Patent Law FAQ

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

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

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

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

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

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

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

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

For more information on CPA, visit: CPA.

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

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contains detailed information about the procedures that were in place before the rule change, which may be useful for historical reference or for understanding the processing of applications filed before December 1, 1997.

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

The MPEP ¶ 2.33 indicates:

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

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

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

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

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

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

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

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

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

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

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

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

For more information on CPA, visit: CPA.

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

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

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

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

Common reasons for filing a continuation include:

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

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

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

For more information on USPTO, visit: USPTO.

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

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

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

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

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

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

This means examiners should use this paragraph when:

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

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

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

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

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

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

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

For more information on CPA, visit: CPA.

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

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

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

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

This means you can file a continuation application:

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

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

A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

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

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

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.

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

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

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

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

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

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

For more information on CPA, visit: CPA.

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

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

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

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

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

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

According to MPEP 201.01:

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

To break this down:

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

For more information on reissue, visit: reissue.

For more information on USPTO, visit: USPTO.

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

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

The three main types of continuing applications are:

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

Each type serves different purposes in patent prosecution strategy.

For more information on divisional, visit: divisional.

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

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

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

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

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

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

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

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

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

This means that CPAs are limited to:

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

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

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

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

For more information on CPA, visit: CPA.

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

According to MPEP 201.01, national applications include:

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

The MPEP specifically states:

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

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

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

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

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

These affidavits serve different purposes:

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

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

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

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

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

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

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

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

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

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

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

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

Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.

This means applicants should:

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

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

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

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

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

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

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

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

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

Examiners should look for:

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

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

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

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

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

This notice is crucial because:

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

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

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

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

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

In such cases, the examiner should:

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

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

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

What is the time limit for filing a divisional application?

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

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

The MPEP 201.06 states:

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

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

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

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

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

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

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

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

For more information on CPA, visit: CPA.

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

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

According to MPEP ¶ 2.34:

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

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

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

For more information on CPA, visit: CPA.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.

The significance of ‘copending’ is as follows:

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

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

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

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

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

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

The significance of ‘carved out’ includes:

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

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

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

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

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

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

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

The significance of the filing date [2] includes:

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

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

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

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

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

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

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

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

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

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

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

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

The filing date [2] is important because:

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

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

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

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

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

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

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

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

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

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

The MPEP states:

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

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

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

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

What is the significance of copendency in continuation applications?

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

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

The significance of copendency includes:

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

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

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

For more information on copendency, visit: copendency.

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

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

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

The MPEP ¶ 2.01 states:

“Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.”

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

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

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

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

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

The significance of adding new disclosure includes:

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

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

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

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

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

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

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

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

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

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

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

For more information on USPTO, visit: USPTO.

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

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

Key points about 37 CFR 1.53(d) applications:

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

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

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

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

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

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

To elaborate:

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

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

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

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

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

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.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

This means that a CIP application:

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

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

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

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

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

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

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

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

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

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

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

The paragraph states:

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

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

For more information on CPA, visit: CPA.

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

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

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

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

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

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

For more information on CPA, visit: CPA.

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

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

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

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

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

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

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

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

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

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

Key reasons for filing a continuation include:

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

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

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

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

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

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

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

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

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

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

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

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

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

The main purposes of a divisional application are:

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

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

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

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

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

For more information on CPA, visit: CPA.

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

The legal basis for denying amendments to Continued Prosecution Application (CPA) specifications that attempt to reference prior applications stems from both federal regulations and patent law. Specifically:

• 37 CFR 1.53(d)(7): This regulation establishes that a CPA request itself serves as the specific reference required by 35 U.S.C. 120.
• 35 U.S.C. 120: This statute outlines the requirements for claiming the benefit of an earlier filing date in the United States.

According to MPEP ¶ 2.34:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.

This means that the CPA filing itself legally establishes the necessary connection to the prior application, making any specification amendment both redundant and impermissible.

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

For more information on CPA, visit: CPA.

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

The Hague Agreement Concerning International Registration of Industrial Designs is an international treaty that allows applicants to file a single international design application to seek protection in multiple countries. The United States became a party to the Hague Agreement on May 13, 2015.

According to 35 U.S.C. 385:

An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.

This means that an international design application that designates the US is treated similarly to a national design patent application. The MPEP clarifies: Unless otherwise clear from the wording, reference to ‘design application’ or ‘application for a design patent’ in this chapter includes an international design application that designates the United States.

For detailed information on international design applications, refer to MPEP Chapter 2900.

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

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

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

What is the filing deadline for a continuation application?

A continuation application must be filed before the patenting, abandonment, or termination of proceedings on the prior application. The MPEP 201.07 states:

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

Key points to remember:

• There is no specific time limit for filing a continuation as long as the parent application is still pending.
• The continuation must be filed before the parent application is patented, abandoned, or otherwise terminated.
• If you want to file after the parent is patented, you must file a reissue application instead.

It’s crucial to monitor the status of the parent application closely to ensure timely filing of the continuation.

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

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

What is the filing date requirement for a divisional application?

A divisional application must be filed before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.”

This means that the divisional application must be filed while the parent application is still pending, ensuring continuity in the examination process.

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

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

The filing date of a nonprovisional application under 37 CFR 1.53(b) depends on the type of application and when it was filed:

• For utility and plant applications filed on or after December 18, 2013: The filing date is the date on which the specification, with or without claims, is received in the USPTO.
• For design applications: The filing date is the date on which the specification, including at least one claim, and any required drawings are received in the USPTO.
• For applications filed before December 18, 2013: The filing date was the date on which the specification containing a description and at least one claim, and any required drawings were received in the USPTO.

The MPEP states:

For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office.

This change in filing date requirements was part of the implementation of the Patent Law Treaties Implementation Act of 2012.

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

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

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

The filing date of a continuation-in-part (CIP) application is the date on which the application is filed with the USPTO. According to MPEP 201.08, “A continuation-in-part application is entitled to the benefit of the filing date of an earlier nonprovisional application as to common subject matter.” However, it’s important to note that any new matter introduced in the CIP application is only entitled to the filing date of the CIP itself.

For the common subject matter, the CIP can claim the benefit of the earlier application’s filing date under 35 U.S.C. 120. This can be crucial for establishing priority and determining the relevant prior art for patentability assessments.

Incorporating by reference a prior application in a continuation or divisional application can provide important benefits:

1. It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date.
2. For applications filed on or after September 21, 2004, it can help recover inadvertently omitted material.

The MPEP states: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.

It’s important to note that an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

For more information on 37 cfr 1.57, visit: 37 cfr 1.57.

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

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

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

What is the effect of filing a CPA on pending appeals or interferences?

Filing a Continued Prosecution Application (CPA) has significant effects on pending appeals or interferences. According to MPEP 201.06(d):

The filing of a CPA is a specific request to expressly abandon the prior application as of the filing date granted the CPA and to continue prosecution of the prior application in the CPA.

This means that when a CPA is filed:

• Any pending appeal in the prior application is automatically withdrawn.
• Any pending interference proceeding in the prior application is terminated.

It’s important to note that these actions occur automatically upon the granting of a filing date to the CPA. Applicants should carefully consider the status of any pending appeals or interferences before filing a CPA, as these proceedings cannot be continued in the CPA.

For more information on CPA, visit: CPA.

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

Filing a Continued Prosecution Application (CPA) has a significant effect on the prior application. According to MPEP 201.06(d):

‘A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA.’

This means that:

• The prior application is automatically and expressly abandoned when the CPA is filed.
• The abandonment is effective as of the CPA filing date.
• Any claims or amendments in the prior application that were not entered are not carried over to the CPA.

It’s important to note that while the prior application is abandoned, the CPA is a continuation of that application, maintaining continuity for purposes such as priority claims and patent term calculations.

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

For more information on CPA, visit: CPA.

A preliminary amendment filed with a continuation or divisional application can have significant effects:

1. If present on the filing date, it is considered part of the original disclosure.
2. It must comply with the requirements of 37 CFR 1.121 for amendments.
3. The Office may require a substitute specification for extensive preliminary amendments.
4. The application will be classified and assigned based on the claims that will be before the examiner after entry of the preliminary amendment.

The MPEP states: Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

However, applicants should be cautious about introducing new matter through a preliminary amendment. The MPEP advises: Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part.

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

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

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

What is the effect of a continuation-in-part application on patent term?

A continuation-in-part (CIP) application can have a significant impact on patent term. According to the MPEP 201.08:

The term of a patent issuing from a continuation-in-part application may be barred or limited by any prior applications or patents from which benefit is claimed.

This means that:

• The patent term for subject matter carried over from the parent application is calculated from the filing date of the parent application.
• The patent term for new subject matter introduced in the CIP is calculated from the filing date of the CIP application.
• This can result in different expiration dates for different claims within the same patent.

It’s crucial for inventors and patent practitioners to carefully consider the timing and content of CIP applications to maximize patent protection and term.

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

There is a significant difference in how affidavits are handled between applications filed under 37 CFR 1.53(b) and 37 CFR 1.53(d). According to MPEP ¶ 2.03:

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

In summary:

• For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly included and referenced.
• For 37 CFR 1.53(d) applications: Affidavits from the parent nonprovisional application automatically become part of the new application.

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

The main difference between utility and design patents is in what they protect:

• Utility patents protect the way an article is used and works. They cover new and useful processes, machines, manufactures, or compositions of matter.
• Design patents protect the way an article looks. They cover new, original, and ornamental designs for an article of manufacture.

The MPEP distinguishes between these types of patents by referencing different sections of U.S. Code: utility patents are provided for by 35 U.S.C. 101, while design patents are provided for by 35 U.S.C. 171.

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

The process for deleting an inventor from a Continued Prosecution Application (CPA) differs depending on when the request is made:

• At CPA Filing: You can submit a statement requesting the deletion of an inventor when filing the CPA. This is a straightforward process that doesn’t require additional paperwork.
• After CPA Filing: If you need to delete an inventor after the CPA has been filed, you must follow a more formal procedure. The MPEP states:
  

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

This means that post-filing inventor deletions require a formal request under 37 CFR 1.48, which typically involves additional documentation and potentially fees.

For more information on CPA, visit: CPA.

The process for correcting inventorship in a Continued Prosecution Application (CPA) differs depending on when the correction is requested:

• At CPA filing: Inventorship can be corrected by submitting a statement requesting deletion of a named inventor along with the CPA filing. This process is straightforward and does not require additional procedures.
• After CPA filing: The MPEP states, Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48. This means additional documentation and possibly fees are required for post-filing inventorship changes.

It’s generally simpler to correct inventorship at the time of CPA filing if possible.

For more information on CPA, visit: CPA.

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

The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d). According to MPEP ¶ 2.03:

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

In summary:

• For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly incorporated.
• For 37 CFR 1.53(d) applications: Affidavits from the parent application are automatically included.

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

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

According to MPEP 201.02, there are important distinctions between ‘original’ and ‘substitute’ applications:

Original Application: This term is used in patent statutes and rules to refer to an application that is not a reissue application. An original application can be either a first filing or a continuing application.

Substitute Application: The MPEP defines a substitute application as follows:

A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. […] A substitute application does not obtain the benefit of the filing date of the prior application.

The key difference is that a substitute application does not retain the filing date of the prior application, unlike certain types of continuing applications.

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

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

What is the difference between a utility patent and a design patent application?

Utility patents and design patents protect different aspects of an invention, and their applications are processed differently. According to MPEP 201.02:

‘A utility application is a nonprovisional application that is not a design application. A design application is an application for a design patent.’

Key differences include:

• Utility Patent Application:
  • Protects the functional aspects of an invention
  • Covers how an invention works or is used
  • Has a term of 20 years from the filing date
• Design Patent Application:
  • Protects the ornamental design of a functional item
  • Covers how an invention looks
  • Has a term of 15 years from the grant date

Inventors should carefully consider which type of patent application best suits their invention’s nature and intended protection.

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

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

For more information on USPTO, visit: USPTO.

What is the difference between a parent application and a child application in patent law?

In patent law, the terms ‘parent application’ and ‘child application’ refer to the relationship between related patent applications. According to MPEP 201.02:

“The term parent application is used to refer to the immediate prior application from which a continuing application claims priority.”

“A child application is an application that claims the benefit of an earlier filing date from a parent application.”

Key differences:

• Parent application: The original or earlier-filed application
• Child application: A subsequent application that claims priority from the parent
• Child applications can be continuations, divisionals, or continuations-in-part
• The parent-child relationship establishes a priority claim under 35 U.S.C. 120

Understanding this relationship is crucial for determining priority dates and the scope of patent protection in related applications.

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

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

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

The terms ‘national application,’ ‘provisional application,’ and ‘nonprovisional application’ are defined in 37 CFR 1.9(a). Specifically:

• A national application refers to a U.S. patent application that is not an international application.
• A provisional application is a type of patent application that allows filing without a formal patent claim or any information disclosure statement.
• A nonprovisional application is a regular patent application that includes a specification, claims, and other formal requirements.

These definitions help distinguish between different types of patent applications in the U.S. patent system.

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

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

For more information on USPTO, visit: USPTO.

A national application is filed directly with the United States Patent and Trademark Office (USPTO) under U.S. patent laws, while an international application is filed under the Patent Cooperation Treaty (PCT).

According to MPEP 201.01: ‘National applications include original (nonprovisional), reissue, design, plant, and provisional applications.’ These applications are processed solely within the U.S. patent system.

International applications, on the other hand, are filed under the PCT and can potentially lead to patent protection in multiple countries. They enter the national phase in individual countries at a later stage.

For more information on USPTO, visit: USPTO.

MPEP 201.01 distinguishes between national applications and international applications:

• National applications are filed directly with the USPTO under 35 U.S.C. 111(a) or enter the national stage from an international application after complying with 35 U.S.C. 371.
• International applications are filed under the Patent Cooperation Treaty (PCT).

The MPEP states: The term ‘national application’ as used in this title refers to a U.S. national application for patent which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371. (MPEP 201.01)

International applications become national applications when they enter the national stage in a specific country, such as the United States. This process involves meeting the requirements of 35 U.S.C. 371.

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

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

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

While both divisional and continuation applications are types of continuing applications, they serve different purposes:

• Divisional Application: Filed to pursue claims to an invention that was not elected in a previous application due to a restriction requirement.
• Continuation Application: Filed to pursue additional claims to the same invention disclosed in the parent application.

The MPEP 201.06(c) states: “A divisional application is often filed as a result of a restriction requirement made by the examiner.” In contrast, a continuation typically doesn’t arise from a restriction requirement but rather from the applicant’s desire to pursue additional aspects of the same invention.

Both types can be filed under 37 CFR 1.53(b) and may claim the benefit of the parent application’s filing date.

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

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

There is a significant difference in how Continued Prosecution Applications (CPAs) are treated for utility/plant applications versus design applications. According to the examiner’s note in MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This indicates that for utility or plant applications, an improper CPA request is treated as a Request for Continued Examination (RCE). However, for design applications, CPA requests are generally accepted and processed as described in MPEP ¶ 2.35. This distinction is important for applicants to understand when considering their continued prosecution options.

For more information on CPA, visit: CPA.

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

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

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

For more information on RCE, visit: RCE.

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

Continued Prosecution Applications (CPAs) are primarily used for design patent applications. For utility or plant applications, improper CPA requests are typically treated as Requests for Continued Examination (RCE). The MPEP ¶ 2.35 notes:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This distinction is important for applicants to understand when considering their options for continuing prosecution of their patent applications.

For more information on CPA, visit: CPA.

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

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

For more information on RCE, visit: RCE.

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

Continued Prosecution Applications (CPAs) and Requests for Continued Examination (RCEs) are both methods to continue prosecution of a patent application, but they have different uses and applications:

• CPAs are primarily used for design patent applications, as indicated in MPEP ¶ 2.30.
• RCEs are used for utility and plant patent applications. The MPEP states: “If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead).”

This distinction is important because it affects how patent examiners process and respond to these continuation requests.

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

Continuation applications and provisional applications are distinct types of patent applications with different purposes and requirements. A key difference is noted in MPEP 201.07:

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. The main differences include:

• Continuation applications are based on nonprovisional applications and claim benefit under 35 U.S.C. 120, 121, 365(c), or 386(c)
• Provisional applications are placeholder applications that can be claimed as priority under 35 U.S.C. 119(e)
• Continuation applications must have the same disclosure as the parent application
• Provisional applications do not need to meet the same formal requirements as nonprovisional applications

For specific requirements related to provisional applications, refer to MPEP § 211 et seq.

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

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

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

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that claim priority to an earlier filed application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07: “A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.”
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the prior application.

The key difference is that a continuation application does not introduce new subject matter, while a CIP application does.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

The main difference between applications filed under 35 U.S.C. 111(a) and 111(b) lies in their purpose and requirements. According to MPEP 201.01:

• 35 U.S.C. 111(a) applications: These are for original (nonprovisional) patents. They require a specification, at least one claim, and drawings (when necessary).
• 35 U.S.C. 111(b) applications: These are for provisional patents. They do not require claims and are not examined on their merits.

The key differences are:

1. Examination: 111(a) applications undergo full examination, while 111(b) applications do not.
2. Duration: 111(a) applications can lead to granted patents, while 111(b) applications expire after 12 months.
3. Requirements: 111(a) applications have stricter formal requirements, including the need for claims.

Inventors often use 111(b) provisional applications to establish an early filing date before filing a more comprehensive 111(a) nonprovisional application.

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

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

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

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

The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d):

• 37 CFR 1.53(b) applications: Affidavits and declarations from prior applications do not automatically become part of the new application.
• 37 CFR 1.53(d) applications: Affidavits and declarations filed during the prosecution of the parent nonprovisional application automatically become part of the new application.

As noted in MPEP ¶ 2.03: Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.

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

A divisional application is defined in MPEP 201.06 as follows:

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

This definition highlights that a divisional application:

• Is filed after an initial application
• Focuses on a distinct invention
• Only includes subject matter from the original application
• Is ‘carved out’ of the pending parent application

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

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

What is the definition of a continuation-in-part application?

A continuation-in-part (CIP) application is a type of patent application that includes a portion or all of the disclosure from a prior application and adds new matter not disclosed in the prior application. The MPEP 201.08 states:

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

This type of application allows inventors to expand upon their original invention while maintaining the priority date for the portions disclosed in the earlier application.

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

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

What is the copendency requirement for continuation applications?

The copendency requirement is a crucial aspect of filing a continuation application. According to MPEP 201.07:

‘The continuation application must be filed before the patenting or abandonment of or termination of proceedings on the prior application.’

This means that:

• The continuation application must be filed while the parent application is still pending (not patented, abandoned, or otherwise terminated).
• If the parent application has already been issued as a patent or has been abandoned, it’s too late to file a continuation application.
• The continuation application can be filed on the same day that the parent application is to be issued as a patent, but it must be filed before the parent application officially becomes a patent.

Maintaining copendency is critical for preserving the benefit of the earlier filing date and ensuring the validity of the continuation application.

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

For more information on copendency, visit: copendency.

Filing a divisional application allows an applicant to pursue protection for distinct inventions disclosed in a parent application. Key benefits include:

• Ability to claim different aspects or embodiments of the invention
• Potential for broader patent coverage
• Preservation of priority date for the disclosed subject matter
• Opportunity to pursue claims that may have been restricted in the parent application

The MPEP indicates: A divisional application is often filed as a result of a restriction requirement made by the examiner. This suggests that divisional applications provide a way to pursue protection for inventions that were not elected in the parent application due to a restriction requirement.

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

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

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

Filing a divisional application under 37 CFR 1.53(b) offers several benefits:

• It allows you to pursue claims to an invention that was not elected in a previous application due to a restriction requirement.
• You can file the divisional application without a new oath or declaration if you meet certain conditions.
• The divisional application can claim the benefit of the filing date of the prior application.

As stated in the MPEP: “A divisional application is often filed as a result of a restriction requirement made by the examiner.” This means you can protect additional aspects of your invention that weren’t covered in the original application.

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

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

Form Paragraph 2.34 is a standardized response used by patent examiners when addressing improper amendments to Continued Prosecution Applications (CPAs). According to MPEP § 201.06(d), this form paragraph is specifically used to:

“inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.”

The form paragraph explains that such amendments are unnecessary because the CPA request itself serves as the specific reference required by 35 U.S.C. 120. It helps maintain consistency in examiner responses and ensures that applicants are properly informed about the treatment of these amendments in CPA applications.

For more information on CPA, visit: CPA.

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

An international design application is a specific type of patent application for industrial designs. The definition of an international design application is provided in 37 CFR 1.9(n).

Key points about international design applications:

• They are filed under the Hague Agreement Concerning the International Registration of Industrial Designs
• They allow applicants to seek protection for industrial designs in multiple countries through a single application
• They are administered by the World Intellectual Property Organization (WIPO)
• They can designate the United States for design patent protection

For more information on international design applications, visit the WIPO Hague System page.

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

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

An international application in patent law refers to a patent application filed under the Patent Cooperation Treaty (PCT). The definition of an international application is provided in 37 CFR 1.9(b).

Key points about international applications:

• They are filed under the PCT framework
• They can potentially lead to patent protection in multiple countries
• They undergo an international search and optional international preliminary examination
• They must enter the national phase in desired countries to pursue patent protection

For more detailed information on international applications, refer to the World Intellectual Property Organization (WIPO) PCT resources.

For more information on Patent Cooperation Treaty, visit: Patent Cooperation Treaty.

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

The MPEP 201 defines an international application as follows:

“An international application is a patent application filed under the Patent Cooperation Treaty (PCT). An international application may be filed by a resident or national of the United States of America in the U.S. Patent and Trademark Office (USPTO) as a Receiving Office.”

Key points about international applications include:

• They are governed by the Patent Cooperation Treaty (PCT).
• They allow inventors to seek patent protection in multiple countries through a single application.
• The USPTO can act as a Receiving Office for U.S. residents or nationals.
• They enter a national phase in individual countries where protection is sought.

International applications provide a streamlined process for seeking patent protection in multiple countries, potentially saving time and resources for inventors and businesses operating globally.

For more information on Patent Cooperation Treaty, visit: Patent Cooperation Treaty.

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.

What is a reissue patent application?

A reissue patent application is a request to correct an error in an already issued patent that renders the patent wholly or partly inoperative or invalid. As stated in MPEP 201:

An application for reissue is an application for a new patent to replace an unexpired patent that is defective in some one or more particulars.

Key aspects of reissue applications include:

• Can be filed only by the original patent owner
• Must be filed during the term of the original patent
• Can broaden claim scope only within two years of the original patent grant
• Requires a declaration stating the error and that it occurred without deceptive intent

Reissue applications are crucial for patent owners to correct mistakes or oversights in their original patents, ensuring their intellectual property rights are properly protected. However, they cannot be used to add new matter to the patent disclosure.

For more information on Patent correction, visit: Patent correction.

A reissue application is a type of patent application used to correct errors in an already issued patent. According to MPEP 201:

“An application for reissue of a patent is an application for a new patent to correct an error in an existing patent.”

Reissue applications are filed when the original patent is wholly or partly inoperative or invalid due to defective specifications, drawings, or by claiming more or less than the patentee had the right to claim. They must be filed by the original patent owner and are subject to specific requirements outlined in 35 U.S.C. 251.

For more information on Patent correction, visit: Patent correction.

For more information on Patent errors, visit: Patent errors.

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

What is a PCT application in international patent law?

A PCT (Patent Cooperation Treaty) application is an international patent application that provides a unified procedure for filing patent applications to protect inventions in its contracting states. According to MPEP 201.02:

“An international application is a patent application filed under the Patent Cooperation Treaty (PCT).”

Key features of PCT applications include:

• Single filing procedure for seeking patent protection in multiple countries
• Standardized national phase entry at 30 months from the earliest priority date
• International search report and written opinion on patentability
• Option for international preliminary examination

PCT applications simplify the process of seeking patent protection internationally, providing applicants with more time and information to make decisions about pursuing patents in specific countries.

For more information on Patent Cooperation Treaty, visit: Patent Cooperation Treaty.

According to MPEP 201, a nonprovisional application for patent is the standard type of patent application. The MPEP states:

“A nonprovisional application for patent filed under 35 U.S.C. 111(a) must include a specification, including a claim or claims, drawings when necessary, an oath or declaration, and the prescribed filing fee, search fee, examination fee and application size fee.”

This type of application is examined by the USPTO and can potentially lead to the grant of a patent. It requires a detailed description of the invention, claims defining the scope of protection sought, and often includes drawings to illustrate the invention.

For more information on declaration, visit: declaration.

For more information on drawings, visit: drawings.

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

For more information on oath, visit: oath.

A national application, as described in MPEP 201.01, is a U.S. patent application filed under 35 U.S.C. 111(a) or 35 U.S.C. 111(b). The MPEP states: A national application may be a nonprovisional application or a provisional application. National applications are distinct from international applications and are processed directly by the United States Patent and Trademark Office (USPTO).

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

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

For more information on USPTO, visit: USPTO.

A divisional application under 37 CFR 1.53(b) is a type of continuation application that is filed to pursue a distinct invention that was disclosed but not claimed in a prior nonprovisional application. According to the MPEP:

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

Divisional applications allow inventors to protect multiple inventions disclosed in a single parent application by filing separate applications for each invention.

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

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

A divisional application is a type of patent application that claims subject matter that is independent and distinct from that claimed in a prior application. It typically arises when an original application contains multiple inventions, and the Patent Office requires the applicant to restrict the claims to a single invention.

According to MPEP ¶ 2.01, a divisional application:

“appears to claim only subject matter directed to an invention that is independent and distinct from that claimed in the prior application, and names the inventor or at least one joint inventor named in the prior application.”

To claim the benefit of the filing date of the prior application, applicants must comply with 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.

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

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

For more information on USPTO, visit: USPTO.

Design patent applications and utility patent applications are two distinct types of patent applications that protect different aspects of inventions. According to MPEP 201:

• Design Patent Application: “An application for a design patent filed under 35 U.S.C. 171 may be referred to as a design application.” Design patents protect the ornamental appearance of an article of manufacture.
• Utility Patent Application: These applications protect the functional aspects of an invention, including processes, machines, articles of manufacture, and compositions of matter.

The key differences are:

1. Subject Matter: Design patents cover appearance, while utility patents cover functionality.
2. Duration: Design patents last for 15 years from issuance, while utility patents last for 20 years from the filing date.
3. Examination Process: Design patent applications typically have a simpler examination process.

For more details on utility patents, refer to 35 U.S.C. 101, and for design patents, see 35 U.S.C. 171.

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

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

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.

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a parent application. It is governed by 37 CFR 1.53(d). According to MPEP ¶ 2.30, when a CPA is accepted, the examiner will use the following language:

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

This indicates that the CPA has been properly filed and prosecution will continue based on the parent 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.

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents. It allows applicants to continue prosecution of a previously filed design application by filing a request for continued examination. CPAs are governed by 37 CFR 1.53(d) and are only available for design applications.

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

For more information on CPA, visit: CPA.

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

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) is a type of continuation or divisional application that can be filed for design patent applications under 37 CFR 1.53(d). It allows an applicant to continue prosecution of a prior design application. As stated in the MPEP:

A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;

CPAs can only be filed before the earliest of: payment of the issue fee, abandonment, or termination of proceedings on the prior 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 applications, visit: patent applications.

A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application.

As stated in the MPEP:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

Key points about CIP applications:

• A CIP application may only be filed under 37 CFR 1.53(b).
• The CIP application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• A CIP application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
• The mere filing of a CIP application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

A continuation-in-part (CIP) application is a type of patent application that builds upon a previously filed application by including new matter not disclosed in the original application. Key points about CIP applications include:

• They are filed while the parent application is still pending.
• They contain a portion or all of the disclosure of the parent application.
• They introduce new matter not present in the original application.
• The new matter is not entitled to the priority date of the parent application.

The MPEP 201.01 states: National applications include […] continuation-in-part applications (which may be filed under 37 CFR 1.53(b)). CIP applications allow inventors to expand on their original invention while maintaining the priority date for the previously disclosed material.

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

For more information on USPTO, visit: USPTO.

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.

A Conditional Request for a Continued Prosecution Application (CPA) is a filing made under 37 CFR 1.53(d) for design applications. However, it’s important to note that any “conditional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA. This means that even if an applicant intends the request to be conditional, the USPTO will process it as a standard CPA request.

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.

What is a ‘regular utility application’ in patent law?

A ‘regular utility application’ is a term used in patent law to describe a standard non-provisional patent application for a utility invention. According to MPEP 201.02, it is defined as follows:

“A ‘regular utility application’ is a non-provisional application for a utility patent filed under 35 U.S.C. 111(a).”

This type of application is the most common form of patent application filed with the USPTO. It requires a detailed description of the invention, claims defining the scope of protection sought, and often includes drawings to illustrate the invention. Regular utility applications undergo a thorough examination process to determine if they meet the requirements for patentability.

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

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

When citing a prior application using MPEP ¶ 2.05, specific information must be included. The MPEP instructs examiners:

“In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.”

This means that when referencing a prior application, the examiner should provide:

• The application number, including both the series code and serial number
• The filing date of the prior application

Including this information ensures clear identification of the specific prior application being referenced.

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

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

When using Form Paragraph 2.35 in a patent examination, specific information needs to be inserted into the brackets. According to the MPEP ¶ 2.35, examiners should include the following:

• In bracket 1: Insert the filing date of the request for a CPA.
• In bracket 2: Insert the Application Number identified in the CPA request.

This information helps to clearly identify the specific CPA request being addressed and provides essential context for the applicant. It’s crucial for examiners to accurately fill in these brackets to ensure proper documentation and communication regarding the CPA.

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.

When filing a Continued Prosecution Application (CPA) request, certain key information must be included. Based on MPEP ¶ 2.35, the following details are essential:

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

The MPEP states: “Receipt is acknowledged of the ‘conditional’ request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on prior Application No. [2].” Here, [1] represents the filing date of the CPA request, and [2] represents the application number of the prior application.

It’s important to ensure that this information is accurately provided to facilitate proper processing of the CPA request by the USPTO.

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

For more information on USPTO, visit: USPTO.

When referencing a prior application in a continuation-in-part (CIP), specific information must be included. According to MPEP ¶ 2.06, the examiner note states:

In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.

This means that when referencing the prior application, you must include:

• The application number (series code and serial number)
• The filing date of the prior application

Providing this information accurately is crucial for establishing the proper relationship between the CIP and the prior application.

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

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.

When acknowledging a Continued Prosecution Application (CPA) request, the USPTO includes specific details as outlined in MPEP ¶ 2.35. The acknowledgment typically includes:

• The filing date of the CPA request
• The application number of the prior application on which the CPA is based
• A statement that the CPA request is acceptable
• Confirmation that a CPA has been established

The MPEP provides a template for this acknowledgment: Receipt is acknowledged of the ‘conditional’ request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on prior Application No. [2].

This information helps applicants confirm that their CPA request has been received and processed correctly.

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

The first Office action of a Continued Prosecution Application (CPA) includes important information for the applicant. According to MPEP ¶ 2.35, the examiner should:

• Advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request
• Confirm that the CPA is acceptable and has been established
• Provide notice that an action on the CPA follows

This information is crucial because, as stated in the MPEP, “applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.” Therefore, this Office action serves as an important communication regarding the status of the application.

For more information on CPA, visit: CPA.

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

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

The notice of Continued Prosecution Application (CPA) establishment includes specific information as outlined in MPEP ¶ 2.30. The key elements are:

• The filing date of the CPA request
• The parent application number
• A statement that the CPA is acceptable and has been established
• An indication that an action on the CPA will follow

The exact language used by the examiner is: 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. An action on the CPA follows.

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

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

According to MPEP ¶ 2.30, a CPA acceptance notice typically includes the following information:

• The filing date of the CPA request
• The application number of the parent application
• Confirmation that the CPA request is acceptable
• Statement that a CPA has been established

The MPEP provides a template for examiners, stating: “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. An action on the CPA follows.”

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

What happens to the status of the prior application when filing a CPA?

When filing a Continued Prosecution Application (CPA), the status of the prior application changes. According to MPEP 201.06(d):

The filing of a CPA is not a filing of a new application. Rather, a CPA is a continuation of the prior application and maintains the same application number as the prior application, i.e., the application number of the prior application is used as the application number for the CPA.

This means that:

• The prior application is not abandoned
• The CPA continues the examination process of the prior application
• The same application number is retained for the CPA

It’s important to note that while the CPA continues the examination, it is treated as a new application for all other purposes under the patent statute and rules.

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

For more information on CPA, visit: CPA.

What happens to the priority date in a divisional application?

The priority date of a divisional application remains the same as its parent application, provided that the proper procedures are followed. According to MPEP 201.06:

‘A later-filed application which is filed before the patenting or abandonment of or termination of proceedings on an earlier-filed application and which is an application for an invention which is disclosed and claimed in the earlier-filed application is an application for a ‘divisional’ of the earlier-filed application.’

This means that:

• The divisional application retains the priority date of the parent application for the subject matter disclosed in the parent.
• This is crucial for establishing the effective filing date for prior art purposes under 35 U.S.C. 100(i).
• The applicant must ensure that a proper reference to the parent application is made in the divisional to maintain this priority.

Maintaining the original priority date is one of the key advantages of filing a divisional application, as it allows the applicant to protect different aspects of their invention without losing the benefit of the earlier filing date.

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

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

What happens to the parent application when a divisional application is filed?

When a divisional application is filed, the parent application continues to be prosecuted independently. The filing of a divisional application does not automatically affect the status or prosecution of the parent application.

As stated in MPEP 201.06: “The divisional application may be filed either while the original application is still pending or after it has been patented.” This means that:

• If the parent application is pending, it remains pending and continues through the examination process.
• If the parent application has already been granted as a patent, it remains a valid patent.

It’s important to note that while the divisional application is independent, it must contain claims to a different invention than the parent application. The examiner will ensure that there is no double patenting between the parent and divisional applications.

Additionally, if the divisional application is filed in response to a restriction requirement in the parent application, the applicant should consider canceling the claims in the parent application that are now being pursued in the divisional to avoid potential issues with duplicate claims.

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

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

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

What happens to the parent application when a continuation is filed?

Filing a continuation application does not automatically affect the status of the parent application. As stated in MPEP 201.07:

‘A continuation application may be filed under 35 U.S.C. 111(a) or 363 while the prior application is pending, or after the prosecution and patent term adjustment time periods have expired, or after the prior application has become abandoned or issued as a patent.’

This means that:

• If the parent application is still pending, it remains active and can continue through the examination process.
• If the parent application has already been issued as a patent, it remains a valid patent.
• If the parent application has been abandoned, filing a continuation does not revive it.

It’s important to note that while a continuation can be filed at various stages of the parent application’s lifecycle, the applicant may need to make strategic decisions about how to proceed with the parent application. For example:

• They may choose to abandon the parent application in favor of the continuation.
• They may continue prosecuting both applications simultaneously.
• They may allow the parent to issue as a patent and use the continuation to pursue additional claims.

The choice often depends on the specific circumstances and the applicant’s patent strategy.

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

The inventorship in a Continued Prosecution Application (CPA) generally carries over from the prior application, unless specific steps are taken to change it. The MPEP states:

The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

If an inventor needs to be added or deleted in a CPA after it has been filed, a request under 37 CFR 1.48 must be submitted, along with the required fee.

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

When filing a Continued Prosecution Application (CPA), previously filed Information Disclosure Statements (IDS) are handled as follows:

• All IDSs filed in the prior application that comply with 37 CFR 1.98 are automatically considered in the CPA
• No specific request is needed for the examiner to consider the previously submitted information
• New IDSs can be filed in the CPA and will be considered if they comply with the content requirements and are filed before the first Office action

The MPEP states: All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner. No specific request that the previously submitted information be considered in a CPA is required.

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

Continuation-in-part (CIP) applications filed under former 37 CFR 1.62 on or after December 1, 1997, are treated as improper applications. This also applies to continuation or divisional applications of applications filed before June 8, 1995. The MPEP states:

“A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or divisional of an application having a filing date before June 8, 1995, will be treated as an improper application.”

This change in procedure highlights the importance of using the correct application type and filing method after the deletion of 37 CFR 1.62.

What happens to continuation or divisional applications filed after a CPA in a design application?

Continuation or divisional applications filed after a Continued Prosecution Application (CPA) in a design application are treated differently than those filed after a CPA in a utility or plant application. According to MPEP 201.06(d):

Any continuation or divisional application filed under 37 CFR 1.53(b) after the filing of a CPA of a design application will be assigned a new application number and will reflect the filing date of the 37 CFR 1.53(b) application.

This means that unlike utility or plant applications, where a continuation or divisional application would get the benefit of the CPA’s filing date, in design applications, these subsequent applications are treated as new applications with their own filing dates.

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.

The MPEP clearly states: “All continuation, divisional and CIP applications filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62.”

This means that applications filed under the File Wrapper Continuing Procedure before its deletion will be processed according to the rules that were in place at the time of filing. For more detailed information on these procedures, you can refer to the MPEP 8th Edition, Rev. 1 (February 2003), which is available on the USPTO website.

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

The MPEP clearly states that All continuation and divisional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60. This means that if you filed a continuation or divisional application before the rule change, your application will still be handled according to the old procedures, ensuring consistency in the examination process for applications filed under the former rule.

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

When filing a Continued Prosecution Application (CPA), amendments and information disclosure statements (IDS) from the prior application are handled as follows:

• Amendments: The MPEP states, “Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph.” Applicants are encouraged to file any preliminary amendments at the time of filing the CPA.
• Information Disclosure Statements: According to the MPEP, “All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner.” No specific request for consideration is required.

It’s important to note that amendments or IDSs filed after the CPA filing date could delay prosecution. The MPEP advises, “Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.”

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

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.

What happens to a provisional application after one year?

A provisional application automatically becomes abandoned 12 months after its filing date. The MPEP 201.04 states:

‘A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter.’

This means that after the 12-month period, the provisional application cannot be revived or extended. To maintain the benefit of the provisional filing date, you must file a nonprovisional application claiming priority to the provisional within this 12-month window. If you fail to do so, you lose the benefit of the earlier filing date, and the subject matter of the provisional becomes part of the prior art.

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

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

For more information on USPTO, visit: USPTO.

What happens to a provisional application after 12 months?

A provisional application automatically becomes abandoned 12 months after its filing date. The MPEP states: ‘A provisional application will automatically become abandoned 12 months after its filing date pursuant to 35 U.S.C. 111(b)(5).’ This means that:

• The application is no longer pending
• It cannot be revived
• No patent will directly result from a provisional application

To benefit from the provisional application, the applicant must file a nonprovisional application claiming priority to the provisional within the 12-month period. For more details, refer to MPEP 201.04.

For more information on Patent Application Process, visit: Patent Application Process.

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

What happens if you don’t file a nonprovisional application within 12 months of a provisional?

If you don’t file a nonprovisional application within 12 months of filing a provisional application, you lose the ability to claim the benefit of the provisional application’s filing date. The MPEP 201.04 states:

“A provisional application automatically becomes abandoned 12 months after its filing date and cannot claim the benefit of any other application.”

This means that after 12 months, the provisional application expires, and you can no longer use it as a basis for priority in a nonprovisional application. If you still want to pursue patent protection for your invention, you would need to file a new application, but you may have lost your priority date and any intervening prior art could potentially be used against your application.

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

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

If the basic filing fee is not paid when filing a Continued Prosecution Application (CPA), the USPTO will send a notice to the applicant. According to MPEP 201.06(d):

‘If the basic filing fee is not paid when the CPA is filed or within the time period set forth in a notice from the Office, the USPTO will send a Notice to File Missing Parts in the CPA.’

This notice gives the applicant a chance to pay the fee and continue the application process. However, it’s important to note that failing to respond to this notice or pay the required fee within the specified time frame could result in the CPA being abandoned. It’s always best practice to submit all required fees at the time of filing to avoid potential delays or complications in the patent application process.

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

For more information on CPA, visit: CPA.

For more information on Notice to File Missing Parts, visit: Notice to File Missing Parts.

Introducing new matter in a divisional application is not allowed and can have serious consequences. According to MPEP 201.06:

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

This means that a divisional application must not contain any new matter beyond what was disclosed in the parent application. If new matter is introduced:

• The new matter will not be entitled to the benefit of the parent application’s filing date.
• Claims relying on the new matter may be rejected under 35 U.S.C. 112(a) for lack of written description or enablement.
• The application may lose its status as a proper divisional, potentially affecting its ability to overcome certain types of double patenting rejections.

To avoid these issues:

1. Carefully review the divisional application before filing to ensure it only contains subject matter from the parent application.
2. If new subject matter is necessary, consider filing it as a continuation-in-part (CIP) application instead of a divisional.
3. Consult with a patent attorney or agent to ensure compliance with MPEP guidelines.

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

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

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

If you submit an amendment to reference the prior application in a Continued Prosecution Application (CPA), it will not be entered by the USPTO.

The MPEP ¶ 2.34 clearly states: “The amendment filed [1] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [2] application of Application No. [3] has not been entered.”

Furthermore, the MPEP adds: “any such amendment shall be denied entry.” This means that even if you submit such an amendment, it will be rejected, and the examiner will use this form paragraph to inform you of the denial.

If you submit an amendment to refer to a Continued Prosecution Application (CPA) as a continuation or divisional application, it will be denied entry by the patent examiner. The MPEP ¶ 2.34 states:

“Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.”

This means that the patent examiner will not accept or incorporate such amendments into the application. The CPA itself serves as the necessary reference to the prior application, making additional amendments unnecessary and inappropriate.

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 patent examination, visit: patent examination.

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

If you miss the 12-month deadline for filing a nonprovisional application claiming the benefit of a provisional application, you generally lose the ability to claim that earlier filing date. The MPEP 201.04 states:

“If a provisional application is not filed in compliance with 35 U.S.C. 119(e) and 37 CFR 1.53(c), the provisional application is not entitled to the benefit of the filing date of the provisional application.”

Consequences of missing the deadline include:

• Loss of the earlier filing date
• Potential issues with prior art that emerged during the 12-month period
• Possible loss of patent rights in some jurisdictions

In some cases, you may be able to file a petition for an unintentional delay under 37 CFR 1.78(c), but this is not guaranteed and may involve additional fees. It’s crucial to monitor deadlines carefully to avoid these issues.

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

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

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

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

If you identify a new inventor in a Continued Prosecution Application (CPA) without filing a request under 37 CFR 1.48, the inventorship will not be officially changed. The MPEP clearly states: ‘It is noted that [new inventor] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [filing date], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.’ In such cases, the inventorship in the CPA will remain the same as in the prior application, despite the attempt to name a new inventor.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

What happens if I file a provisional application without meeting all the requirements?

If you file a provisional application that doesn’t meet all the requirements, it may not be granted the filing date you intended. The MPEP states: If a provisional application does not contain a cover sheet identifying it as a provisional application, it will be treated as a nonprovisional application. This means:

• Your application might be processed as a nonprovisional application, which has different requirements and fees.
• You could lose the intended filing date, which is crucial for establishing priority.
• The USPTO may send you a notice of missing parts, giving you a chance to correct the deficiencies.

It’s crucial to ensure all requirements are met when filing a provisional application to avoid these complications.

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

For more information on Patent Application Process, visit: Patent Application Process.

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

For more information on USPTO, visit: USPTO.

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

If you file a provisional application but do not file a corresponding nonprovisional application within 12 months, the provisional application will automatically be abandoned. As stated in the MPEP 201.04: “A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter.” This means you lose the benefit of the provisional filing date and cannot claim priority to it in future applications. To maintain the priority benefit, you must file a nonprovisional application claiming benefit of the provisional within the 12-month period.

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

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

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

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

When an improper Continued Prosecution Application (CPA) is filed, the USPTO’s response depends on the type of application and the nature of the impropriety:

• For utility or plant applications filed on or after July 14, 2003, an improper CPA is treated as a Request for Continued Examination (RCE) if possible
• If the improper CPA doesn’t meet RCE requirements, it’s treated as an improper RCE
• For design applications, an improper CPA may be treated as a new application under 37 CFR 1.53(b) in some circumstances
• The Office will not automatically convert an improper CPA to an application under 37 CFR 1.53(b) without extenuating circumstances

The MPEP states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed.

Regarding treatment as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

If the improper CPA doesn’t meet RCE requirements: If the improper CPA does not satisfy the requirements of 37 CFR 1.114 (e.g., the request lacks a submission or the fee under 37 CFR 1.17(e), or the prosecution of the application is not closed), the Office treats the improper CPA as an improper RCE, and the time period set in the last Office action (or notice) will continue to run.

Examiners are instructed to notify supervisory staff if they discover an improper CPA has been processed: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the Technology Center (TC) who will reprocess the CPA and correct the application records as appropriate.

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 more information on RCE, visit: RCE.

Continued Prosecution Applications (CPAs) are only available for design patent applications. If an improper CPA is filed for a utility or plant application, the following occurs:

• For applications filed on or after June 8, 1995, the improper CPA is treated as a Request for Continued Examination (RCE) under 37 CFR 1.114
• If the requirements for an RCE are not met, the Office will send a Notice of Improper Request for Continued Examination (RCE)
• For applications filed before June 8, 1995, the improper CPA cannot be treated as an RCE
• The applicant will be notified of the improper CPA

MPEP 201.06(d) states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed. It further notes: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

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

For more information on RCE, visit: RCE.

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

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

What happens if a provisional application is not followed by a nonprovisional application within 12 months?

If a provisional application is not followed by a nonprovisional application within 12 months, it will automatically be abandoned and cannot be revived. The MPEP 201.04 states: A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter. This means that the provisional application cannot serve as a priority document for any subsequent applications, and any potential benefit date will be lost.

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

If a provisional application is not converted to a nonprovisional application within 12 months, it automatically becomes abandoned. The MPEP 201.04 clearly states:

A provisional application automatically becomes abandoned 12 months after its filing date and cannot claim the benefit of any other application. See 35 U.S.C. 111(b)(5).

This means that after 12 months, the provisional application can no longer serve as a basis for claiming priority, and any disclosure made in the provisional application becomes part of the public domain. To maintain the benefit of the provisional filing date, applicants must file a nonprovisional application claiming the benefit of the provisional application within the 12-month period.

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

What happens if a provisional application is not converted to a nonprovisional within 12 months?

If a provisional application is not converted to a nonprovisional application within 12 months, it will automatically expire. The MPEP 201.04 states:

“A provisional application will automatically become abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter.”

Once expired, the provisional application cannot be revived or restored to pending status. However, the applicant may still file a nonprovisional application after the 12-month period, but they would lose the benefit of the earlier filing date of the provisional application.

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

If a new inventor is identified in a Continued Prosecution Application (CPA) without proper documentation, it can lead to issues with the application. The MPEP ¶ 2.33 states:

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

This means that if an examiner notices a new inventor listed on a CPA without the required request under 37 CFR 1.48, they will issue a notice to the applicant. The inventorship will remain the same as in the prior application until the proper request is filed and approved.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

If a new inventor is identified in a Continued Prosecution Application (CPA) without filing a proper request, it can lead to inventorship issues. The MPEP ¶ 2.33 states:

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

This means that simply naming a new inventor in the CPA filing documents is not sufficient. Without a proper request under 37 CFR 1.48, the inventorship will remain the same as in the prior application, potentially leading to complications in the patent prosecution process.

For more information on CPA, visit: CPA.

If a new inventor is identified in a Continued Prosecution Application (CPA) for a design application, specific steps must be taken to properly add them to the application.

MPEP ¶ 2.33 states: “It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.”

This means that simply naming a new inventor in the CPA filing is not sufficient. A formal request under 37 CFR 1.48 must be filed to correct the inventorship. Without this request, the inventorship will remain the same as in the prior application, regardless of any new names listed on the CPA filing.

For more information on CPA, visit: CPA.

What happens if a divisional application is filed after the parent application is patented or abandoned?

If a divisional application is filed after the parent application has been patented or abandoned, it will not be entitled to the benefit of the parent application’s filing date. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.“

Filing a divisional application after the parent application has been patented or abandoned means:

• The application will not be considered a proper divisional application
• It will not receive the benefit of the parent application’s filing date
• It may be treated as a new, independent application
• Prior art that was not applicable to the parent application may now be applicable
• The application may face potential statutory bars under 35 U.S.C. 102

To avoid these issues, it’s crucial to file divisional applications before the patenting, abandonment, or termination of proceedings on the parent application.

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

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

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

If a Continued Prosecution Application (CPA) request for a design patent is not submitted on a separate paper, it will be considered non-compliant and will not be processed by the USPTO.

The MPEP clearly states: ‘Because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2), the request is not acceptable and no CPA has been established.’ This means that the CPA will not be initiated, and the applicant will need to resubmit the request properly to proceed with the continued examination.

In such cases, the USPTO will typically send a notification to the applicant informing them of the non-compliance and providing instructions for proper submission.

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

For more information on Patent Application Process, visit: Patent Application Process.

If a Continued Prosecution Application (CPA) request is improper for a utility or plant application, the USPTO handles it differently than for design applications. According to MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the USPTO treats the improper CPA request as a Request for Continued Examination (RCE). This approach ensures that the application can continue to be prosecuted, albeit under a different procedure. Applicants should be aware of this distinction and the potential implications for their patent prosecution strategy.

For more information on CPA, visit: CPA.

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

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

For more information on RCE, visit: RCE.

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

If a Continued Prosecution Application (CPA) is improperly requested for a utility or plant patent application, it is typically treated as a Request for Continued Examination (RCE). The MPEP ¶ 2.30 provides guidance on this situation:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the examiner will use a different form paragraph (7.42.15) to notify the applicant that their CPA request has been treated as an RCE. This ensures that the application can continue to be examined under the appropriate procedure for utility or plant patents.

For more information on CPA, visit: CPA.

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

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

For more information on RCE, visit: RCE.

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

If a Continued Prosecution Application (CPA) is filed in a utility or plant application after July 14, 2003, it will not be treated as a proper CPA. According to MPEP 201.06(d):

‘Any CPA filed on or after July 14, 2003 in a utility or plant application will automatically be treated as a request for continued examination (RCE) under 37 CFR 1.114, see MPEP § 706.07(h), paragraph II.’

This means that instead of being processed as a CPA, the application will be treated as a Request for Continued Examination (RCE). Applicants should be aware of this automatic conversion and ensure they meet the requirements for an RCE if they inadvertently file a CPA for a utility or plant application.

For more information on CPA, visit: CPA.

For more information on RCE, visit: RCE.

If a Continued Prosecution Application (CPA) is filed after the issue fee has been paid, it will not be treated as a CPA. Instead, it will be processed as follows:

• For applications filed on or after May 29, 2000, the CPA will be treated as a request for continued examination (RCE) under 37 CFR 1.114.
• For applications filed before May 29, 2000, the CPA will be treated as an improper application and will not be processed.

As stated in MPEP 201.06(d): “If an application is filed on or after May 29, 2000, the filing of a CPA is not permitted after payment of the issue fee. In such a case, the Office will treat the improper CPA as an RCE under 37 CFR 1.114, provided that the application is a utility or plant application filed on or after June 8, 1995.”

It’s important to note that this treatment as an RCE is only possible for utility or plant applications filed on or after June 8, 1995. For other types of applications or those filed before this date, the improper CPA filing will not be processed, and the applicant may need to consider other options, such as filing a reissue application if the patent has already issued.

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

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

After a Continued Prosecution Application (CPA) is established, the USPTO proceeds with examination. According to MPEP ¶ 2.35:

Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.

This means that once the CPA is established, the examiner will review the application and issue an Office action. It’s important to note that applicants are not separately notified of the abandonment of the parent application, nor is a filing receipt normally sent for a CPA.

For more information on CPA, visit: CPA.

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

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

Once a Continued Prosecution Application (CPA) is established from a Conditional Request, the USPTO proceeds with the examination process as it would for any other CPA. According to MPEP ¶ 2.35: “An action on the CPA follows.”

This means that after the CPA is established:

• The parent application is considered abandoned
• The examiner will review the CPA and issue an Office action
• The applicant should be aware that they may not receive a filing receipt for the CPA, as noted in the MPEP: “This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.”

For more information on CPA, visit: CPA.

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

37 CFR 1.62, which covered the File Wrapper Continuing Procedure, was deleted effective December 1, 1997. This change was announced in the Official Gazette: “See 1203 O.G. 63, October 21, 1997.” This deletion significantly impacted how certain continuation, divisional, and continuation-in-part applications were processed.

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

37 CFR 1.60, which previously governed the filing of divisional and continuation applications, was deleted effective December 1, 1997. As stated in the MPEP, 37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. This change significantly impacted the procedure for filing these types of applications.

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

MPEP 201.01 outlines several types of national applications that can be filed with the USPTO. These include:

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

As stated in MPEP 201.01: ‘National applications include original (nonprovisional), reissue, design, plant, and provisional applications.’

Each of these application types serves a specific purpose in the patent system and is subject to different rules and requirements.

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

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

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

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

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.

The signature requirements for filing a Continued Prosecution Application (CPA) are specific and important. According to MPEP 201.06(d):

A Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) must be signed by a person authorized to prosecute the application, except as provided in 37 CFR 1.33(b).

This means that:

• The CPA must be signed by someone authorized to prosecute the application.
• Typically, this would be the applicant or the applicant’s patent attorney or agent.
• There are exceptions outlined in 37 CFR 1.33(b), which allow for certain communications to be signed by other parties in specific circumstances.

It’s crucial to ensure that the proper signature is provided when filing a CPA to avoid potential issues with the application’s acceptance or processing.

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

For more information on CPA, visit: CPA.

The signature requirements for a Continued Prosecution Application (CPA) request are specific and important to ensure proper filing. According to MPEP 201.06(d):

• The request for a CPA must be signed by a person authorized to prosecute the prior application.
• This includes:
  • A registered patent practitioner
  • The applicant (inventor or assignee of the entire interest)
• The signature can be provided through any of the approved signature methods outlined in 37 CFR 1.4(d).

The MPEP states: ‘A request for a CPA may only be signed by a person authorized to prosecute the application as set forth in 37 CFR 1.33(b).’ This ensures that only authorized individuals can initiate the CPA process, maintaining the integrity of the application.

It’s crucial to note that if the CPA request is not properly signed, it may not be granted a filing date, potentially affecting the continuity of the application.

For more information on CPA, visit: CPA.

What are the restrictions on filing a continuation-in-part application?

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While continuation-in-part (CIP) applications offer flexibility in adding new matter to existing patent applications, there are several important restrictions to consider. The MPEP 201.08 outlines some key points:

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“A continuation-in-part application can be filed as a new application claiming benefit under 35 U.S.C. 120 to a prior nonprovisional application or under 35 U.S.C. 119(e) to a prior provisional application, provided the conditions set forth under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 are met.”

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Key restrictions include:

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• The CIP must be filed while the parent application is still pending (not abandoned or issued).

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• At least one inventor named in the CIP must also be named in the parent application.

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• The CIP must include a specific reference to the parent application.

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• New matter in the CIP does not benefit from the parent application’s filing date.

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• The CIP must be filed within the time limits specified in 37 CFR 1.78 to claim priority.

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Additionally, applicants should be aware that filing a CIP may affect the patent term and the assessment of prior art for the new subject matter. Careful consideration of these restrictions is essential for effective patent strategy.

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

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

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

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

To file a valid Continued Prosecution Application (CPA) request for a design patent application, you must adhere to specific requirements outlined in 37 CFR 1.53(d). Key requirements include:

• The request must be for a design application only.
• The request must be submitted on a separate paper, as stated in MPEP ¶ 2.31: “because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2), the request is not acceptable and no CPA has been established.”
• The application being continued must be a design application that is complete as defined by 37 CFR 1.51(b).

Failure to meet these requirements may result in the CPA request being deemed unacceptable.

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.

To file a continuation-in-part (CIP) application, several requirements must be met according to MPEP 201.08 and 37 CFR 1.78:

1. The CIP must be filed while the prior nonprovisional application is still pending (before patenting, abandonment, or termination of proceedings).
2. The CIP must claim benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
3. The CIP must contain a specific reference to the prior application, including the application number.
4. For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet (ADS).
5. The CIP must have at least one common inventor with the prior application.

It’s important to note that a CIP can only be filed under 37 CFR 1.53(b) and cannot be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

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

For more information on USPTO, visit: USPTO.

To claim the benefit of a prior application’s filing date, applicants must meet specific requirements. The MPEP ¶ 2.05 advises:

“Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.”

Key requirements include:

• The application must be filed before the patenting or abandonment of the prior application.
• The application must contain a specific reference to the prior application.
• The application must have at least one common inventor with the prior application.
• The application must disclose the invention claimed in the manner provided by 35 U.S.C. 112(a).

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

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.

To claim the benefit of a prior application’s filing date in a continuation-in-part (CIP), applicants must meet specific requirements. According to MPEP ¶ 2.06:

Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.

These requirements typically include:

• Filing the CIP application while the prior application is still pending
• Naming at least one inventor in common with the prior application
• Including a specific reference to the prior application in the CIP
• Ensuring the CIP application contains a substantial portion of the prior application’s disclosure
• Complying with the time limits and procedures outlined in 37 CFR 1.78

It’s important to note that only the subject matter shared with the prior application will benefit from its earlier filing date. New matter added in the CIP will have the filing date of the CIP application.

For an application to be considered a divisional, it must meet several requirements as outlined in MPEP ¶ 2.01:

1. It must disclose and claim only subject matter disclosed in the prior application.
2. It must claim subject matter that is independent and distinct from that claimed in the prior application.
3. It must name the inventor or at least one joint inventor named in the prior application.

The MPEP states:

This application, which discloses and claims only subject matter disclosed in prior Application No.[1], filed [2], appears to claim only subject matter directed to an invention that is independent and distinct from that claimed in the prior application, and names the inventor or at least one joint inventor named in the prior application.

Meeting these requirements helps ensure that the divisional application is properly derived from the prior application while claiming a distinct invention.

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

For more information on USPTO, visit: USPTO.

According to MPEP 201.04, the required components of a provisional patent application are:

• A specification as prescribed by 35 U.S.C. 112(a)
• Any drawings required by 37 CFR 1.81(a)
• A cover sheet as required by 37 CFR 1.51(c)(1), which may be an application data sheet, form SB/16, or a cover letter identifying the application as provisional

The MPEP states, No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.

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

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

There are two primary methods for requesting the deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications:

• Letter to the examiner: You can submit a letter directly to the patent examiner handling your application.
• Request for corrected filing receipt: You can file a formal request for a corrected filing receipt with the USPTO.

These methods are outlined in MPEP § 201, ¶ 2.32, which states:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt.

It’s important to note that this procedure is specific to design applications and is not applicable to utility patents.

For more information on CPA, visit: CPA.

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

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

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

The MPEP 201 outlines several main types of patent applications:

• Nonprovisional applications for patent
• Provisional applications for patent
• International applications
• Design applications
• Plant applications
• Reissue applications
• Divisional applications
• Continuation applications
• Continuation-in-part applications

Each type serves a specific purpose in the patent application process and has its own requirements and procedures.

For more information on divisional, visit: divisional.

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

For more information on reissue, visit: reissue.

There are several types of patent applications in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a), including utility, plant, and design patent applications
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications filed under the Patent Cooperation Treaty (PCT)
• International design applications filed under the Hague Agreement

The MPEP states: 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 Hague Agreement, visit: Hague Agreement.

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

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

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

The main types of national applications under U.S. patent law are:

• Original (non-provisional) applications
• Provisional applications
• Reissue applications
• Divisional applications
• Continuation applications
• Continuation-in-part applications

As stated in MPEP 201.01: National applications include original (non-provisional), provisional, plant, design, reissue, divisional, and continuation applications (which may be filed under 37 CFR 1.53(b)), as well as continuation-in-part applications (which may be filed under 37 CFR 1.53(b)).

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

For more information on USPTO, visit: USPTO.

To learn more:

• national applications
• nonprovisional applications
• provisional applications
• patent types

A nonprovisional patent application filed under 35 U.S.C. 111(a) must include several key components. According to the MPEP, these include:

• A specification as prescribed by 35 U.S.C. 112
• A drawing as prescribed by 35 U.S.C. 113 (if necessary)
• An oath or declaration as prescribed by 35 U.S.C. 115
• The application filing fee

The MPEP states: Such application shall include— (A) a specification as prescribed by section 112; (B) a drawing as prescribed by section 113; and (C) an oath or declaration as prescribed by section 115.

It’s important to note that while claims and drawings are not required for obtaining a filing date (except for design applications), they are necessary for a complete application and must be submitted to avoid abandonment.

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

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

For more information on oath or declaration, visit: oath or declaration.

