Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority (3)
A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:
- Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
- New matter introduced in the CIP will have the filing date of the CIP application.
- Each claim in the CIP is evaluated independently for priority date determination.
MPEP 211.05 states:
A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.
To learn more:
The effective filing date for claims in a continuation-in-part (CIP) application can vary depending on the content of the claims. According to MPEP 201.08:
The effective filing date of a claimed invention in a continuation-in-part application is determined on a claim-by-claim basis and is dependent upon the sufficiency of the disclosure in the earlier application(s) to support the claimed invention with 35 U.S.C. 112(a) except for the best mode requirement.
This means:
- Claims that are fully supported by the earlier application(s) get the benefit of the earlier filing date(s).
- Claims that rely on newly added matter in the CIP have the filing date of the CIP as their effective filing date.
It’s crucial for patent applicants to carefully consider the implications of adding new matter in a CIP, as it can affect the priority date and potentially impact patentability.
To learn more:
To learn more:
No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:
‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’
This means:
- The divisional application must be limited to the subject matter disclosed in the parent application
- No new matter can be added to the divisional application
- The claims in the divisional must be supported by the disclosure of the parent application
If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.
To learn more:
MPEP 2100 – Patentability (3)
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
To learn more:
MPEP 2133.01 – Rejections Of Continuation – In – Part (Cip) Applications (1)
Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
To learn more:
MPEP 2136.02 – Content Of The Prior Art Available Against The Claims (1)
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
MPEP 2136.04 – Different Inventive Entity; Meaning Of "By Another" (1)
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
Patent Law (11)
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
To learn more:
When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
To learn more:
A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:
- Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
- New matter introduced in the CIP will have the filing date of the CIP application.
- Each claim in the CIP is evaluated independently for priority date determination.
MPEP 211.05 states:
A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.
To learn more:
A new oath or declaration is required for a continuation-in-part (CIP) application, and it must acknowledge the duty to disclose information material to patentability as defined in 37 CFR 1.56.
MPEP 602.02 states: ‘A new oath or declaration is required in a continuation-in-part application, which includes subject matter not disclosed in the prior nonprovisional application. See MPEP § 201.08 and § 602.’
The new oath or declaration in a CIP application should:
- Identify the application as a continuation-in-part
- Acknowledge the duty to disclose material information
- Cover the new subject matter introduced in the CIP
- Be signed by all inventors, including any new inventors added due to the new subject matter
It’s important to ensure that the new oath or declaration complies with all requirements of 37 CFR 1.63 to avoid potential issues during prosecution.
To learn more:
The use of a copy of an oath or declaration in a continuation-in-part (CIP) application depends on the filing date of the CIP application:
- For CIP applications filed on or after September 16, 2012:
- A copy of an oath or declaration from the prior application may be used.
- However, the oath or declaration must comply with the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.
- A new oath or declaration may be necessary if the prior application was filed before September 16, 2012.
- For CIP applications filed before September 16, 2012:
- Generally, a new oath or declaration is required.
- The copy of the oath or declaration from the prior application is typically not sufficient due to the new matter introduced in a CIP.
According to MPEP 602.05(a): For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64.
It’s important to ensure that the oath or declaration covers all the subject matter in the CIP application, including any new matter added.
To learn more:
How does the USPTO handle new matter introduced in continuation-in-part applications?
Continuation-in-part (CIP) applications are a special case when it comes to new matter. The MPEP 608.04 states:
‘In the case of a continuation-in-part application, any claim directed to matter which was not described in the parent nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112 is treated as entitled only to the filing date of the continuation-in-part application.’
This means:
- New matter can be introduced in a CIP application.
- Claims based on the new matter will only receive the filing date of the CIP application.
- Claims fully supported by the parent application can retain the earlier filing date.
Examiners will carefully review CIP applications to determine which claims are entitled to which filing dates, affecting prior art considerations and potentially the validity of the claims.
To learn more:
If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:
- The examiner will notify the applicant in the next Office action.
- The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).
According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
It’s important to note that:
- Continuations and divisionals should not contain new matter relative to the prior application.
- If new matter is present, the application is more appropriately designated as a continuation-in-part.
- The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.
Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.
To learn more:
The effective filing date for claims in a continuation-in-part (CIP) application can vary depending on the content of the claims. According to MPEP 201.08:
The effective filing date of a claimed invention in a continuation-in-part application is determined on a claim-by-claim basis and is dependent upon the sufficiency of the disclosure in the earlier application(s) to support the claimed invention with 35 U.S.C. 112(a) except for the best mode requirement.
This means:
- Claims that are fully supported by the earlier application(s) get the benefit of the earlier filing date(s).
- Claims that rely on newly added matter in the CIP have the filing date of the CIP as their effective filing date.
It’s crucial for patent applicants to carefully consider the implications of adding new matter in a CIP, as it can affect the priority date and potentially impact patentability.
To learn more:
To learn more:
No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:
‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’
This means:
- The divisional application must be limited to the subject matter disclosed in the parent application
- No new matter can be added to the divisional application
- The claims in the divisional must be supported by the disclosure of the parent application
If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.
To learn more:
Patent Procedure (11)
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
To learn more:
When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
To learn more:
A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:
- Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
- New matter introduced in the CIP will have the filing date of the CIP application.
- Each claim in the CIP is evaluated independently for priority date determination.
MPEP 211.05 states:
A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.
To learn more:
A new oath or declaration is required for a continuation-in-part (CIP) application, and it must acknowledge the duty to disclose information material to patentability as defined in 37 CFR 1.56.
MPEP 602.02 states: ‘A new oath or declaration is required in a continuation-in-part application, which includes subject matter not disclosed in the prior nonprovisional application. See MPEP § 201.08 and § 602.’
The new oath or declaration in a CIP application should:
- Identify the application as a continuation-in-part
- Acknowledge the duty to disclose material information
- Cover the new subject matter introduced in the CIP
- Be signed by all inventors, including any new inventors added due to the new subject matter
It’s important to ensure that the new oath or declaration complies with all requirements of 37 CFR 1.63 to avoid potential issues during prosecution.
To learn more:
The use of a copy of an oath or declaration in a continuation-in-part (CIP) application depends on the filing date of the CIP application:
- For CIP applications filed on or after September 16, 2012:
- A copy of an oath or declaration from the prior application may be used.
- However, the oath or declaration must comply with the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012.
- A new oath or declaration may be necessary if the prior application was filed before September 16, 2012.
- For CIP applications filed before September 16, 2012:
- Generally, a new oath or declaration is required.
- The copy of the oath or declaration from the prior application is typically not sufficient due to the new matter introduced in a CIP.
According to MPEP 602.05(a): For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64.
It’s important to ensure that the oath or declaration covers all the subject matter in the CIP application, including any new matter added.
To learn more:
How does the USPTO handle new matter introduced in continuation-in-part applications?
Continuation-in-part (CIP) applications are a special case when it comes to new matter. The MPEP 608.04 states:
‘In the case of a continuation-in-part application, any claim directed to matter which was not described in the parent nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112 is treated as entitled only to the filing date of the continuation-in-part application.’
This means:
- New matter can be introduced in a CIP application.
- Claims based on the new matter will only receive the filing date of the CIP application.
- Claims fully supported by the parent application can retain the earlier filing date.
Examiners will carefully review CIP applications to determine which claims are entitled to which filing dates, affecting prior art considerations and potentially the validity of the claims.
To learn more:
If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:
- The examiner will notify the applicant in the next Office action.
- The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).
According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
It’s important to note that:
- Continuations and divisionals should not contain new matter relative to the prior application.
- If new matter is present, the application is more appropriately designated as a continuation-in-part.
- The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.
Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.
To learn more:
The effective filing date for claims in a continuation-in-part (CIP) application can vary depending on the content of the claims. According to MPEP 201.08:
The effective filing date of a claimed invention in a continuation-in-part application is determined on a claim-by-claim basis and is dependent upon the sufficiency of the disclosure in the earlier application(s) to support the claimed invention with 35 U.S.C. 112(a) except for the best mode requirement.
This means:
- Claims that are fully supported by the earlier application(s) get the benefit of the earlier filing date(s).
- Claims that rely on newly added matter in the CIP have the filing date of the CIP as their effective filing date.
It’s crucial for patent applicants to carefully consider the implications of adding new matter in a CIP, as it can affect the priority date and potentially impact patentability.
To learn more:
To learn more:
No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:
‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’
This means:
- The divisional application must be limited to the subject matter disclosed in the parent application
- No new matter can be added to the divisional application
- The claims in the divisional must be supported by the disclosure of the parent application
If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.
To learn more: