Patent Law FAQ

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

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.

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.

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.

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.

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 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.

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.

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 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.

According to MPEP 201.06(c), the filing date for a divisional or continuation application filed under 37 CFR 1.53(b) is determined as follows:

‘The filing date of an application filed under 37 CFR 1.53(b) is the date on which a specification, with or without claims, is received in the Office.’

This means that the filing date is established when the USPTO receives the specification, regardless of whether claims are included. It’s important to note that other application components, such as drawings or fees, are not required to secure the filing date.

To learn more:

• filing date
• divisional application
• continuation application
• 37 CFR 1.53(b)
• specification

To learn more:

• 37 CFR 1.53(b)

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.

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 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.

A continuation-in-part (CIP) application differs from a regular continuation application in the following ways:

• A CIP application contains a portion or all of the disclosure of an earlier application and adds matter not disclosed in the earlier application.
• A regular continuation application contains the same disclosure as the earlier application without adding new matter.

As stated in 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.

To learn more:

• continuation-in-part
• CIP
• continuation application
• patent application types

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.

A continuation application and a divisional application are both types of continuing applications, but they serve different purposes:

• Continuation application: Used to pursue additional claims to an invention disclosed in a prior application. It contains the same disclosure as the parent application.
• Divisional application: Used to pursue claims to an invention that was disclosed but not claimed in a prior application. It typically results from a restriction requirement in the parent application.

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.” In contrast, a divisional application focuses on a distinct invention that was not claimed in the parent application.

To learn more:

• continuation application
• divisional application
• continuing applications
• patent applications

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that stem from an earlier 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… The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.’
• Continuation-in-part application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the parent application.

The key distinction is that a continuation-in-part introduces new subject matter, while a continuation does not.

To learn more:

• continuation application
• continuation-in-part
• CIP
• patent application types
• new matter

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.

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

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

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

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

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 continuation or divisional application is a type of continuing application filed under 37 CFR 1.53(b). According to the MPEP, An application filed under 37 CFR 1.53(b) may be an original or a reissue, a continuation, a divisional, a continuation-in-part, or a substitute. These applications are filed under 35 U.S.C. 111(a) and can be for utility, design, plant, or reissue patents.

To learn more:

• continuation application
• divisional application
• 37 CFR 1.53(b)
• patent application types

To learn more:

• 37 CFR 1.53(b)

A continuation application is a type of patent application that discloses the same invention(s) as a previously filed, copending nonprovisional application, international application designating the United States, or international design application designating the United States. The MPEP states:

“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.”

It’s important to note that the continuation application must not include any new matter that wasn’t present in the parent application.

To learn more:

• continuation application
• patent application
• nonprovisional application
• international application

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.

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.

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.

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.

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.

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 a copending application is abandoned after filing a continuation application?

If a copending application is abandoned after filing a continuation application, it does not affect the continuation application’s status. The MPEP states:

“The copendency requirement of 35 U.S.C. 120 is met if the later-filed application is filed before the patenting or abandonment of or termination of proceedings on the prior application.”

This means that as long as the continuation application was filed while the prior application was still pending, subsequent abandonment of the prior application does not impact the continuation’s validity. The continuation application can still claim the benefit of the prior application’s filing date.

For more information, refer to MPEP 211.01.

To learn more:

• continuation application
• copending application
• abandonment
• 35 U.S.C. 120

To learn more:

• 35 U.S.C. 120

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

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.

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

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

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

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

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

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

To learn more:

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

To learn more:

• 37 CFR 1.137

The MPEP 201.06(c) outlines the requirements for filing a divisional or continuation application without an executed oath or declaration:

’37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing an oath or declaration as required by 37 CFR 1.63, provided that a copy of the executed oath or declaration filed in the prior application is submitted for the continuation or divisional application and the specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application.’

To file without a new oath or declaration:

• Submit a copy of the executed oath or declaration from the prior application
• Ensure the new application contains no new matter
• File a copy of the specification and drawings from the prior application

This procedure allows for expedited filing while maintaining the integrity of the oath or declaration requirements.

To learn more:

• divisional application
• continuation application
• oath
• declaration
• 37 CFR 1.63(d)
• new matter

To learn more:

• 37 CFR 1.63(d)

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.

What are the requirements for claiming domestic benefit in a patent application?

Claiming domestic benefit in a patent application allows an applicant to rely on the filing date of an earlier-filed US application. The MPEP 216 outlines the requirements for claiming domestic benefit, which are based on 35 U.S.C. 120. The key requirements include:

• The later-filed application must be filed before the patenting or abandonment of the prior application
• The later-filed application must contain or be amended to contain a specific reference to the prior application
• The prior application must disclose the invention claimed in the later-filed application in the manner required by 35 U.S.C. 112(a)
• At least one inventor named in the later-filed application must have been named as an inventor in the prior application

The MPEP 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.’

It’s important to note that these requirements must be met for each application in the chain of priority, ensuring a continuous line of co-pendency and proper disclosure.

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

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

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.

To file a continuation application, you must meet several requirements as outlined in MPEP 201.07:

1. Timing: The continuation must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
2. Disclosure: The continuation must not include any new matter beyond what was disclosed in the parent application.
3. Claim to Benefit: A specific reference to the prior application is required, typically in the first sentence of the specification.
4. Inventor: At least one inventor named in the continuation must also be named in the prior application.
5. Filing Requirements: The continuation must include:
   • A copy of the prior application as filed (unless already submitted via the USPTO electronic filing system)
   • Amendments to the specification (if any)
   • New claims (if any)
   • Oath or declaration

Additionally, the continuation application must satisfy all the requirements of 35 U.S.C. 112 for the claimed subject matter.

To learn more:

• continuation application
• filing requirements
• patent application process
• USPTO

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.

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.

The method for making a specific reference to a prior-filed application depends on when the application was filed:

• For applications filed before September 16, 2012: The specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: The specific reference must be included in an ADS in compliance with 37 CFR 1.76.

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

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

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

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

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

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

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 presence of new matter in a continuation or divisional application can significantly affect its filing date. If new matter is found, the application may lose the benefit of the earlier filing date for the new subject matter.

According to MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

If the application is changed to a continuation-in-part, the new matter will have the filing date of the current application, while the previously disclosed matter retains the earlier filing date. This can have important implications for determining prior art and patent term.

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 Divisional application, visit: Divisional application.

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

The oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:

• For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
• For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.

The MPEP states:

For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.

This change reflects the America Invents Act’s modifications to U.S. patent law.

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

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

For more information on oath or declaration, visit: oath or declaration.

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

Micro entity status does not automatically carry over to continuation or divisional applications. A new certification is required for each new application:

1. A new assertion of entitlement to micro entity status is required for any continuation, divisional, or continuation-in-part application.
2. This applies even if micro entity status was properly claimed in the parent application.
3. The new certification must be filed in the continuing application.

The MPEP states: The refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), requires a new certification of entitlement to micro entity status in the continuing application.

It’s important to note that this requirement for a new certification applies specifically to micro entity status. For small entity status, a new assertion is also required, but the rules are slightly different.

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 Divisional application, visit: Divisional application.

The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:

• For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
• For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.

The MPEP states for post-AIA applications:

37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.

These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.

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

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

For more information on inventorship, visit: inventorship.

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

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

“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. 37 CFR 1.53(d)(4).”

If an inventor needs to be added or deleted, a request under 37 CFR 1.48 must be filed, along with the required fee. The examiner will notify the applicant if there are any inventorship discrepancies in the first Office action.

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

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

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

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

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

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

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

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

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

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

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

The disclosure requirements for claiming the benefit of provisional and nonprovisional applications differ in some aspects:

Provisional Applications (35 U.S.C. 119(e)):

For a nonprovisional application to claim the benefit of a provisional application:

• The written description and drawings (if any) of the provisional application must adequately support and enable the subject matter claimed in the nonprovisional application.
• A claim is not required in the provisional application.

Nonprovisional Applications (35 U.S.C. 120, 121, 365(c), or 386(c)):

For continuation and divisional applications:

• The disclosure must be the same as the prior-filed application.
• No new matter can be added.

For continuation-in-part applications:

• New matter may be included.
• Only claims supported by the prior-filed application are entitled to the earlier filing date.

As stated in MPEP 211.05:

“Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) except for the best mode requirement, in the earlier filed application.”

This requirement applies to both provisional and nonprovisional applications, ensuring that the earlier application provides proper support for the claimed invention.

To learn more:

• provisional application
• nonprovisional application
• continuation application
• divisional application
• continuation-in-part application

Small entity status does not automatically carry over from a parent application to a continuation application. The MPEP provides clear guidance on this matter:

If small entity status has been established in a parent application and is still proper and desired in a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.53(b), a new assertion as to the continued entitlement to small entity status under 37 CFR 1.27 is required.

This means that applicants must take specific steps to maintain small entity status in a continuation application:

1. Review Eligibility: Ensure that the applicant still qualifies for small entity status under the current rules.
2. New Assertion: File a new assertion of entitlement to small entity status in the continuation application.
3. Timing: This assertion should be made at the time of filing the continuation application or with the first fee payment.

It’s important to note that improperly claiming small entity status can have serious consequences, including the patent being held unenforceable. Therefore, applicants should carefully review their status before making a new assertion in a continuation application.

For micro entity status, the requirements are even more stringent:

The refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), requires a new certification of entitlement to micro entity status in the continuing application.

Applicants should be diligent in properly asserting and maintaining their entity status throughout the patent application process, including when filing continuation applications.

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

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

The treatment of new matter varies depending on the type of continuing application:

• Continuation and Divisional Applications: Must not contain any new matter. The disclosure must be the same as the prior application.
• Continuation-in-Part (CIP) Applications: Can include new matter not disclosed in the parent application.
• Continued Prosecution Applications (CPAs): Cannot contain new matter.

For continuation and divisional applications, the MPEP states: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.”

For CIPs, the MPEP notes: “A continuation-in-part is an application… repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.”

If new matter is found in a continuation or divisional application, the examiner will require the applicant to delete the benefit claim or change the application to a continuation-in-part. For CPAs, any new matter introduced will be required to be canceled.

It’s important to note that claims in a CIP application that rely on new matter will only be entitled to the filing date of the CIP, not the parent application’s filing date.

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 CPA, visit: CPA.

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

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

Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:

For applications filed on or after September 21, 2004:

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.

Additionally, for these applications:

For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).

For applications filed before September 21, 2004:

The incorporation by reference statement could appear in the application transmittal letter or in the specification.

It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:

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)).

Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.

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 incorporation by reference, visit: incorporation by reference.

Filing a Continued Prosecution Application (CPA) has implications for public access to the application. The MPEP states:

“A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file. 37 CFR 1.53(d)(6).”

This means:

• The CPA is considered a waiver of confidentiality for the entire application chain
• Members of the public who have access to one application in the chain may be given similar access to others
• This increased accessibility applies to both the prior application and any continuing applications

Applicants should be aware of this potential for increased public access when deciding to file a CPA.

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

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

Filing a continuation or divisional application under 37 CFR 1.53(b) does not automatically abandon the prior application. The status of the prior application depends on the actions taken by the applicant:

1. The prior application remains pending unless expressly abandoned.
2. To expressly abandon the prior application, a separate paper must be filed and signed in accordance with 37 CFR 1.138.
3. If a notice of allowance has been issued in the prior application, it can become abandoned by nonpayment of the issue fee.

The MPEP states: Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application. If the prior nonprovisional application is to be expressly abandoned, such a paper must be signed in accordance with 37 CFR 1.138.

It’s important to note that if the issue fee has been paid in the prior application, a petition to withdraw the application from issue must be filed before it can be abandoned, even if a continuing application has been filed.

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

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

Filing a continuation application under 37 CFR 1.53(b) does not automatically abandon the prior application. The MPEP clearly states:

Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application.

However, applicants have several options regarding the status of the prior application:

1. Express Abandonment: If desired, the prior application can be expressly abandoned. This requires a separate paper signed in accordance with 37 CFR 1.138.
2. Allowed Applications: If the prior application has received a notice of allowance, it can become abandoned by non-payment of the issue fee.
3. Continued Prosecution: The prior application can remain pending if the applicant wishes to continue prosecution.

It’s important to note that if an issue fee has been paid in the prior application, special procedures are required:

However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313).

Applicants should carefully consider their strategy for managing multiple related applications when filing a continuation.

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

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

Continued Prosecution Application (CPA) practice differs significantly for utility and plant applications compared to design applications. The key difference is:

CPA practice is not available for utility and plant applications filed on or after May 29, 2000.

As stated in the MPEP 201.06(d): “Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications in view of the eighteen-month publication of applications under 35 U.S.C. 122(b). A request for a CPA filed on or after July 14, 2003 in a utility or plant application is improper and will not be treated as a CPA.”

For utility and plant applications, applicants should instead consider filing:

• A request for continued examination (RCE) under 37 CFR 1.114
• A continuation or divisional application under 37 CFR 1.53(b)

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

For more information on CPA, visit: CPA.

For more information on RCE, visit: RCE.

Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant.

The MPEP ¶ 2.10.01 instructs examiners:

“In bracket 1, provide an example of the matter not disclosed in the prior-filed application.”

This means the examiner must specifically point out the new matter found in the application, allowing the applicant to understand and address the issue.

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.

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

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

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

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

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

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

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

A terminal disclaimer filed in a parent application automatically carries over to a Continued Prosecution Application (CPA). The MPEP clearly states:

“A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.”

However, if an applicant does not want the terminal disclaimer to apply to the CPA, they must take specific action:

“If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.”

It’s important to note that such a petition must be filed and granted before the patent issues to be effective.

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

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

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

A Continued Prosecution Application (CPA) and a continuation application are both ways to continue prosecution of a patent application, but they have key differences:

• CPA: Only available for design applications filed before May 29, 2000, and for plant applications. It continues examination of the same application.
• Continuation: Available for all types of applications and creates a new application that claims priority to the parent application.

The MPEP ¶ 2.34 highlights a crucial distinction in how they 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 a CPA, the mere act of filing establishes the reference to the prior application. In contrast, a continuation application typically requires an explicit reference to the parent application in the specification.

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

For more information on CPA, visit: CPA.

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

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

The MPEP specifically notes:

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

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

To learn more:

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

While both continuation and continuation-in-part (CIP) applications are types of continuing applications, they have a key difference in terms of their disclosure. According to the MPEP:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

The main differences are:

• Continuation: Contains the same disclosure as the parent application without any new matter.
• Continuation-in-part (CIP): May include the disclosure from the parent application plus additional new matter.

This distinction is crucial because it affects the priority date for different claims in the application. In a continuation, all claims are entitled to the parent’s filing date. In a CIP, only claims supported by the parent application get the benefit of the earlier filing date; new matter gets the filing date of the CIP.

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

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

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

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

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

To learn more:

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

A continuation-in-part (CIP) application differs from a regular continuation application in that it adds new disclosure not present in the prior application. While both types of applications repeat substantial portions of a prior application, only a CIP introduces new subject matter.

The MPEP states: This application repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application. (MPEP ¶ 2.06) This additional disclosure is what sets a CIP apart from a standard continuation.

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

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

37 CFR 1.63(d) provides a simplified process for submitting an oath or declaration in a divisional application. The MPEP states:

’37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing a signed oath or declaration.’

This means that if the divisional application is filed by the same inventor(s) as the parent application, and there’s no new matter added, the oath or declaration from the parent application can be used for the divisional application. This simplifies the filing process and reduces paperwork.

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

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

For more information on oath or declaration, visit: oath or declaration.

Claiming the benefit of a prior application in a continuation is a crucial step that must be done correctly. The MPEP 201.07 provides specific guidance:

If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.

To properly claim the benefit:

1. Include a reference to the prior application in the Application Data Sheet (ADS)
2. Specify the application number, filing date, and relationship (continuation) of the applications
3. Ensure the claim is made within the time period set in 37 CFR 1.78
4. Pay any required fees

Failure to properly claim benefit can result in loss of the earlier filing date, so it’s crucial to follow these steps carefully.

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

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

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

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

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

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

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

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

Continuation, divisional, and continuation-in-part (CIP) applications are all types of continuing applications, but they have key differences:

• Continuation application: Discloses and claims only subject matter disclosed in the prior application. No new matter is added.
• Divisional application: Results from a restriction requirement in the parent application. Claims an independent and distinct invention carved out of the parent application. No new matter is added.
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application and adds matter not disclosed in the prior application (i.e., new matter is added).

As stated in the MPEP regarding continuation-in-part applications:

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.

All three types of applications must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) and comply with other requirements set forth in 37 CFR 1.78.

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 Divisional application, visit: Divisional application.

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

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

For applications filed on or after September 16, 2012, an applicant can file a continuation or divisional application using a copy of an oath or declaration from a prior application if:

• The oath or declaration complies with 35 U.S.C. 115 as revised effective September 16, 2012
• It was executed by or with respect to the inventor in the earlier-filed application
• A copy of the oath, declaration, or substitute statement showing the signature or an indication it was executed is submitted in the continuing application

As stated in the MPEP: For applications filed on or after September 16, 2012, the filing of a continuing application by all or by fewer than all of the inventors named in a prior application without a newly executed oath or declaration is permitted provided that an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.

It’s important to note that the oath or declaration must meet the current requirements, even if the prior application was filed before September 16, 2012.

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

For more information on declaration, visit: declaration.

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

For more information on oath, visit: oath.

Preliminary amendments in continuation applications are subject to specific rules and considerations. The MPEP provides guidance on this topic:

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.

This means that preliminary amendments submitted with the application are treated as part of the original filing. However, there are important requirements and considerations:

1. Compliance with 37 CFR 1.121:
   

   Amendments must be filed in compliance with the requirements of 37 CFR 1.121 (e.g., the amendment must include a complete claim listing whenever a claim is added, canceled, or amended).

2. Possible Requirement for Substitute Specification:
   

   The Office may require a substitute specification for preliminary amendments.

3. Classification and Assignment:
   

   Applications should be classified and assigned to the proper Technology Center (TC) by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment.

4. New Matter Considerations: If the preliminary amendment introduces new matter, it may affect the application’s status as a continuation. 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.

Applicants should carefully consider the content and timing of preliminary amendments in continuation applications to ensure compliance with USPTO requirements and to maintain the desired relationship with the parent application.

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

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

The treatment of continuation or divisional applications filed under former 37 CFR 1.62 depends on the filing date of the original application:

• For applications filed on or after June 8, 1995: Requests filed on or after December 1, 1997, are treated as requests for continued examination (RCE) under 37 CFR 1.114.
• For applications filed before June 8, 1995: Requests filed on or after December 1, 1997, are treated as improper applications.

As stated in the MPEP: A request for a continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, in an application that was filed on or after June 8, 1995, will be treated as a request for continued examination (RCE) under 37 CFR 1.114, see MPEP 706.07(h), paragraph IV.

To learn more:

• Continuation Application
• Divisional Application
• RCE
• Request for Continued Examination

The treatment of continuation or divisional applications filed under former 37 CFR 1.62 depends on the filing date of the original application:

• For applications filed on or after June 8, 1995: “A request for a continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, in an application that was filed on or after June 8, 1995, will be treated as a request for continued examination (RCE) under 37 CFR 1.114.” This means these applications are now processed under the RCE procedure.
• For applications filed before June 8, 1995: Requests for continuation or divisional applications filed on or after December 1, 1997, will be treated as improper applications.

For more details on RCE procedures, refer to MPEP 706.07(h), paragraph IV.

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

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

For more information on RCE, visit: RCE.

For applications filed on or after June 8, 1995, continuation or divisional applications filed under former 37 CFR 1.62 on or after December 1, 1997, are treated differently. The MPEP states: “A request for a continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, in an application that was filed on or after June 8, 1995, will be treated as a request for continued examination (RCE) under 37 CFR 1.114.” This means such applications are now processed under the RCE procedure rather than the former File Wrapper Continuing Procedure.

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

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

For more information on RCE, visit: RCE.

According to the MPEP, A continuation or divisional application filed under 37 CFR 1.60 on or after December 1, 1997, will automatically be treated as an application filed under 37 CFR 1.53(b). This means that any continuation or divisional application filed after this date is processed under the new regulations, specifically 37 CFR 1.53(b), regardless of whether the applicant intended to file under the old 37 CFR 1.60 procedure.

To learn more:

• continuation application
• divisional application
• 37 CFR 1.53(b)

To learn more:

• 37 CFR 1.53(b)

Can the specification be omitted when filing a divisional or continuation application?

No, the specification cannot be omitted when filing a divisional or continuation application. However, the process is simplified. According to MPEP 201.06(c):

“A new specification (including the claims) may be submitted in a divisional application filed under 37 CFR 1.53(b). In such a case, the applicant must file a copy of the prior application as filed or a new specification.”

This means that while you must include a specification, you have two options:

• Submit a copy of the prior application’s specification
• Submit a new specification tailored to the divisional or continuation application

If you choose to submit a copy of the prior application, it’s important to ensure that it properly supports the claims in the new application. Any new matter introduced in a continuation application may result in a rejection under 35 U.S.C. 112(a).

Remember, the claims are considered part of the specification, so you must include claims with your application, whether you’re using the prior specification or submitting a new one.

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

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

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

For more information on USPTO, visit: USPTO.

Can new matter be added to a continuation application?

No, new matter cannot be added to a continuation application. A continuation application must disclose and claim only subject matter disclosed in the prior application.

As stated in MPEP 201.07: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.” This means that all claims in a continuation application must find support in the original disclosure of the parent application.

If an applicant wishes to add new matter, they would need to file a continuation-in-part (CIP) application instead, which allows for the addition of new subject matter while still claiming the benefit of the earlier filing date for the previously disclosed material.

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

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

Can I file a priority claim in a continuing application?

Yes, you can file a priority claim in a continuing application, but there are specific requirements and deadlines to consider. According to MPEP 214.01, “In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.” This means that even in a continuing application, you must adhere to the time limits for filing the priority claim. It’s important to note that the priority claim must be made in each continuing application; a priority claim in a parent application does not automatically carry over to child applications.

Yes, you can file a priority claim in a continuation or divisional application, but there are specific rules you must follow. According to MPEP 214.01:

‘In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the four-month period set forth in 37 CFR 1.55(d)(1).’

This means:

• The priority claim must be made while the continuation or divisional application is still pending (not abandoned or issued).
• You have a four-month window from the actual filing date of the continuation or divisional application to make the priority claim.
• The priority claim should refer back to the foreign application through the parent application(s).

It’s important to note that the continuation or divisional application must have copendency with the parent application to maintain the priority chain. Always consult the latest version of the MPEP and consider seeking advice from a patent attorney to ensure compliance with current USPTO rules.

To learn more:

• continuation application
• divisional application
• priority claim
• copendency

No, you cannot amend the specification of a Continued Prosecution Application (CPA) to refer to it as a continuation or divisional application. According to MPEP § 201.06(d):

“The amendment filed [date] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [continuation/divisional] application of Application No. [X] has not been entered. 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 request itself serves as the required reference to the prior application, and no additional amendment to the specification is necessary or allowed.

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.

Yes, according to MPEP ¶ 2.05, an application can potentially be classified as both a continuation and a division. The MPEP states:

“Accordingly, this application may constitute a continuation or division.” (MPEP ¶ 2.05)

This dual classification possibility arises because:

• A continuation application discloses and claims only subject matter from the prior application
• A divisional application is filed as a result of a restriction requirement in the prior application
• In some cases, an application may meet both criteria

The final determination of whether the application is a continuation, division, or both will depend on the specific circumstances of the application and its relationship to the prior application. The examiner will make this determination during the examination process.

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

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

While amendments can be filed with a Continued Prosecution Application (CPA) request, there are important considerations and limitations. 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. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application.”

Additionally:

• Preliminary amendments filed with a CPA are generally entered
• Applicants are encouraged to file any amendments at the time of filing the CPA to avoid potential delays
• Any new matter introduced will be required to be canceled
• Claims relying on new matter may be rejected under 35 U.S.C. 112(a)

The MPEP advises: “Applicants are strongly encouraged to file any preliminary amendment in a CPA at the time the CPA is filed. See 37 CFR 1.115 and MPEP § 714.03(a).”

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

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

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

Can a priority claim be made in a continuation or divisional application?

Yes, a priority claim can be made in a continuation or divisional application. However, there are specific requirements and time limits to consider. According to MPEP 214.01:

“In the case of a continuation or divisional application, the claim for priority must be made during the pendency of the application.”

This means:

• The priority claim must be filed within the later of four months from the actual filing date of the continuation or divisional application or sixteen months from the filing date of the prior foreign application.
• If the claim is filed outside this period, it will be considered untimely and require a petition under 37 CFR 1.55(e).
• The priority claim should reference the parent application if it properly claimed the benefit of the foreign application.

It’s important to note that the continuation or divisional application must be filed within 12 months of the foreign application’s filing date (or 6 months for design applications) to be eligible for priority.

Yes, a divisional or continuation application can claim benefit from multiple prior applications. The MPEP 201.06(c) states:

‘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 copy of the prior application as filed; and (B) a new specification, claim or claims and drawings, where applicable.’

This provision allows for claiming benefit from multiple prior applications by following the correct procedures. It’s crucial to ensure that the chain of priority is properly maintained and that all necessary documents and declarations are filed.

To learn more:

• divisional application
• continuation application
• multiple prior applications
• benefit claim
• 35 U.S.C. 111(a)
• 37 CFR 1.53(b)

To learn more:

• 35 U.S.C. 111(a)
• 37 CFR 1.53(b)

No, a continuation application cannot include new matter. As stated in MPEP 201.07:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

This means that the continuation application must be based entirely on the disclosure of the prior-filed application. Any new subject matter would need to be filed as a continuation-in-part (CIP) application instead of a standard continuation application.

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

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

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

Yes, a continuation application can claim the benefit of multiple parent applications, provided certain conditions are met. According to MPEP 201.07:

‘A continuation application may be filed under 35 U.S.C. 111(a) or 111(b) or 365(c) or filed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.53(b) or 1.53(d) as a continuation of prior applications, claiming the benefit of those applications under 35 U.S.C. 120, 121, 365(c), or 386(c).’

This means that a continuation application can claim the benefit of:

• Multiple earlier-filed nonprovisional applications
• Earlier-filed provisional applications
• Earlier-filed international applications designating the United States

However, it’s important to note that the continuation must satisfy the requirements for claiming benefit, including proper copendency and cross-referencing of the prior applications.

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

Can a continuation application claim the benefit of a provisional application?

Yes, a continuation application can claim the benefit of a provisional application, provided certain conditions are met. The MPEP 201.07 states:

‘A continuation application may be filed under 35 U.S.C. 111(a) or 363 while the prior application is pending, or it may be filed as an RCE under 37 CFR 1.114 of the prior application.’

To claim the benefit of a provisional application:

• The continuation must be filed within 12 months of the provisional filing date
• The provisional application must provide adequate support for the claims in the continuation
• A specific reference to the provisional application must be made in the continuation

It’s important to note that while a continuation can claim benefit from a provisional, it must have at least one intervening nonprovisional application in the chain, as continuations are based on nonprovisional applications.

To learn more:

• continuation application
• provisional application
• patent benefit claims
• MPEP

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

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

This means that:

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

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

To learn more:

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

To learn more:

• patent priority

Yes, a continuation application can be filed after the parent application is granted or abandoned, but there are timing restrictions. The MPEP states:

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.

However, it’s important to note:

• For standard continuation applications under 37 CFR 1.53(b), they must be filed before the patenting, abandonment, or termination of proceedings on the earlier application.
• For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), they 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.

Always consult with a patent attorney to ensure proper timing and procedures are followed.

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

For more information on CPA, visit: CPA.

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

Can a continuation application add new matter to the original disclosure?

No, a continuation application cannot add new matter to the original disclosure. This is a fundamental characteristic 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.’

This means that the continuation must rely entirely on the disclosure of the parent application. Any attempt to introduce new matter would result in the application being treated as a continuation-in-part (CIP) rather than a true continuation. It’s crucial for inventors and patent practitioners to understand this limitation when considering filing strategy.

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

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

Yes, certain applications are still processed under former 37 CFR 1.62. Specifically, all continuation, divisional, and continuation-in-part (CIP) applications filed under former 37 CFR 1.62 prior to December 1, 1997, continue to be processed and examined under the procedures set forth in that regulation.

The MPEP clarifies this point: 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.

For more detailed information on the practice and procedure under former 37 CFR 1.62, the MPEP directs readers to consult MPEP § 201.06(b) in the MPEP 8th Edition, Rev. 1 (February 2003), which is available on the USPTO website.

To learn more:

• 37 CFR 1.62
• Continuation Application
• Divisional Application
• CIP Application
• Patent Examination Procedures

To learn more:

• 37 CFR 1.62

Are continuation applications considered national applications?

Yes, continuation applications are considered national applications. They are a type of nonprovisional application that continues the examination process of a previously filed application.

The MPEP 201.01 states: ‘National applications include original (nonprovisional), reissue, design, plant, and provisional applications.’ While continuation applications are not explicitly mentioned in this list, they fall under the category of nonprovisional applications.

Continuation applications allow applicants to pursue additional claims based on the disclosure of a parent application. They are filed before the parent application is abandoned or patented and claim the benefit of the parent application’s filing date.

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

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

For more information on USPTO, visit: USPTO.

Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.

Key points to note:

1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.

2. Filing a continuation or CIP does not automatically abandon the parent application.

3. Prosecution can continue in both the parent and child applications simultaneously.

The MPEP states: “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.”

However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.

To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:

1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.

2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.

3. The application must have at least one common inventor with the prior application.

4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”

Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements:

1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application.

2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.

The MPEP states for continuation applications: “The inventorship in the continuation application must include at least one inventor named in the prior-filed application.”

For CIP applications, the MPEP notes: “A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”

Any changes in inventorship must be properly documented and may require a request under 37 CFR 1.48.

Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:

1. Continuations: A design application can be a continuation of a prior design application.

2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.

3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.

The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”

It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.

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.

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.