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

Continued Prosecution Applications (CPAs) have several key differences from regular continuation applications filed under 37 CFR 1.53(b):

• CPAs are only available for design applications, not utility or plant applications
• CPAs use the same application number as the prior application
• CPAs do not require a new specification or drawings to be filed
• The filing requirements for a CPA are minimal compared to a regular continuation
• CPAs are typically processed faster than regular continuations
• Filing a CPA automatically abandons the prior application

MPEP 201.06(d) states: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).

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

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

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

While both continuation and continuation-in-part (CIP) applications are related to a prior application, there are key differences:

• Continuation: Repeats the entire disclosure of the prior application without adding new matter.
• Continuation-in-Part (CIP): According to MPEP ¶ 2.06, a CIP “repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application.”

The main difference is that a CIP introduces new subject matter not present in the original application. This new matter receives the filing date of the CIP, while the repeated portions may claim the earlier filing date of the prior application if properly claimed under 35 U.S.C. 120.

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

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

A divisional application has several key characteristics as outlined in MPEP ¶ 2.01:

1. Independent and Distinct Subject Matter: It ‘appears to claim only subject matter directed to an invention that is independent and distinct from that claimed in the prior application.’
2. Disclosure in Prior Application: It ‘discloses and claims only subject matter disclosed in prior Application No.[1],filed[2].’
3. Inventor Continuity: It ‘names the inventor or at least one joint inventor named in the prior application.’
4. Potential Benefit Claim: It may claim the benefit of the filing date of the prior application, subject to meeting certain requirements.

These characteristics ensure that divisional applications properly separate distinct inventions while maintaining a connection to the original disclosure and inventorship.

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

Failing to properly claim benefit in a potential continuation-in-part (CIP) application can have significant implications for patent protection. The MPEP cautions: 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. (MPEP ¶ 2.06)

Implications of not properly claiming benefit include:

• Loss of earlier filing date for common subject matter, potentially affecting patentability
• Increased vulnerability to prior art that could have been excluded with the earlier filing date
• Possible issues with patent term calculation
• Risk of unintentionally abandoning the application if statutory deadlines are missed

To avoid these issues, applicants should carefully follow the requirements outlined in 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq when filing a CIP application.

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

The filing requirements for a divisional application under 37 CFR 1.53(b) are similar to those for a new nonprovisional application. 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: (1) a specification complying with 35 U.S.C. 112, including a claim or claims; (2) drawings, where necessary; and (3) the inventorship named on filing.’

Additionally, you must include:

• The appropriate filing fees
• An Application Data Sheet (ADS) specifying that the application is a divisional
• A proper benefit claim to the parent application

It’s important to note that while a new oath or declaration may not be required under 37 CFR 1.63(d), you must still comply with all other filing requirements.

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

For more information on drawings, visit: drawings.

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

For more information on inventorship, visit: inventorship.

To file a CPA for a design patent application, the following requirements must be met:

• The prior application must be a design application that is complete under 37 CFR 1.51(b)
• The CPA must be filed before the earliest of: payment of the issue fee, abandonment, or termination of proceedings in the prior application
• The CPA must be filed with a request on a separate paper
• The proper filing fee, search fee, and examination fee must be paid
• The CPA must only disclose and claim subject matter disclosed in the prior application

As stated in the MPEP: “The filing date of a CPA is the date on which a request on a separate paper for an application under this paragraph is filed.”

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

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

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

The filing requirements for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) are as follows:

• The CPA must be filed before the earliest of:
  • Payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted;
  • Abandonment of the prior application; or
  • Termination of proceedings on the prior application.
• The CPA must include a request to initiate proceedings under 37 CFR 1.53(d).
• The prior application must be a design application eligible for CPA practice.

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

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

For more information on CPA, visit: CPA.

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

A continuation-in-part (CIP) application has specific filing requirements. Key points include:

• A CIP application can only be filed under 37 CFR 1.53(b).
• It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance).
• The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• For applications filed on or after September 16, 2012, the benefit claim must be in an application data sheet (ADS).
• The CIP must have at least one common inventor with the prior application.
• New matter can be added to the specification, but claims relying on this new matter will not get the benefit of the earlier filing date.

As stated in the MPEP:

A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

It’s important to note that while a CIP allows for the addition of new matter, any claims that rely on this new matter will only be entitled to the filing date of the CIP application, not the earlier filing date of the parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

The filing date requirements for nonprovisional applications filed under 35 U.S.C. 111(a) have changed due to the Patent Law Treaties Implementation Act of 2012 (PLTIA). For applications filed on or after December 18, 2013:

• Non-design applications no longer require at least one claim or any drawings to receive a filing date
• Design patent applications still require at least one claim and any required drawings to receive a filing date

The MPEP states: Unless the application is for a design patent, nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, are no longer required to include at least one claim or any drawings in order to receive a filing date for the application.

Additionally, applications may now be filed by reference to a previously filed application: A nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application.

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

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

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

For more information on PLTIA, visit: PLTIA.

What are the filing date requirements for a CPA?

The filing date requirements for a Continued Prosecution Application (CPA) are specific and must be adhered to. According to MPEP 201.06(d):

The filing date of a CPA is the date on which a request on a separate paper for an application under 37 CFR 1.53(d) is filed. A request for a CPA is a paper filing, even though it may be submitted via EFS-Web.

Key points about CPA filing date requirements include:

• The CPA must be filed before the payment of the issue fee for the prior application
• It must be filed before abandonment of the prior application
• The request for a CPA must be made on a separate paper
• The filing date is based on when the CPA request is received, not when other application documents are submitted

It’s crucial to meet these requirements to ensure the CPA is properly filed and receives the correct filing date.

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

For more information on CPA, visit: CPA.

To receive a filing date for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d), the following requirements must be met:

• The application must be for a design patent;
• The prior application must be a design application that is complete as defined by 37 CFR 1.51(b);
• The application must be submitted before the payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application;
• The application must be filed within the period set forth in 37 CFR 1.53(d)(1)(ii); and
• The application must be filed with a request for a CPA.

As stated in the MPEP: ‘A CPA may be filed under 37 CFR 1.53(d) only if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).’

For more information on CPA, visit: CPA.

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

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

According to MPEP 201.02, there are several types of patent applications:

• National applications
• Provisional applications
• Nonprovisional applications
• International applications
• International design applications

The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.

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

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

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

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

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

The United States Patent and Trademark Office (USPTO) recognizes several types of patent applications. According to MPEP 201, these include:

• Nonprovisional applications for patent, including utility, design, and plant patent applications
• Provisional applications for patent
• International applications filed under the Patent Cooperation Treaty (PCT)
• Reissue applications
• Divisional applications
• Continuation applications
• Continuation-in-part applications

Each type of application serves a specific purpose in the patent process and has its own requirements and procedures.

For more information on divisional, visit: divisional.

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

For more information on reissue, visit: reissue.

For more information on USPTO, visit: USPTO.

According to MPEP 201.01, there are three main types of national applications in U.S. patent law:

• Original applications: These include both provisional and nonprovisional applications.
• Reissue applications: Filed to correct an error in an already issued patent.
• Reexamination applications: Used to request a review of an existing patent.

The MPEP states: National applications include original (nonprovisional and provisional), reissue, and reexamination applications. Each type serves a specific purpose in the patent application process.

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

Failing to file a 37 CFR 1.48 request when adding a new inventor to a Continued Prosecution Application (CPA) can have significant consequences.

MPEP ¶ 2.33 states: “Otherwise, the inventorship in the CPA shall be the same as in the prior application.” This means that without a proper 37 CFR 1.48 request:

• The new inventor will not be officially recognized on the application.
• The inventorship will remain unchanged from the prior application.
• This discrepancy could potentially affect the validity of the patent if granted.
• It may lead to complications in future patent proceedings or enforcement efforts.

It’s crucial to follow proper procedures to ensure all inventors are correctly listed and legally recognized on the patent application.

For more information on CPA, visit: CPA.

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

When filing a Continued Prosecution Application (CPA), there are specific conditions under which the prior application may be automatically abandoned. According to MPEP 201.06(d):

A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA. See 37 CFR 1.53(d)(2)(v).

However, it’s important to note that:

• The prior application is only expressly abandoned if the CPA is properly filed.
• If the CPA is improper (e.g., filed in a utility application), the express abandonment of the prior application will not be effective.
• The abandonment of the prior application is automatic upon the filing date of the properly filed CPA.

This automatic abandonment provision ensures a clear transition from the prior application to the CPA, which is particularly relevant for design applications where CPAs are permitted.

For more information on CPA, visit: CPA.

Filing a CPA for a design patent application offers several benefits:

• Minimal filing requirements compared to a regular continuation application
• No new filing receipt is normally issued
• Faster processing time, as it uses the same application number and file wrapper
• For examination priority, CPAs are treated as “amended” applications rather than “new” applications, potentially resulting in faster examination
• The prior application is automatically abandoned, simplifying the process

As stated in the MPEP: “A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).”

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

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

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

Filing a continuation application offers several benefits to patent applicants:

1. Pursuing additional claims: As stated in MPEP 201.07, “The disclosure presented in the continuation must be the same as that of the original application; i.e., the continuation should not include anything which would constitute new matter if inserted in the original application.” This allows applicants to pursue different or broader claims based on the same disclosure.
2. Extending prosecution: A continuation application provides more time to negotiate with the USPTO, potentially leading to stronger patent protection.
3. Maintaining pendency: It keeps the application pending, which can be strategically important in fast-evolving technologies or competitive markets.
4. Addressing new prior art: If new prior art emerges during the prosecution of the parent application, a continuation allows for claim adjustments to overcome this art.
5. Commercial considerations: As products evolve or market conditions change, continuation applications allow for tailoring claims to cover new aspects of the invention or competitor products.

By utilizing continuation applications strategically, inventors and businesses can build a stronger patent portfolio and maintain flexibility in their intellectual property protection strategy.

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

Filing a provisional patent application offers several benefits but also has limitations:

Benefits:

• Establishes an early filing date quickly and inexpensively
• Allows use of ‘Patent Pending’ for up to 12 months
• Provides time to assess commercial potential before filing a nonprovisional application
• Does not require claims or an oath/declaration

Limitations:

• Limited 12-month pendency
• Cannot directly mature into a patent
• Not examined for patentability
• Cannot claim priority to any earlier applications

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

Additionally, No claim for priority under 35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application based on a provisional application. This limits the use of provisional applications in certain contexts.

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

Filing a continuation-in-part (CIP) application has several benefits and potential drawbacks:

Benefits:

• Allows addition of new subject matter to an existing invention
• Maintains the priority date of the original application for common subject matter
• Provides an opportunity to strengthen the patent application with new data or improvements
• Allows for changes in inventorship to reflect new contributions

Drawbacks:

• New subject matter only gets the filing date of the CIP, potentially exposing it to more prior art
• Can complicate the patent term calculation
• May result in multiple patents with overlapping subject matter, requiring terminal disclaimers
• Increases overall costs due to additional filing and prosecution fees

The MPEP notes: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Inventors and patent attorneys should carefully consider these factors when deciding whether to file a CIP or a new application.

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

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

Filing a provisional patent application offers several advantages, as outlined in the MPEP:

1. Establishing Priority: It allows applicants to quickly and inexpensively file provisional applications and establish a priority date for their invention.
2. Paris Convention Priority: It starts the Paris Convention priority year, allowing foreign filings within 12 months while maintaining the U.S. filing date.
3. Simplified Filing: As stated in the MPEP, No claim is required in a provisional application and No oath or declaration is required in a provisional application.
4. Patent Term: The MPEP notes, The domestic priority period will not count in the measurement of the 20-year patent term. This puts domestic applicants… on equal footing with foreign applicants with respect to the patent term.
5. Time for Development: It provides a 12-month period to further develop the invention before filing a nonprovisional application.

These advantages make provisional applications a useful tool for inventors to secure an early filing date while allowing time for further development and market assessment.

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

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

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

Filing a Continued Prosecution Application (CPA) for design patents has several advantages over filing a regular continuation application under 37 CFR 1.53(b):

• Minimal filing requirements – only a request on a separate paper and the filing fee are needed
• No new oath or declaration is required
• Faster processing – the CPA uses the file and contents of the prior application
• Potentially faster examination – CPAs are often treated as “amended” applications for examination priority
• No need for a new specification or drawings

The MPEP notes: “A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).”

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

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

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

Reissue applications are used to correct errors in already issued patents. According to MPEP 201:

‘An application for reissue is made by the patentee when the patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent.’

Key points about reissue applications:

• They are filed under 35 U.S.C. 251.
• They can be used to broaden or narrow the scope of patent claims.
• There are time limitations for broadening reissues (within two years from the grant of the original patent).

For more information on Patent correction, visit: Patent correction.

For more information on Patent errors, visit: Patent errors.

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

MPEP 201.01 briefly mentions reissue applications as one of the types of national applications. Specifically, it states:

‘National applications include original applications and reissue applications (filed under 35 U.S.C. 251).’

Reissue applications are a specialized type of patent application used to correct errors in an already issued patent. They are governed by 35 U.S.C. 251, which allows a patentee to apply for a reissue of their patent if it is deemed to be wholly or partly inoperative or invalid due to certain types of errors.

For more detailed information on reissue applications, refer to MPEP 1400 – Correction of Patents.

For more information on Patent correction, visit: Patent correction.

For more information on Patent errors, visit: Patent errors.

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

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.

International applications under the Patent Cooperation Treaty (PCT) are a type of patent application that provides a unified procedure for filing patent applications in its contracting states. According to MPEP 201:

‘An international application is a national application for patent which is filed under the Patent Cooperation Treaty (PCT).’

Key aspects of PCT applications:

• Allow seeking patent protection in multiple countries simultaneously
• Provide a streamlined filing process for international patent protection
• Include an international search and optional international preliminary examination
• Must enter the national phase in desired countries within specified timeframes
• Do not result in an ‘international patent’ but facilitate national/regional patent grants

PCT applications are particularly useful for inventors seeking broad international patent protection.

For more information on Patent Cooperation Treaty, visit: Patent Cooperation Treaty.

After receiving a MPEP ¶ 2.05 notification, an applicant should take the following actions:

1. Review the notification carefully: Understand the examiner’s assessment that the application may constitute a continuation or division.
2. Verify the information: Confirm that the prior application number and filing date mentioned in the notification are correct.
3. Assess the application’s status: Determine if the application should indeed be treated as a continuation, division, or both.
4. File appropriate documents: If the application is intended to be a continuation or division, ensure that all necessary documents, such as a reference to the prior application under 35 U.S.C. 120, 121, or 365(c), are properly filed.
5. Respond to the examiner: Provide any necessary clarifications or corrections regarding the application’s status.

The MPEP ¶ 2.05 notification states: “Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.” (MPEP ¶ 2.05)

It’s crucial to follow these steps promptly to ensure proper processing of the application and to secure any potential benefits of the earlier filing date.

For more information on applicant actions, visit: applicant actions.

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

All relevant information from MPEP ¶ 2.33 New Inventor Identified in CPA (for Design Applications) has been covered in the previous FAQs. No additional meaningful questions can be generated without redundancy.

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.

A provisional patent application has a limited lifespan. According to MPEP 201.04:

“A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter. See 35 U.S.C. 111(b)(5).”

However, there is a provision for extending this period in certain circumstances:

“The period of pendency of a provisional application is extended to the next succeeding business day if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia. See 35 U.S.C. 119(e)(3) and 37 CFR 1.7(b).”

It’s crucial to file a nonprovisional application claiming the benefit of the provisional application within this 12-month period to maintain the priority date.

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

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

For more information on USPTO, visit: USPTO.

Inventorship in a Continued Prosecution Application (CPA) is generally maintained from the prior application. However, if there’s a need to add or change inventors, specific procedures must be followed.

According to MPEP ¶ 2.33: “Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inventorship in the CPA shall be the same as in the prior application.”

This means that if you want to add or change inventors in a CPA, you must file a formal request under 37 CFR 1.48, which outlines the procedure for correction of inventorship in patent applications.

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

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

An international application is defined in 37 CFR 1.9(b). While the specific definition is not provided in the given MPEP excerpt, it generally refers to a patent application filed under the Patent Cooperation Treaty (PCT). International applications allow inventors to seek patent protection in multiple countries through a single filing process.

For more detailed information on international applications, you can refer to the full text of 37 CFR 1.9(b) and related sections of the MPEP.

For more information on Patent Cooperation Treaty, visit: Patent Cooperation Treaty.

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

According to MPEP ¶ 2.30, the applicant is typically notified that their CPA request has been accepted through the first Office action on the CPA. The MPEP states: “Use this form paragraph in the first Office action of a CPA to advise the applicant that a request for a CPA is acceptable and that a CPA has been established.” This notification is important because, as the MPEP notes, “applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.”

Unlike regular patent applications, applicants are not typically notified when a Continued Prosecution Application (CPA) has been established. The MPEP ¶ 2.30 states: “This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.”

Instead, the first notification an applicant usually receives is in the first Office action of the CPA. The examiner will use specific language to advise the applicant that the CPA request was acceptable and has been established.

According to MPEP ¶ 2.35, the USPTO treats ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. The MPEP explicitly states:

Any ‘conditional’ request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.

This means that even if an applicant submits a CPA request with conditions attached, the USPTO will process it as a standard, unconditional CPA request. This policy ensures clarity and consistency in the application process.

For more information on CPA, visit: CPA.

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

The USPTO treats all ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. According to MPEP ¶ 2.35:

Any “conditional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.

This means that once a conditional CPA request is submitted, it will be processed as a standard CPA, regardless of the applicant’s original intent.

For more information on CPA, visit: CPA.

When a Continued Prosecution Application (CPA) request for a design patent is found to be non-compliant, the USPTO notifies the applicant using a specific form paragraph. This notification informs the applicant about the issue and provides necessary details.

According to the MPEP, the examiner uses the following format:

• ‘Receipt is acknowledged of the request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on Application No. [2].’
• ‘However, because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2), the request is not acceptable and no CPA has been established.’

In this notification, [1] represents the filing date of the paper containing the CPA request, and [2] is the Application Number identified in the CPA request. This clear communication helps applicants understand the issue and take corrective action.

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

For more information on Patent Application Process, visit: Patent Application Process.

When the USPTO receives an unacceptable Continued Prosecution Application (CPA) request for a design patent application, they notify the applicant using a standardized form paragraph. According to MPEP ¶ 2.31, the examiner will use the following language:

Receipt is acknowledged of the request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on Application No. [2]. However, because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2), the request is not acceptable and no CPA has been established.

This notification informs the applicant that their CPA request has been received but not accepted due to non-compliance with the separate paper requirement. The examiner will insert the filing date of the CPA request and the application number in the appropriate brackets.

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

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.

The United States Patent and Trademark Office (USPTO) treats all ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. This is clearly stated in MPEP ¶ 2.35:

“Any ‘conditional’ request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.”

This means that once a CPA request is filed, even if the applicant intended it to be conditional, the USPTO will process it as a regular CPA. The conditions specified by the applicant are essentially disregarded, and the CPA is established based on the filing of the request alone.

For more information on CPA, visit: CPA.

For more information on Patent Application Process, visit: Patent Application Process.

The USPTO generally does not make an upfront determination about whether an application qualifies as a continuation-in-part (CIP) unless it becomes necessary in a proceeding. According to the MPEP:

“The Office does not need to make a determination as to whether the requirement of 35 U.S.C. 120 that the earlier nonprovisional application discloses the invention of the second application in the manner provided by 35 U.S.C. 112(a) is met unless the filing date of the earlier nonprovisional application is relied upon in a proceeding before the Office.”

However, examiners may use form paragraph 2.06 to remind applicants of possible CIP status:

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

Ultimately, it’s the applicant’s responsibility to properly claim CIP status and comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

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

The term ‘international application’ is defined in 37 CFR 1.9(b). An international application typically refers to a patent application filed under the Patent Cooperation Treaty (PCT), which provides a unified procedure for filing patent applications to protect inventions in its contracting states.

Key points about international applications:

• They are governed by the Patent Cooperation Treaty.
• They can lead to national phase entries in multiple countries.
• They provide a streamlined filing process for seeking patent protection internationally.
• The specific definition in 37 CFR 1.9(b) should be consulted for precise legal terminology.

International applications are distinct from national applications and offer a pathway for inventors to seek protection in multiple countries through a single filing.

For more information on Patent Cooperation Treaty, visit: Patent Cooperation Treaty.

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.