Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority (12)
What is the significance of copendency in continuation applications?
Copendency is a crucial requirement for continuation applications. It refers to the condition where the continuation application is filed before the prior application is patented, abandoned, or terminated. The MPEP 201.07 states:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement; and the later-filed application must be copending with the prior application.’
The significance of copendency includes:
- Maintaining Priority: It ensures the continuation application can claim the benefit of the earlier filing date.
- Unbroken Chain: It maintains an unbroken chain of applications, which is essential for establishing a continuous line of priority.
- Preventing Loss of Rights: Filing a continuation before the parent application is concluded prevents the loss of patent rights that could occur if new claims are needed after the parent application is no longer pending.
Failure to maintain copendency can result in the loss of the earlier priority date, potentially affecting the patentability of the invention if intervening prior art exists.
For more information on continuation application, visit: continuation application.
For more information on copendency, visit: copendency.
For more information on patent priority, visit: patent priority.
A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.
According to the MPEP:
A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.
The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.
For more information on continuation application, visit: continuation application.
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:
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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.
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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.
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:
- Make remarks of record in the new application referring to the affidavit or declaration.
- 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.
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.
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.
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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:
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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.
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.
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.
MPEP 200 – Types and Status of Application; Benefit and Priority Claims (2)
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.
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.
MPEP 201 – Types of Applications (9)
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.
What is the significance of copendency in continuation applications?
Copendency is a crucial requirement for continuation applications. It refers to the condition where the continuation application is filed before the prior application is patented, abandoned, or terminated. The MPEP 201.07 states:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement; and the later-filed application must be copending with the prior application.’
The significance of copendency includes:
- Maintaining Priority: It ensures the continuation application can claim the benefit of the earlier filing date.
- Unbroken Chain: It maintains an unbroken chain of applications, which is essential for establishing a continuous line of priority.
- Preventing Loss of Rights: Filing a continuation before the parent application is concluded prevents the loss of patent rights that could occur if new claims are needed after the parent application is no longer pending.
Failure to maintain copendency can result in the loss of the earlier priority date, potentially affecting the patentability of the invention if intervening prior art exists.
For more information on continuation application, visit: continuation application.
For more information on copendency, visit: copendency.
For more information on patent priority, visit: patent priority.
A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.
According to the MPEP:
A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.
The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.
For more information on continuation application, visit: continuation application.
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.
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:
- Make remarks of record in the new application referring to the affidavit or declaration.
- 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.
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.
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.
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.
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.
MPEP 216 – Entitlement to Priority (1)
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.
Patent Law (18)
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.
What is the significance of copendency in continuation applications?
Copendency is a crucial requirement for continuation applications. It refers to the condition where the continuation application is filed before the prior application is patented, abandoned, or terminated. The MPEP 201.07 states:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement; and the later-filed application must be copending with the prior application.’
The significance of copendency includes:
- Maintaining Priority: It ensures the continuation application can claim the benefit of the earlier filing date.
- Unbroken Chain: It maintains an unbroken chain of applications, which is essential for establishing a continuous line of priority.
- Preventing Loss of Rights: Filing a continuation before the parent application is concluded prevents the loss of patent rights that could occur if new claims are needed after the parent application is no longer pending.
Failure to maintain copendency can result in the loss of the earlier priority date, potentially affecting the patentability of the invention if intervening prior art exists.
For more information on continuation application, visit: continuation application.
For more information on copendency, visit: copendency.
For more information on patent priority, visit: patent priority.
A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.
According to the MPEP:
A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.
The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.
For more information on continuation application, visit: continuation application.
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:
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For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:
- If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
- If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.
The MPEP further states:
“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”
When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.
To learn more:
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:
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.
Applicants can avoid the need for preliminary amendments in patent applications by following the guidance provided in MPEP 608.04(b):
Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application.
This approach involves directly including any necessary changes or additions in the original specification text when preparing the application. By doing so, applicants can ensure that all desired content is present from the initial filing, eliminating the need for separate preliminary amendments. This method is recommended for all types of applications, including continuations and divisionals, to streamline the application process and reduce potential processing delays.
To learn more:
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:
- Make remarks of record in the new application referring to the affidavit or declaration.
- 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.
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.
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:
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:
To learn more:
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:
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.
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.
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.
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.
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
- The prior nonprovisional application contained a proper oath or declaration
- The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
- The specification and drawings contain no new matter
- A copy of the executed oath or declaration from the prior application is submitted
However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
To learn more:
Patent Procedure (18)
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.
What is the significance of copendency in continuation applications?
Copendency is a crucial requirement for continuation applications. It refers to the condition where the continuation application is filed before the prior application is patented, abandoned, or terminated. The MPEP 201.07 states:
‘To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement; and the later-filed application must be copending with the prior application.’
The significance of copendency includes:
- Maintaining Priority: It ensures the continuation application can claim the benefit of the earlier filing date.
- Unbroken Chain: It maintains an unbroken chain of applications, which is essential for establishing a continuous line of priority.
- Preventing Loss of Rights: Filing a continuation before the parent application is concluded prevents the loss of patent rights that could occur if new claims are needed after the parent application is no longer pending.
Failure to maintain copendency can result in the loss of the earlier priority date, potentially affecting the patentability of the invention if intervening prior art exists.
For more information on continuation application, visit: continuation application.
For more information on copendency, visit: copendency.
For more information on patent priority, visit: patent priority.
A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent.
According to the MPEP:
A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application.
The continuation application receives a new application number and filing date, but can claim the benefit of the prior application’s filing date under 35 U.S.C. 120.
For more information on continuation application, visit: continuation application.
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.
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For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:
- If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
- If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.
The MPEP further states:
“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”
When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.
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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.
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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.
Applicants can avoid the need for preliminary amendments in patent applications by following the guidance provided in MPEP 608.04(b):
Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application.
This approach involves directly including any necessary changes or additions in the original specification text when preparing the application. By doing so, applicants can ensure that all desired content is present from the initial filing, eliminating the need for separate preliminary amendments. This method is recommended for all types of applications, including continuations and divisionals, to streamline the application process and reduce potential processing delays.
To learn more:
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:
- Make remarks of record in the new application referring to the affidavit or declaration.
- 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.
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.
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:
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:
To learn more:
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:
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.
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.
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.
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.
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
- The prior nonprovisional application contained a proper oath or declaration
- The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
- The specification and drawings contain no new matter
- A copy of the executed oath or declaration from the prior application is submitted
However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
To learn more: