisional application to which priority is claimed.
• For a continuation application, this means 20 years from the filing date of the parent non-provisional application.
• Each continuation in a chain reduces the effective patent term.

It’s crucial to consider this when deciding whether to file a continuation or a new application, as it can impact the overall protection period for your invention.

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

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

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

For applications filed before March 16, 2013, the certified copy of the foreign application must be filed within the pendency of the application. According to 37 CFR 1.55(g)(1):

The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application.

However, it’s important to note that if the claim for priority or the certified copy is filed after the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction.

To learn more:

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

The USPTO determines if a claim in a later-filed application is entitled to the benefit of an earlier filing date by evaluating whether:

• The subject matter of the claim is disclosed in the earlier-filed application.
• The disclosure in the earlier-filed application complies with the requirements of 35 U.S.C. 112(a), except for the best mode requirement.
• The disclosure enables one skilled in the art to make and use the claimed invention without undue experimentation.

As stated in MPEP 211.05:

“A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed application if the disclosure of the prior-filed application does not enable one skilled in the art to ‘use’ the claimed invention.”

If the earlier application fails to provide adequate support or enablement for a claim in the later-filed application, that claim will not be entitled to the earlier filing date. This assessment is made on a claim-by-claim basis, and different claims within the same application may have different effective filing dates.

To learn more:

• benefit claim evaluation
• priority date determination
• enablement assessment
• written description requirement

The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:

• Claims that are fully supported by the parent application retain the parent’s filing date.
• Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.

The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application. This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.

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

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

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

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

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

For more information on CPA, visit: CPA.

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

For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), which include continuations, divisionals, and continuation-in-part applications, the benefit claim must include specific information about the relationship between the applications. The MPEP states:

“For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.”

This means that when making a benefit claim, you must explicitly state whether the current application is a:

• Continuation
• Divisional
• Continuation-in-part

of the prior application. This information helps the USPTO and others understand the relationship between related applications and ensures proper examination and treatment of the claims.

Remember, this requirement is in addition to other necessary information for the benefit claim, such as the application number and filing date of the prior application.

For more information on divisional, visit: divisional.

Continuation applications and provisional applications are distinct types of patent applications with different purposes and requirements. A key difference is that a continuation application is based on a prior nonprovisional application, while a provisional application is a standalone filing that can later be used as a priority document.

The MPEP specifically notes:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the provisional application.”

This guidance also applies to continuation applications. Provisional applications serve as temporary placeholders and do not undergo examination, while continuation applications are fully examined and build upon previously filed nonprovisional applications.

To learn more:

• continuation application
• provisional application
• patent types
• application differences

What happens if a continuation application is filed after the parent application has been abandoned?

If a continuation application is filed after the parent application has been abandoned, it may still be entitled to the benefit of the filing date of the prior application. The MPEP states:

“Where the prior application has been abandoned, the petition to revive under 37 CFR 1.137 (a) or (b) must be filed in the prior application, or in a subsequent nonprovisional application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior application, if the prior nonprovisional application is not pending and claims the benefit under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) of a provisional application.”

This means that even if the parent application is abandoned, you can still file a continuation application and potentially revive the parent application. However, specific procedures must be followed, including filing a petition to revive in the appropriate application.

For more information on reviving abandoned applications, refer to MPEP 711.

To learn more:

• continuation application
• abandoned application
• petition to revive
• 37 CFR 1.137

To learn more:

• 37 CFR 1.137

For an international design application to be used as a basis for benefit claims, it must meet certain conditions. The MPEP specifies:

To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023.

This means that the international design application must have a valid filing date as determined by the regulations set forth in 37 CFR 1.1023. These regulations outline the requirements for establishing a filing date for international design applications, which typically include submitting the necessary documents and fees to the International Bureau or an appropriate office.

Additionally, the application claiming benefit must comply with the requirements of 35 U.S.C. 120, which include proper copendency and specific reference to the earlier application.

To learn more:

• international design application
• benefit claim
• filing date
• 37 CFR 1.1023
• 35 U.S.C. 120

To learn more:

• 37 CFR 1.1023
• 35 U.S.C. 120

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 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

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

How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims?

When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a):

The corrected ADS must identify the information that is being changed with underlining for insertions and strike-through or brackets for text removed as required by 37 CFR 1.76(c)(2).

To properly mark changes in a corrected ADS:

• Insertions: Underline new text
• Deletions: Use strike-through or brackets for removed text
• Existing information: Include all information from the original ADS, even if unchanged

It’s important to note that the entire benefit claim must be underlined if you’re adding a new benefit claim. This helps the USPTO easily identify and process the changes to your application.

To learn more:

• ADS
• benefit claim
• correction
• marking changes
• patent application