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.

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.

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 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.

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.

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.

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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.

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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.

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.

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Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.

Key points to note:

1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.

2. Filing a continuation or CIP does not automatically abandon the parent application.

3. Prosecution can continue in both the parent and child applications simultaneously.

The MPEP states: “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.”

However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.

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 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.

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.

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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.

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.

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 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.

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.

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.

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.

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

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.

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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.

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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.

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

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

To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met:

1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.

2. The application must contain or be amended to contain a specific reference to the prior application. For applications filed on or after September 16, 2012, this reference must be in an application data sheet.

3. The application must have at least one common inventor with the prior application.

4. The application must comply with the requirements of 35 U.S.C. 120 and 37 CFR 1.78.

As stated in the MPEP: “An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.”

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.

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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.

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

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.

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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 oath or declaration requirements for continuation applications differ significantly depending on whether they were filed before or after September 16, 2012:

• For applications filed on or after September 16, 2012: The inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. It must state that the inventor (1) is an original inventor of the claimed invention, and (2) authorized the filing of the patent application for the claimed invention. It must also contain an acknowledgment of penalties for willful false statements.
• For applications filed before September 16, 2012: Applicants could file either a newly executed oath or declaration, or a copy of the oath or declaration from the prior application, along with a statement requesting deletion of names of non-inventors for the continuation application.

The MPEP states:

For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet.

This change reflects the America Invents Act’s modifications to U.S. patent law.

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

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Micro entity status does not automatically carry over to continuation or divisional applications. A new certification is required for each new application:

1. A new assertion of entitlement to micro entity status is required for any continuation, divisional, or continuation-in-part application.
2. This applies even if micro entity status was properly claimed in the parent application.
3. The new certification must be filed in the continuing application.

The MPEP states: The refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), requires a new certification of entitlement to micro entity status in the continuing application.

It’s important to note that this requirement for a new certification applies specifically to micro entity status. For small entity status, a new assertion is also required, but the rules are slightly different.

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

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The inventorship requirements for continuation applications differ based on whether they were filed before or after September 16, 2012:

• For applications filed on or after September 16, 2012: The inventorship is determined by the information provided in the application data sheet (ADS) filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If no ADS is filed, the inventorship is set by the copy of the inventor’s oath or declaration from the earlier-filed application, unless accompanied by a statement signed under 37 CFR 1.33(b) specifying the correct inventorship.
• For applications filed before September 16, 2012: The inventorship was generally set by the copy of the executed oath or declaration from the prior application, unless accompanied by a statement requesting deletion of the names of persons who are not inventors in the continuation application.

The MPEP states for post-AIA applications:

37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.

These changes reflect the America Invents Act’s modifications to U.S. patent law, simplifying the process for correcting inventorship in many cases.

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

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

“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. 37 CFR 1.53(d)(4).”

If an inventor needs to be added or deleted, a request under 37 CFR 1.48 must be filed, along with the required fee. The examiner will notify the applicant if there are any inventorship discrepancies in the first Office action.

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

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

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

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

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

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

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

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

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

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

Small entity status does not automatically carry over from a parent application to a continuation application. The MPEP provides clear guidance on this matter:

If small entity status has been established in a parent application and is still proper and desired in a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.53(b), a new assertion as to the continued entitlement to small entity status under 37 CFR 1.27 is required.

This means that applicants must take specific steps to maintain small entity status in a continuation application:

1. Review Eligibility: Ensure that the applicant still qualifies for small entity status under the current rules.
2. New Assertion: File a new assertion of entitlement to small entity status in the continuation application.
3. Timing: This assertion should be made at the time of filing the continuation application or with the first fee payment.

It’s important to note that improperly claiming small entity status can have serious consequences, including the patent being held unenforceable. Therefore, applicants should carefully review their status before making a new assertion in a continuation application.

For micro entity status, the requirements are even more stringent:

The refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), requires a new certification of entitlement to micro entity status in the continuing application.

Applicants should be diligent in properly asserting and maintaining their entity status throughout the patent application process, including when filing continuation applications.

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

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

The treatment of new matter varies depending on the type of continuing application:

• Continuation and Divisional Applications: Must not contain any new matter. The disclosure must be the same as the prior application.
• Continuation-in-Part (CIP) Applications: Can include new matter not disclosed in the parent application.
• Continued Prosecution Applications (CPAs): Cannot contain new matter.

For continuation and divisional applications, the MPEP states: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.”

For CIPs, the MPEP notes: “A continuation-in-part is an application… repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.”

If new matter is found in a continuation or divisional application, the examiner will require the applicant to delete the benefit claim or change the application to a continuation-in-part. For CPAs, any new matter introduced will be required to be canceled.

It’s important to note that claims in a CIP application that rely on new matter will only be entitled to the filing date of the CIP, not the parent application’s filing date.

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 CPA, visit: CPA.

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

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

Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:

For applications filed on or after September 21, 2004:

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.

Additionally, for these applications:

For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).

For applications filed before September 21, 2004:

The incorporation by reference statement could appear in the application transmittal letter or in the specification.

It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:

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)).

Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.

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

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

Filing a Continued Prosecution Application (CPA) has implications for public access to the application. The MPEP states:

“A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file. 37 CFR 1.53(d)(6).”

This means:

• The CPA is considered a waiver of confidentiality for the entire application chain
• Members of the public who have access to one application in the chain may be given similar access to others
• This increased accessibility applies to both the prior application and any continuing applications

Applicants should be aware of this potential for increased public access when deciding to file a CPA.

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

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

Filing a continuation or divisional application under 37 CFR 1.53(b) does not automatically abandon the prior application. The status of the prior application depends on the actions taken by the applicant:

1. The prior application remains pending unless expressly abandoned.
2. To expressly abandon the prior application, a separate paper must be filed and signed in accordance with 37 CFR 1.138.
3. If a notice of allowance has been issued in the prior application, it can become abandoned by nonpayment of the issue fee.

The MPEP states: Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application. If the prior nonprovisional application is to be expressly abandoned, such a paper must be signed in accordance with 37 CFR 1.138.

It’s important to note that if the issue fee has been paid in the prior application, a petition to withdraw the application from issue must be filed before it can be abandoned, even if a continuing application has been filed.

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

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

Filing a continuation application under 37 CFR 1.53(b) does not automatically abandon the prior application. The MPEP clearly states:

Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application.

However, applicants have several options regarding the status of the prior application:

1. Express Abandonment: If desired, the prior application can be expressly abandoned. This requires a separate paper signed in accordance with 37 CFR 1.138.
2. Allowed Applications: If the prior application has received a notice of allowance, it can become abandoned by non-payment of the issue fee.
3. Continued Prosecution: The prior application can remain pending if the applicant wishes to continue prosecution.

It’s important to note that if an issue fee has been paid in the prior application, special procedures are required:

However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313).

Applicants should carefully consider their strategy for managing multiple related applications when filing a continuation.

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

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

Continued Prosecution Application (CPA) practice differs significantly for utility and plant applications compared to design applications. The key difference is:

CPA practice is not available for utility and plant applications filed on or after May 29, 2000.

As stated in the MPEP 201.06(d): “Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications in view of the eighteen-month publication of applications under 35 U.S.C. 122(b). A request for a CPA filed on or after July 14, 2003 in a utility or plant application is improper and will not be treated as a CPA.”

For utility and plant applications, applicants should instead consider filing:

• A request for continued examination (RCE) under 37 CFR 1.114
• A continuation or divisional application under 37 CFR 1.53(b)

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

For more information on CPA, visit: CPA.

For more information on RCE, visit: RCE.

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

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

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

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

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

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

A terminal disclaimer filed in a parent application automatically carries over to a Continued Prosecution Application (CPA). The MPEP clearly states:

“A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.”

However, if an applicant does not want the terminal disclaimer to apply to the CPA, they must take specific action:

“If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.”

It’s important to note that such a petition must be filed and granted before the patent issues to be effective.

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

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

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

A Continued Prosecution Application (CPA) and a continuation application are both ways to continue prosecution of a patent application, but they have key differences:

• CPA: Only available for design applications filed before May 29, 2000, and for plant applications. It continues examination of the same application.
• Continuation: Available for all types of applications and creates a new application that claims priority to the parent application.

The MPEP ¶ 2.34 highlights a crucial distinction in how they 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 a CPA, the mere act of filing establishes the reference to the prior application. In contrast, a continuation application typically requires an explicit reference to the parent application in the specification.

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

For more information on CPA, visit: CPA.

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

While both continuation and continuation-in-part (CIP) applications are types of continuing applications, they have a key difference in terms of their disclosure. According to the MPEP:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

The main differences are:

• Continuation: Contains the same disclosure as the parent application without any new matter.
• Continuation-in-part (CIP): May include the disclosure from the parent application plus additional new matter.

This distinction is crucial because it affects the priority date for different claims in the application. In a continuation, all claims are entitled to the parent’s filing date. In a CIP, only claims supported by the parent application get the benefit of the earlier filing date; new matter gets the filing date of the CIP.

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

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

A continuation-in-part (CIP) application differs from a regular continuation application in that it adds new disclosure not present in the prior application. While both types of applications repeat substantial portions of a prior application, only a CIP introduces new subject matter.

The MPEP states: This application repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application. (MPEP ¶ 2.06) This additional disclosure is what sets a CIP apart from a standard continuation.

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

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

37 CFR 1.63(d) provides a simplified process for submitting an oath or declaration in a divisional application. The MPEP states:

’37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing a signed oath or declaration.’

This means that if the divisional application is filed by the same inventor(s) as the parent application, and there’s no new matter added, the oath or declaration from the parent application can be used for the divisional application. This simplifies the filing process and reduces paperwork.

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

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

For more information on oath or declaration, visit: oath or declaration.

Claiming the benefit of a prior application in a continuation is a crucial step that must be done correctly. The MPEP 201.07 provides specific guidance:

If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§1.76(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.

To properly claim the benefit:

1. Include a reference to the prior application in the Application Data Sheet (ADS)
2. Specify the application number, filing date, and relationship (continuation) of the applications
3. Ensure the claim is made within the time period set in 37 CFR 1.78
4. Pay any required fees

Failure to properly claim benefit can result in loss of the earlier filing date, so it’s crucial to follow these steps carefully.

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

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

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

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

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

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

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

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

Continuation, divisional, and continuation-in-part (CIP) applications are all types of continuing applications, but they have key differences:

• Continuation application: Discloses and claims only subject matter disclosed in the prior application. No new matter is added.
• Divisional application: Results from a restriction requirement in the parent application. Claims an independent and distinct invention carved out of the parent application. No new matter is added.
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application and adds matter not disclosed in the prior application (i.e., new matter is added).

As stated in the MPEP regarding continuation-in-part applications:

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.

All three types of applications must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) and comply with other requirements set forth in 37 CFR 1.78.

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 Divisional application, visit: Divisional application.

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

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

For applications filed on or after September 16, 2012, an applicant can file a continuation or divisional application using a copy of an oath or declaration from a prior application if:

• The oath or declaration complies with 35 U.S.C. 115 as revised effective September 16, 2012
• It was executed by or with respect to the inventor in the earlier-filed application
• A copy of the oath, declaration, or substitute statement showing the signature or an indication it was executed is submitted in the continuing application

As stated in the MPEP: For applications filed on or after September 16, 2012, the filing of a continuing application by all or by fewer than all of the inventors named in a prior application without a newly executed oath or declaration is permitted provided that an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.

It’s important to note that the oath or declaration must meet the current requirements, even if the prior application was filed before September 16, 2012.

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

For more information on declaration, visit: declaration.

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

For more information on oath, visit: oath.

Preliminary amendments in continuation applications are subject to specific rules and considerations. The MPEP provides guidance on this topic:

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.

This means that preliminary amendments submitted with the application are treated as part of the original filing. However, there are important requirements and considerations:

1. Compliance with 37 CFR 1.121:
   

   Amendments must be filed in compliance with the requirements of 37 CFR 1.121 (e.g., the amendment must include a complete claim listing whenever a claim is added, canceled, or amended).

2. Possible Requirement for Substitute Specification:
   

   The Office may require a substitute specification for preliminary amendments.

3. Classification and Assignment:
   

   Applications should be classified and assigned to the proper Technology Center (TC) by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment.

4. New Matter Considerations: If the preliminary amendment introduces new matter, it may affect the application’s status as a continuation. 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.

Applicants should carefully consider the content and timing of preliminary amendments in continuation applications to ensure compliance with USPTO requirements and to maintain the desired relationship with the parent application.

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

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

The treatment of continuation or divisional applications filed under former 37 CFR 1.62 depends on the filing date of the original application:

• For applications filed on or after June 8, 1995: “A request for a continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, in an application that was filed on or after June 8, 1995, will be treated as a request for continued examination (RCE) under 37 CFR 1.114.” This means these applications are now processed under the RCE procedure.
• For applications filed before June 8, 1995: Requests for continuation or divisional applications filed on or after December 1, 1997, will be treated as improper applications.

For more details on RCE procedures, refer to MPEP 706.07(h), paragraph IV.

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

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

For more information on RCE, visit: RCE.

For applications filed on or after June 8, 1995, continuation or divisional applications filed under former 37 CFR 1.62 on or after December 1, 1997, are treated differently. The MPEP states: “A request for a continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, in an application that was filed on or after June 8, 1995, will be treated as a request for continued examination (RCE) under 37 CFR 1.114.” This means such applications are now processed under the RCE procedure rather than the former File Wrapper Continuing Procedure.

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

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

For more information on RCE, visit: RCE.

Can the specification be omitted when filing a divisional or continuation application?

No, the specification cannot be omitted when filing a divisional or continuation application. However, the process is simplified. According to MPEP 201.06(c):

“A new specification (including the claims) may be submitted in a divisional application filed under 37 CFR 1.53(b). In such a case, the applicant must file a copy of the prior application as filed or a new specification.”

This means that while you must include a specification, you have two options:

• Submit a copy of the prior application’s specification
• Submit a new specification tailored to the divisional or continuation application

If you choose to submit a copy of the prior application, it’s important to ensure that it properly supports the claims in the new application. Any new matter introduced in a continuation application may result in a rejection under 35 U.S.C. 112(a).

Remember, the claims are considered part of the specification, so you must include claims with your application, whether you’re using the prior specification or submitting a new one.

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

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

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

For more information on USPTO, visit: USPTO.

Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements:

1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application.

2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.

The MPEP states for continuation applications: “The inventorship in the continuation application must include at least one inventor named in the prior-filed application.”

For CIP applications, the MPEP notes: “A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”

Any changes in inventorship must be properly documented and may require a request under 37 CFR 1.48.

Can new matter be added to a continuation application?

No, new matter cannot be added to a continuation application. A continuation application must disclose and claim only subject matter disclosed in the prior application.

As stated in MPEP 201.07: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.” This means that all claims in a continuation application must find support in the original disclosure of the parent application.

If an applicant wishes to add new matter, they would need to file a continuation-in-part (CIP) application instead, which allows for the addition of new subject matter while still claiming the benefit of the earlier filing date for the previously disclosed material.

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

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

No, you cannot amend the specification of a Continued Prosecution Application (CPA) to refer to it as a continuation or divisional application. According to MPEP § 201.06(d):

“The amendment filed [date] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [continuation/divisional] application of Application No. [X] has not been entered. 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 request itself serves as the required reference to the prior application, and no additional amendment to the specification is necessary or allowed.

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.

Yes, according to MPEP ¶ 2.05, an application can potentially be classified as both a continuation and a division. The MPEP states:

“Accordingly, this application may constitute a continuation or division.” (MPEP ¶ 2.05)

This dual classification possibility arises because:

• A continuation application discloses and claims only subject matter from the prior application
• A divisional application is filed as a result of a restriction requirement in the prior application
• In some cases, an application may meet both criteria

The final determination of whether the application is a continuation, division, or both will depend on the specific circumstances of the application and its relationship to the prior application. The examiner will make this determination during the examination process.

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

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

While amendments can be filed with a Continued Prosecution Application (CPA) request, there are important considerations and limitations. 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. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application.”

Additionally:

• Preliminary amendments filed with a CPA are generally entered
• Applicants are encouraged to file any amendments at the time of filing the CPA to avoid potential delays
• Any new matter introduced will be required to be canceled
• Claims relying on new matter may be rejected under 35 U.S.C. 112(a)

The MPEP advises: “Applicants are strongly encouraged to file any preliminary amendment in a CPA at the time the CPA is filed. See 37 CFR 1.115 and MPEP § 714.03(a).”

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

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

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

Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:

1. Continuations: A design application can be a continuation of a prior design application.

2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.

3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.

The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”

It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.

No, a continuation application cannot include new matter. As stated in MPEP 201.07:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

This means that the continuation application must be based entirely on the disclosure of the prior-filed application. Any new subject matter would need to be filed as a continuation-in-part (CIP) application instead of a standard continuation application.

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

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

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

Yes, a continuation application can claim the benefit of multiple parent applications, provided certain conditions are met. According to MPEP 201.07:

‘A continuation application may be filed under 35 U.S.C. 111(a) or 111(b) or 365(c) or filed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.53(b) or 1.53(d) as a continuation of prior applications, claiming the benefit of those applications under 35 U.S.C. 120, 121, 365(c), or 386(c).’

This means that a continuation application can claim the benefit of:

• Multiple earlier-filed nonprovisional applications
• Earlier-filed provisional applications
• Earlier-filed international applications designating the United States

However, it’s important to note that the continuation must satisfy the requirements for claiming benefit, including proper copendency and cross-referencing of the prior applications.

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

Yes, a continuation application can be filed after the parent application is granted or abandoned, but there are timing restrictions. The MPEP states:

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.

However, it’s important to note:

• For standard continuation applications under 37 CFR 1.53(b), they must be filed before the patenting, abandonment, or termination of proceedings on the earlier application.
• For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), they 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.

Always consult with a patent attorney to ensure proper timing and procedures are followed.

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

Can a continuation application add new matter to the original disclosure?

No, a continuation application cannot add new matter to the original disclosure. This is a fundamental characteristic 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.’

This means that the continuation must rely entirely on the disclosure of the parent application. Any attempt to introduce new matter would result in the application being treated as a continuation-in-part (CIP) rather than a true continuation. It’s crucial for inventors and patent practitioners to understand this limitation when considering filing strategy.

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

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

Are continuation applications considered national applications?

Yes, continuation applications are considered national applications. They are a type of nonprovisional application that continues the examination process of a previously filed application.

The MPEP 201.01 states: ‘National applications include original (nonprovisional), reissue, design, plant, and provisional applications.’ While continuation applications are not explicitly mentioned in this list, they fall under the category of nonprovisional applications.

Continuation applications allow applicants to pursue additional claims based on the disclosure of a parent application. They are filed before the parent application is abandoned or patented and claim the benefit of the parent application’s filing date.

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

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

For more information on USPTO, visit: USPTO.

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

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.

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

The method for making a specific reference to a prior-filed application depends on when the application was filed:

• For applications filed before September 16, 2012: The specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76.
• For applications filed on or after September 16, 2012: The specific reference must be included in an ADS in compliance with 37 CFR 1.76.

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

It’s important to note that for continued prosecution applications (CPAs) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the specification or ADS is not required and may not be made. For these applications, The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA.

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

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

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

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

The presence of new matter in a continuation or divisional application can significantly affect its filing date. If new matter is found, the application may lose the benefit of the earlier filing date for the new subject matter.

According to MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

If the application is changed to a continuation-in-part, the new matter will have the filing date of the current application, while the previously disclosed matter retains the earlier filing date. This can have important implications for determining prior art and patent term.

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 Divisional application, visit: Divisional application.

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

Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant.

The MPEP ¶ 2.10.01 instructs examiners:

“In bracket 1, provide an example of the matter not disclosed in the prior-filed application.”

This means the examiner must specifically point out the new matter found in the application, allowing the applicant to understand and address the issue.

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.

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

Can I file a priority claim in a continuing application?

Yes, you can file a priority claim in a continuing application, but there are specific requirements and deadlines to consider. According to MPEP 214.01, “In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.” This means that even in a continuing application, you must adhere to the time limits for filing the priority claim. It’s important to note that the priority claim must be made in each continuing application; a priority claim in a parent application does not automatically carry over to child applications.

Can a priority claim be made in a continuation or divisional application?

Yes, a priority claim can be made in a continuation or divisional application. However, there are specific requirements and time limits to consider. According to MPEP 214.01:

“In the case of a continuation or divisional application, the claim for priority must be made during the pendency of the application.”

This means:

• The priority claim must be filed within the later of four months from the actual filing date of the continuation or divisional application or sixteen months from the filing date of the prior foreign application.
• If the claim is filed outside this period, it will be considered untimely and require a petition under 37 CFR 1.55(e).
• The priority claim should reference the parent application if it properly claimed the benefit of the foreign application.

It’s important to note that the continuation or divisional application must be filed within 12 months of the foreign application’s filing date (or 6 months for design applications) to be eligible for priority.

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

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

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

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

What are the requirements for claiming domestic benefit in a patent application?

Claiming domestic benefit in a patent application allows an applicant to rely on the filing date of an earlier-filed US application. The MPEP 216 outlines the requirements for claiming domestic benefit, which are based on 35 U.S.C. 120. The key requirements include:

• The later-filed application must be filed before the patenting or abandonment of the prior application
• The later-filed application must contain or be amended to contain a specific reference to the prior application
• The prior application must disclose the invention claimed in the later-filed application in the manner required by 35 U.S.C. 112(a)
• At least one inventor named in the later-filed application must have been named as an inventor in the prior application

The MPEP 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.’

It’s important to note that these requirements must be met for each application in the chain of priority, ensuring a continuous line of co-pendency and proper disclosure.

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

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

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

While a prior assignment recorded against an original application is automatically effective for division and continuation applications, the USPTO does not automatically update its assignment records for these new applications. As stated in MPEP 306:

Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

This means that even though the assignment is legally effective, the USPTO’s records won’t show it unless the assignee takes specific action. To ensure the USPTO’s records are up to date, assignees should:

• File a request for recordation of the assignment for the new application
• Ensure the request complies with 37 CFR 3.28
• Pay the required fee as specified in 37 CFR 3.41

For division and continuation applications, a prior assignment recorded against the original application is automatically applied to the new application. This is because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.

However, it’s important to note that while the assignment is effective for the new application, the USPTO’s assignment records will not automatically reflect this. As stated in the MPEP: Although the assignment recorded against an original application is applied to the division or continuation application, the Office’s assignment records will only reflect an assignment of a division or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.

For continuation or divisional applications filed under 37 CFR 1.53(b) of an application previously accorded status under pre-AIA 37 CFR 1.47, the process is simplified. The MPEP states: In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration from a prior application and a copy of a decision according status under pre-AIA 37 CFR 1.47 are filed as permitted by pre-AIA 37 CFR 1.63(d)(3)(i), the notice will not be repeated.

This means that if the proper documentation from the original application is provided, the USPTO won’t repeat the notification process for nonsigning inventors. This streamlines the application process for related applications.

To learn more:

• pre-AIA
• 37 CFR 1.47
• continuation application
• divisional application
• patent procedure

To learn more:

• 37 CFR 1.47

How does the USPTO assign application numbers to continuation or divisional applications?

The USPTO assigns application numbers to continuation or divisional applications in the same manner as new applications. According to MPEP 503:

A continuation or divisional application (including a continued prosecution application) filed under 37 CFR 1.53(b) is assigned a new application number.

This means:

• Each continuation or divisional application receives a unique number
• The number is assigned in the same sequence as other new applications
• The application number does not indicate its relationship to the parent application

It’s important to reference the parent application in the appropriate sections of the new application to establish the continuity.

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

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

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

How does the USPTO assign application numbers to continuation or divisional applications?

The USPTO assigns application numbers to continuation or divisional applications in the same manner as new applications. According to MPEP 503:

A continuation or divisional application (including a continued prosecution application) filed under 37 CFR 1.53(b) is assigned a new application number.

This means:

• Each continuation or divisional application receives a unique number
• The number is assigned in the same sequence as other new applications
• The application number does not indicate its relationship to the parent application

It’s important to reference the parent application in the appropriate sections of the new application to establish the continuity.

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

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

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

A new oath or declaration is required in a patent application under the following circumstances:

• When filing a continuation or divisional application
• When filing a continuation-in-part application
• To correct inventorship in an application
• When the original oath or declaration was defective

According to MPEP 602.02: ‘A new oath or declaration is required in a continuation or divisional application filed under 37 CFR 1.53(b) or in a continuation-in-part application.’ Additionally, the MPEP states that ‘A new oath or declaration in compliance with 37 CFR 1.63 or 1.67 is required in a continuation or divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior application is submitted.’

To learn more:

• oath
• declaration
• continuation application
• divisional application
• continuation-in-part application
• inventorship

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.

For continuation or divisional applications filed under 37 CFR 1.53(d) (continued prosecution design applications) with changes in inventorship, the requirements were as follows:

“If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(d) (continued prosecution design application), the request for filing the continuation or divisional application must be accompanied by 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 continuation or divisional application (see 37 CFR 1.53(d)(4)).”

This meant that for continued prosecution design applications, a statement requesting the deletion of non-inventors had to be submitted along with the filing request when there were changes in inventorship.

To learn more:

• continued prosecution design application
• inventorship changes
• 37 CFR 1.53(d)
• continuation application
• divisional application

To learn more:

• 37 CFR 1.53(d)

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.

If an inventor’s signature was missing from a continuation or divisional application, the Office of Patent Application Processing (OPAP) would typically take the following steps:

1. Send a “Notice to File Missing Parts” requiring the signature of the nonsigning inventor.
2. If a copy of the decision according status under pre-AIA 37 CFR 1.47 was not included with the original filing, applicants could respond to the Notice by:
• Submitting a copy of the decision according status under pre-AIA 37 CFR 1.47, along with a surcharge for late filing.
• Alternatively, submitting an oath or declaration signed by the previously nonsigning inventor, along with the required surcharge.

This process is described in the MPEP:

“If OPAP mails such a Notice, a copy of the decision according status under pre-AIA 37 CFR 1.47, together with a surcharge under 37 CFR 1.16(f) for its late filing, will be an acceptable reply to the Notice. Alternatively, applicant may submit an oath or declaration signed by the previously nonsigning inventor together with the surcharge set forth in 37 CFR 1.16(f) in reply to the Notice.”

To learn more:

• missing signature
• continuation application
• divisional application
• Notice to File Missing Parts
• OPAP

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.

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.

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 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.

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.

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 procedure for filing a continuation or divisional application without a new oath or declaration?

When filing a continuation or divisional application, a new oath or declaration is not always required. According to MPEP 602.05, the following procedure can be followed:

1. File a copy of the oath or declaration from the prior application.
2. Include a statement requesting the filing of the continuation or divisional application without a newly executed oath or declaration.
3. Pay the filing fee for the continuation or divisional application.

The MPEP states: ‘The applicant may file a continuation or divisional application by filing a copy of the oath or declaration from the prior application, accompanied by a statement requesting the filing of the continuation or divisional application without a newly executed oath or declaration and payment of the filing fee.’

This procedure simplifies the filing process for certain types of continuing applications, reducing paperwork and potentially saving time for applicants.

To learn more:

• continuation application
• divisional application
• oath
• declaration
• filing procedure

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.

According to MPEP 201.06(c), the filing date for a divisional or continuation application filed under 37 CFR 1.53(b) is determined as follows:

‘The filing date of an application filed under 37 CFR 1.53(b) is the date on which a specification, with or without claims, is received in the Office.’

This means that the filing date is established when the USPTO receives the specification, regardless of whether claims are included. It’s important to note that other application components, such as drawings or fees, are not required to secure the filing date.

To learn more:

• filing date
• divisional application
• continuation application
• 37 CFR 1.53(b)
• specification

To learn more:

• 37 CFR 1.53(b)

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.

Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.

Key points to note:

1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.

2. Filing a continuation or CIP does not automatically abandon the parent application.

3. Prosecution can continue in both the parent and child applications simultaneously.

The MPEP states: “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.”

However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.

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.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

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.

A continuation-in-part (CIP) application differs from a regular continuation application in the following ways:

• A CIP application contains a portion or all of the disclosure of an earlier application and adds matter not disclosed in the earlier application.
• A regular continuation application contains the same disclosure as the earlier application without adding new matter.

As stated in 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.

To learn more:

• continuation-in-part
• CIP
• continuation application
• patent application types

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.

A continuation application and a divisional application are both types of continuing applications, but they serve different purposes:

• Continuation application: Used to pursue additional claims to an invention disclosed in a prior application. It contains the same disclosure as the parent application.
• Divisional application: Used to pursue claims to an invention that was disclosed but not claimed in a prior application. It typically results from a restriction requirement in the parent application.

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.” In contrast, a divisional application focuses on a distinct invention that was not claimed in the parent application.

To learn more:

• continuation application
• divisional application
• continuing applications
• patent applications

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that stem from an earlier 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… The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.’
• Continuation-in-part application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the parent application.

The key distinction is that a continuation-in-part introduces new subject matter, while a continuation does not.

To learn more:

• continuation application
• continuation-in-part
• CIP
• patent application types
• new matter

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.

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

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

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

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

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 continuation or divisional application is a type of continuing application filed under 37 CFR 1.53(b). According to the MPEP, An application filed under 37 CFR 1.53(b) may be an original or a reissue, a continuation, a divisional, a continuation-in-part, or a substitute. These applications are filed under 35 U.S.C. 111(a) and can be for utility, design, plant, or reissue patents.

To learn more:

• continuation application
• divisional application
• 37 CFR 1.53(b)
• patent application types

To learn more:

• 37 CFR 1.53(b)

A continuation application is a type of patent application that discloses the same invention(s) as a previously filed, copending nonprovisional application, international application designating the United States, or international design application designating the United States. The MPEP states:

“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.”

It’s important to note that the continuation application must not include any new matter that wasn’t present in the parent application.

To learn more:

• continuation application
• patent application
• nonprovisional application
• international application

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.

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.

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.

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.