Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (16)
A Continued Prosecution Application (CPA) can be filed for specific types of applications. According to MPEP 201.06(d):
Effective July 14, 2003, CPA practice under 37 CFR 1.53(d) is not available for utility and plant applications.
This means that CPAs are limited to:
- Design applications: Applications for design patents can be filed as CPAs.
- Continuation applications: These must be based on an earlier application of the same type (i.e., design).
- Divisional applications: These must also be based on an earlier design application.
It’s important to note that continuation-in-part (CIP) applications cannot be filed as CPAs. Additionally, utility and plant patent applications are no longer eligible for CPA practice since July 14, 2003.
For more information on continuation applications, visit: continuation applications.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
The change from 37 CFR 1.60 to 37 CFR 1.53(b) represents a significant shift in the procedure for filing continuation and divisional applications. After December 1, 1997, all such applications are processed under 37 CFR 1.53(b), which may have different requirements and procedures. Patent applicants need to be aware of this change to ensure they are following the correct, current procedures when filing continuation or divisional applications.
To learn more:
- 37 CFR 1.53(b)
- patent application procedure changes
- continuation applications
- divisional applications
To learn more:
Applications filed under 37 CFR 1.53(d) have a unique treatment of affidavits and declarations. According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
Key points about 37 CFR 1.53(d) applications:
- They are continuation or divisional applications of a nonprovisional application
- Affidavits and declarations from the parent application are automatically incorporated
- This includes documents submitted under 37 CFR 1.130, 1.131, and 1.132
- No additional action is required to include these documents in the new application
This automatic incorporation simplifies the process for applicants filing continuation or divisional applications under 37 CFR 1.53(d).
For more information on continuation applications, visit: continuation applications.
For more information on patent prosecution, visit: patent prosecution.
There is a significant difference in how affidavits are handled between applications filed under 37 CFR 1.53(b) and 37 CFR 1.53(d). According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
In summary:
- For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly included and referenced.
- For 37 CFR 1.53(d) applications: Affidavits from the parent nonprovisional application automatically become part of the new application.
For more information on continuation applications, visit: continuation applications.
The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d). According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
In summary:
- For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly incorporated.
- For 37 CFR 1.53(d) applications: Affidavits from the parent application are automatically included.
For more information on continuation applications, visit: continuation applications.
For more information on patent applications, visit: patent applications.
A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application. It discloses and claims only subject matter disclosed in the earlier or parent application. As stated in MPEP 201.06:
A later application for an independent or distinct invention, carved out of 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 and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application.
To learn more:
The MPEP clearly states that All continuation and divisional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60.
This means that if you filed a continuation or divisional application before the rule change, your application will still be handled according to the old procedures, ensuring consistency in the examination process for applications filed under the former rule.
For more information on continuation applications, visit: continuation applications.
37 CFR 1.60, which previously governed the filing of divisional and continuation applications, was deleted effective December 1, 1997. As stated in the MPEP, 37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997.
This change significantly impacted the procedure for filing these types of applications.
For more information on continuation applications, visit: continuation applications.
The key requirements for filing a divisional application include:
- The divisional application must be filed before the patenting or abandonment of the parent application.
- It must claim only subject matter disclosed in the parent application.
- It must be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if it is a design application).
- The inventorship must include at least one inventor named in the parent application.
- It must claim the benefit of the parent application under 35 U.S.C. 120, 121, 365(c), or 386(c).
As stated in the MPEP:
The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
To learn more:
Filing a Continued Prosecution Application (CPA) for design patents has several advantages over filing a regular continuation application under 37 CFR 1.53(b):
- Minimal filing requirements – only a request on a separate paper and the filing fee are needed
- No new oath or declaration is required
- Faster processing – the CPA uses the file and contents of the prior application
- Potentially faster examination – CPAs are often treated as “amended” applications for examination priority
- No need for a new specification or drawings
The MPEP notes: “A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).”
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent applications, visit: patent applications.
Copendency is a crucial requirement for claiming benefit between nonprovisional applications. The later-filed application must be filed before:
- The patenting of the prior application
- The abandonment of the prior application
- The termination of proceedings in the prior application
As stated in MPEP 211.01(b): When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application.
If copendency is not maintained, the benefit claim is improper and the later-filed application cannot claim the earlier filing date of the prior application.
To learn more:
Continuity in patent applications refers to the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The MPEP 211.01(b) states:
“The term ‘continuity’ is used to express the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common.”
Continuing applications include:
- Divisional applications
- Continuation applications
- Continuation-in-part applications
It’s important to note that the prior application may disclose more than the later-filed application, or vice versa. In either case, the later-filed application is entitled to the benefit of the filing date of the prior application for the common subject matter disclosed in compliance with 35 U.S.C. 112(a).
To learn more:
A divisional application does not extend the patent term beyond that of the parent application. The term of a patent issuing from a divisional application is calculated 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), excluding any benefit claims to provisional applications.
This means that while you can pursue additional patent protection through a divisional application, you don’t get extra time beyond the original 20-year term from the earliest non-provisional filing date.
It’s important to note that patent term adjustments may apply independently to divisional applications based on delays in their own prosecution.
To learn more:
A Continued Prosecution Application (CPA) automatically maintains the priority claim to its parent application without requiring a separate reference. The CPA itself serves as the specific reference required under 35 U.S.C. 120.
The MPEP states: A request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).
This means that filing a CPA automatically establishes a priority claim to the parent application and any earlier applications in the priority chain without additional paperwork.
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent applications, visit: patent applications.
A Continued Prosecution Application (CPA) automatically maintains the benefit claim to earlier applications. The MPEP states:
A request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recitation of the application number of the prior application in such request is the ‘specific reference to the earlier filed application’ required by 35 U.S.C. 120.
This means that filing a CPA automatically establishes a benefit claim to the prior application and any earlier applications in the chain, without the need for a separate statement in the specification or application data sheet. However, if the prior application claimed benefit of earlier applications, those benefit claims must still be present in the prior application.
For more information on continuation applications, visit: continuation applications.
For more information on patent priority, visit: patent priority.
No, Continued Prosecution Applications (CPAs) are not available for all types of patent applications. They are specifically limited to design patent applications. This is evident from the MPEP guidance, which states:
‘Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.’
This statement clearly indicates that CPAs are associated with design applications. For utility and plant patent applications, other continuation options are available, such as:
- Continuation Applications
- Divisional Applications
- Continuation-in-Part Applications
It’s important for inventors and patent practitioners to understand these distinctions to choose the appropriate type of continuing application for their specific situation.
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent application types, visit: patent application types.
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)
Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:
- It establishes a continuous chain of pending applications
- It allows the later application to claim the earlier filing date
- Without copendency, the benefit claim is improper
As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”
MPEP 201 - Types of Applications (10)
A Continued Prosecution Application (CPA) can be filed for specific types of applications. According to MPEP 201.06(d):
Effective July 14, 2003, CPA practice under 37 CFR 1.53(d) is not available for utility and plant applications.
This means that CPAs are limited to:
- Design applications: Applications for design patents can be filed as CPAs.
- Continuation applications: These must be based on an earlier application of the same type (i.e., design).
- Divisional applications: These must also be based on an earlier design application.
It’s important to note that continuation-in-part (CIP) applications cannot be filed as CPAs. Additionally, utility and plant patent applications are no longer eligible for CPA practice since July 14, 2003.
For more information on continuation applications, visit: continuation applications.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
Applications filed under 37 CFR 1.53(d) have a unique treatment of affidavits and declarations. According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
Key points about 37 CFR 1.53(d) applications:
- They are continuation or divisional applications of a nonprovisional application
- Affidavits and declarations from the parent application are automatically incorporated
- This includes documents submitted under 37 CFR 1.130, 1.131, and 1.132
- No additional action is required to include these documents in the new application
This automatic incorporation simplifies the process for applicants filing continuation or divisional applications under 37 CFR 1.53(d).
For more information on continuation applications, visit: continuation applications.
For more information on patent prosecution, visit: patent prosecution.
There is a significant difference in how affidavits are handled between applications filed under 37 CFR 1.53(b) and 37 CFR 1.53(d). According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
In summary:
- For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly included and referenced.
- For 37 CFR 1.53(d) applications: Affidavits from the parent nonprovisional application automatically become part of the new application.
For more information on continuation applications, visit: continuation applications.
The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d). According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
In summary:
- For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly incorporated.
- For 37 CFR 1.53(d) applications: Affidavits from the parent application are automatically included.
For more information on continuation applications, visit: continuation applications.
For more information on patent applications, visit: patent applications.
The MPEP clearly states that All continuation and divisional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60.
This means that if you filed a continuation or divisional application before the rule change, your application will still be handled according to the old procedures, ensuring consistency in the examination process for applications filed under the former rule.
For more information on continuation applications, visit: continuation applications.
37 CFR 1.60, which previously governed the filing of divisional and continuation applications, was deleted effective December 1, 1997. As stated in the MPEP, 37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997.
This change significantly impacted the procedure for filing these types of applications.
For more information on continuation applications, visit: continuation applications.
Filing a Continued Prosecution Application (CPA) for design patents has several advantages over filing a regular continuation application under 37 CFR 1.53(b):
- Minimal filing requirements – only a request on a separate paper and the filing fee are needed
- No new oath or declaration is required
- Faster processing – the CPA uses the file and contents of the prior application
- Potentially faster examination – CPAs are often treated as “amended” applications for examination priority
- No need for a new specification or drawings
The MPEP notes: “A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).”
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent applications, visit: patent applications.
A Continued Prosecution Application (CPA) automatically maintains the priority claim to its parent application without requiring a separate reference. The CPA itself serves as the specific reference required under 35 U.S.C. 120.
The MPEP states: A request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).
This means that filing a CPA automatically establishes a priority claim to the parent application and any earlier applications in the priority chain without additional paperwork.
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent applications, visit: patent applications.
A Continued Prosecution Application (CPA) automatically maintains the benefit claim to earlier applications. The MPEP states:
A request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recitation of the application number of the prior application in such request is the ‘specific reference to the earlier filed application’ required by 35 U.S.C. 120.
This means that filing a CPA automatically establishes a benefit claim to the prior application and any earlier applications in the chain, without the need for a separate statement in the specification or application data sheet. However, if the prior application claimed benefit of earlier applications, those benefit claims must still be present in the prior application.
For more information on continuation applications, visit: continuation applications.
For more information on patent priority, visit: patent priority.
No, Continued Prosecution Applications (CPAs) are not available for all types of patent applications. They are specifically limited to design patent applications. This is evident from the MPEP guidance, which states:
‘Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.’
This statement clearly indicates that CPAs are associated with design applications. For utility and plant patent applications, other continuation options are available, such as:
- Continuation Applications
- Divisional Applications
- Continuation-in-Part Applications
It’s important for inventors and patent practitioners to understand these distinctions to choose the appropriate type of continuing application for their specific situation.
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent application types, visit: patent application types.
MPEP 211 - Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)
Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:
- It establishes a continuous chain of pending applications
- It allows the later application to claim the earlier filing date
- Without copendency, the benefit claim is improper
As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”
MPEP 300 - Ownership and Assignment (1)
The handling of assignment records for related patent applications, such as divisional, continuation, or continuation-in-part applications, is addressed in MPEP 301.01. The key point is:
If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14.
This policy has several implications:
- Once a patent is granted on a related application, the assignment records of the parent application become publicly accessible.
- This applies even if the parent application was previously unpublished or abandoned.
- The public accessibility extends to all assignment records in the chain of related applications leading to the granted patent.
This approach ensures transparency in the ownership history of patented inventions, allowing interested parties to trace the chain of title through related applications. It’s important for applicants and assignees to be aware of this when considering their IP strategy and the potential disclosure of ownership information for related applications.
For more information on continuation applications, visit: continuation applications.
For more information on public inspection, visit: public inspection.
MPEP 301-Ownership/Assignability of Patents and Applications (1)
The handling of assignment records for related patent applications, such as divisional, continuation, or continuation-in-part applications, is addressed in MPEP 301.01. The key point is:
If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14.
This policy has several implications:
- Once a patent is granted on a related application, the assignment records of the parent application become publicly accessible.
- This applies even if the parent application was previously unpublished or abandoned.
- The public accessibility extends to all assignment records in the chain of related applications leading to the granted patent.
This approach ensures transparency in the ownership history of patented inventions, allowing interested parties to trace the chain of title through related applications. It’s important for applicants and assignees to be aware of this when considering their IP strategy and the potential disclosure of ownership information for related applications.
For more information on continuation applications, visit: continuation applications.
For more information on public inspection, visit: public inspection.
Patent Law (19)
A Continued Prosecution Application (CPA) can be filed for specific types of applications. According to MPEP 201.06(d):
Effective July 14, 2003, CPA practice under 37 CFR 1.53(d) is not available for utility and plant applications.
This means that CPAs are limited to:
- Design applications: Applications for design patents can be filed as CPAs.
- Continuation applications: These must be based on an earlier application of the same type (i.e., design).
- Divisional applications: These must also be based on an earlier design application.
It’s important to note that continuation-in-part (CIP) applications cannot be filed as CPAs. Additionally, utility and plant patent applications are no longer eligible for CPA practice since July 14, 2003.
For more information on continuation applications, visit: continuation applications.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
The change from 37 CFR 1.60 to 37 CFR 1.53(b) represents a significant shift in the procedure for filing continuation and divisional applications. After December 1, 1997, all such applications are processed under 37 CFR 1.53(b), which may have different requirements and procedures. Patent applicants need to be aware of this change to ensure they are following the correct, current procedures when filing continuation or divisional applications.
To learn more:
- 37 CFR 1.53(b)
- patent application procedure changes
- continuation applications
- divisional applications
To learn more:
Applications filed under 37 CFR 1.53(d) have a unique treatment of affidavits and declarations. According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
Key points about 37 CFR 1.53(d) applications:
- They are continuation or divisional applications of a nonprovisional application
- Affidavits and declarations from the parent application are automatically incorporated
- This includes documents submitted under 37 CFR 1.130, 1.131, and 1.132
- No additional action is required to include these documents in the new application
This automatic incorporation simplifies the process for applicants filing continuation or divisional applications under 37 CFR 1.53(d).
For more information on continuation applications, visit: continuation applications.
For more information on patent prosecution, visit: patent prosecution.
There is a significant difference in how affidavits are handled between applications filed under 37 CFR 1.53(b) and 37 CFR 1.53(d). According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
In summary:
- For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly included and referenced.
- For 37 CFR 1.53(d) applications: Affidavits from the parent nonprovisional application automatically become part of the new application.
For more information on continuation applications, visit: continuation applications.
The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d). According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
In summary:
- For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly incorporated.
- For 37 CFR 1.53(d) applications: Affidavits from the parent application are automatically included.
For more information on continuation applications, visit: continuation applications.
For more information on patent applications, visit: patent applications.
Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:
- It establishes a continuous chain of pending applications
- It allows the later application to claim the earlier filing date
- Without copendency, the benefit claim is improper
As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”
A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application. It discloses and claims only subject matter disclosed in the earlier or parent application. As stated in MPEP 201.06:
A later application for an independent or distinct invention, carved out of 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 and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application.
To learn more:
The MPEP clearly states that All continuation and divisional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60.
This means that if you filed a continuation or divisional application before the rule change, your application will still be handled according to the old procedures, ensuring consistency in the examination process for applications filed under the former rule.
For more information on continuation applications, visit: continuation applications.
37 CFR 1.60, which previously governed the filing of divisional and continuation applications, was deleted effective December 1, 1997. As stated in the MPEP, 37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997.
This change significantly impacted the procedure for filing these types of applications.
For more information on continuation applications, visit: continuation applications.
The key requirements for filing a divisional application include:
- The divisional application must be filed before the patenting or abandonment of the parent application.
- It must claim only subject matter disclosed in the parent application.
- It must be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if it is a design application).
- The inventorship must include at least one inventor named in the parent application.
- It must claim the benefit of the parent application under 35 U.S.C. 120, 121, 365(c), or 386(c).
As stated in the MPEP:
The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
To learn more:
Filing a Continued Prosecution Application (CPA) for design patents has several advantages over filing a regular continuation application under 37 CFR 1.53(b):
- Minimal filing requirements – only a request on a separate paper and the filing fee are needed
- No new oath or declaration is required
- Faster processing – the CPA uses the file and contents of the prior application
- Potentially faster examination – CPAs are often treated as “amended” applications for examination priority
- No need for a new specification or drawings
The MPEP notes: “A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).”
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent applications, visit: patent applications.
How does the USPTO handle new matter in continuation applications?
The United States Patent and Trademark Office (USPTO) treats new matter in continuation applications similarly to how it handles new matter in original applications. According to MPEP 608.04:
“A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation application) to continuation-in-part (CIP) if the application contains subject matter that would have been new matter in the prior-filed application.”
This means that:
- Continuation applications must be based entirely on the disclosure of the parent application
- Any new subject matter introduced in a continuation application will be rejected as new matter
- If new matter is present, the applicant must either remove it or change the application type to a continuation-in-part (CIP)
CIP applications allow for the introduction of new matter, but the new subject matter will only receive the benefit of the CIP filing date, not the earlier parent application date. It’s crucial for applicants to carefully review their continuation applications to ensure they don’t inadvertently introduce new matter, which could jeopardize their priority claim to the parent application.
To learn more:
To learn more:
Copendency is a crucial requirement for claiming benefit between nonprovisional applications. The later-filed application must be filed before:
- The patenting of the prior application
- The abandonment of the prior application
- The termination of proceedings in the prior application
As stated in MPEP 211.01(b): When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application.
If copendency is not maintained, the benefit claim is improper and the later-filed application cannot claim the earlier filing date of the prior application.
To learn more:
Continuity in patent applications refers to the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The MPEP 211.01(b) states:
“The term ‘continuity’ is used to express the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common.”
Continuing applications include:
- Divisional applications
- Continuation applications
- Continuation-in-part applications
It’s important to note that the prior application may disclose more than the later-filed application, or vice versa. In either case, the later-filed application is entitled to the benefit of the filing date of the prior application for the common subject matter disclosed in compliance with 35 U.S.C. 112(a).
To learn more:
A divisional application does not extend the patent term beyond that of the parent application. The term of a patent issuing from a divisional application is calculated 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), excluding any benefit claims to provisional applications.
This means that while you can pursue additional patent protection through a divisional application, you don’t get extra time beyond the original 20-year term from the earliest non-provisional filing date.
It’s important to note that patent term adjustments may apply independently to divisional applications based on delays in their own prosecution.
To learn more:
A Continued Prosecution Application (CPA) automatically maintains the priority claim to its parent application without requiring a separate reference. The CPA itself serves as the specific reference required under 35 U.S.C. 120.
The MPEP states: A request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).
This means that filing a CPA automatically establishes a priority claim to the parent application and any earlier applications in the priority chain without additional paperwork.
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent applications, visit: patent applications.
A Continued Prosecution Application (CPA) automatically maintains the benefit claim to earlier applications. The MPEP states:
A request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recitation of the application number of the prior application in such request is the ‘specific reference to the earlier filed application’ required by 35 U.S.C. 120.
This means that filing a CPA automatically establishes a benefit claim to the prior application and any earlier applications in the chain, without the need for a separate statement in the specification or application data sheet. However, if the prior application claimed benefit of earlier applications, those benefit claims must still be present in the prior application.
For more information on continuation applications, visit: continuation applications.
For more information on patent priority, visit: patent priority.
The handling of assignment records for related patent applications, such as divisional, continuation, or continuation-in-part applications, is addressed in MPEP 301.01. The key point is:
If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14.
This policy has several implications:
- Once a patent is granted on a related application, the assignment records of the parent application become publicly accessible.
- This applies even if the parent application was previously unpublished or abandoned.
- The public accessibility extends to all assignment records in the chain of related applications leading to the granted patent.
This approach ensures transparency in the ownership history of patented inventions, allowing interested parties to trace the chain of title through related applications. It’s important for applicants and assignees to be aware of this when considering their IP strategy and the potential disclosure of ownership information for related applications.
For more information on continuation applications, visit: continuation applications.
For more information on public inspection, visit: public inspection.
No, Continued Prosecution Applications (CPAs) are not available for all types of patent applications. They are specifically limited to design patent applications. This is evident from the MPEP guidance, which states:
‘Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.’
This statement clearly indicates that CPAs are associated with design applications. For utility and plant patent applications, other continuation options are available, such as:
- Continuation Applications
- Divisional Applications
- Continuation-in-Part Applications
It’s important for inventors and patent practitioners to understand these distinctions to choose the appropriate type of continuing application for their specific situation.
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent application types, visit: patent application types.
Patent Procedure (19)
A Continued Prosecution Application (CPA) can be filed for specific types of applications. According to MPEP 201.06(d):
Effective July 14, 2003, CPA practice under 37 CFR 1.53(d) is not available for utility and plant applications.
This means that CPAs are limited to:
- Design applications: Applications for design patents can be filed as CPAs.
- Continuation applications: These must be based on an earlier application of the same type (i.e., design).
- Divisional applications: These must also be based on an earlier design application.
It’s important to note that continuation-in-part (CIP) applications cannot be filed as CPAs. Additionally, utility and plant patent applications are no longer eligible for CPA practice since July 14, 2003.
For more information on continuation applications, visit: continuation applications.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
The change from 37 CFR 1.60 to 37 CFR 1.53(b) represents a significant shift in the procedure for filing continuation and divisional applications. After December 1, 1997, all such applications are processed under 37 CFR 1.53(b), which may have different requirements and procedures. Patent applicants need to be aware of this change to ensure they are following the correct, current procedures when filing continuation or divisional applications.
To learn more:
- 37 CFR 1.53(b)
- patent application procedure changes
- continuation applications
- divisional applications
To learn more:
Applications filed under 37 CFR 1.53(d) have a unique treatment of affidavits and declarations. According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
Key points about 37 CFR 1.53(d) applications:
- They are continuation or divisional applications of a nonprovisional application
- Affidavits and declarations from the parent application are automatically incorporated
- This includes documents submitted under 37 CFR 1.130, 1.131, and 1.132
- No additional action is required to include these documents in the new application
This automatic incorporation simplifies the process for applicants filing continuation or divisional applications under 37 CFR 1.53(d).
For more information on continuation applications, visit: continuation applications.
For more information on patent prosecution, visit: patent prosecution.
There is a significant difference in how affidavits are handled between applications filed under 37 CFR 1.53(b) and 37 CFR 1.53(d). According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
In summary:
- For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly included and referenced.
- For 37 CFR 1.53(d) applications: Affidavits from the parent nonprovisional application automatically become part of the new application.
For more information on continuation applications, visit: continuation applications.
The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d). According to MPEP ยถ 2.03:
“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”
In summary:
- For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly incorporated.
- For 37 CFR 1.53(d) applications: Affidavits from the parent application are automatically included.
For more information on continuation applications, visit: continuation applications.
For more information on patent applications, visit: patent applications.
Copendency refers to the requirement that a later-filed application claiming benefit of a prior application must be filed before the prior application is patented, abandoned, or proceedings are terminated. Copendency is crucial because:
- It establishes a continuous chain of pending applications
- It allows the later application to claim the earlier filing date
- Without copendency, the benefit claim is improper
As stated in MPEP 211.01(b): “Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.”
A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application. It discloses and claims only subject matter disclosed in the earlier or parent application. As stated in MPEP 201.06:
A later application for an independent or distinct invention, carved out of 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 and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application.
To learn more:
The MPEP clearly states that All continuation and divisional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60.
This means that if you filed a continuation or divisional application before the rule change, your application will still be handled according to the old procedures, ensuring consistency in the examination process for applications filed under the former rule.
For more information on continuation applications, visit: continuation applications.
37 CFR 1.60, which previously governed the filing of divisional and continuation applications, was deleted effective December 1, 1997. As stated in the MPEP, 37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997.
This change significantly impacted the procedure for filing these types of applications.
For more information on continuation applications, visit: continuation applications.
The key requirements for filing a divisional application include:
- The divisional application must be filed before the patenting or abandonment of the parent application.
- It must claim only subject matter disclosed in the parent application.
- It must be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if it is a design application).
- The inventorship must include at least one inventor named in the parent application.
- It must claim the benefit of the parent application under 35 U.S.C. 120, 121, 365(c), or 386(c).
As stated in the MPEP:
The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
To learn more:
Filing a Continued Prosecution Application (CPA) for design patents has several advantages over filing a regular continuation application under 37 CFR 1.53(b):
- Minimal filing requirements – only a request on a separate paper and the filing fee are needed
- No new oath or declaration is required
- Faster processing – the CPA uses the file and contents of the prior application
- Potentially faster examination – CPAs are often treated as “amended” applications for examination priority
- No need for a new specification or drawings
The MPEP notes: “A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).”
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent applications, visit: patent applications.
How does the USPTO handle new matter in continuation applications?
The United States Patent and Trademark Office (USPTO) treats new matter in continuation applications similarly to how it handles new matter in original applications. According to MPEP 608.04:
“A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation application) to continuation-in-part (CIP) if the application contains subject matter that would have been new matter in the prior-filed application.”
This means that:
- Continuation applications must be based entirely on the disclosure of the parent application
- Any new subject matter introduced in a continuation application will be rejected as new matter
- If new matter is present, the applicant must either remove it or change the application type to a continuation-in-part (CIP)
CIP applications allow for the introduction of new matter, but the new subject matter will only receive the benefit of the CIP filing date, not the earlier parent application date. It’s crucial for applicants to carefully review their continuation applications to ensure they don’t inadvertently introduce new matter, which could jeopardize their priority claim to the parent application.
To learn more:
To learn more:
Copendency is a crucial requirement for claiming benefit between nonprovisional applications. The later-filed application must be filed before:
- The patenting of the prior application
- The abandonment of the prior application
- The termination of proceedings in the prior application
As stated in MPEP 211.01(b): When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application.
If copendency is not maintained, the benefit claim is improper and the later-filed application cannot claim the earlier filing date of the prior application.
To learn more:
Continuity in patent applications refers to the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The MPEP 211.01(b) states:
“The term ‘continuity’ is used to express the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common.”
Continuing applications include:
- Divisional applications
- Continuation applications
- Continuation-in-part applications
It’s important to note that the prior application may disclose more than the later-filed application, or vice versa. In either case, the later-filed application is entitled to the benefit of the filing date of the prior application for the common subject matter disclosed in compliance with 35 U.S.C. 112(a).
To learn more:
A divisional application does not extend the patent term beyond that of the parent application. The term of a patent issuing from a divisional application is calculated 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), excluding any benefit claims to provisional applications.
This means that while you can pursue additional patent protection through a divisional application, you don’t get extra time beyond the original 20-year term from the earliest non-provisional filing date.
It’s important to note that patent term adjustments may apply independently to divisional applications based on delays in their own prosecution.
To learn more:
A Continued Prosecution Application (CPA) automatically maintains the priority claim to its parent application without requiring a separate reference. The CPA itself serves as the specific reference required under 35 U.S.C. 120.
The MPEP states: A request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).
This means that filing a CPA automatically establishes a priority claim to the parent application and any earlier applications in the priority chain without additional paperwork.
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent applications, visit: patent applications.
A Continued Prosecution Application (CPA) automatically maintains the benefit claim to earlier applications. The MPEP states:
A request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recitation of the application number of the prior application in such request is the ‘specific reference to the earlier filed application’ required by 35 U.S.C. 120.
This means that filing a CPA automatically establishes a benefit claim to the prior application and any earlier applications in the chain, without the need for a separate statement in the specification or application data sheet. However, if the prior application claimed benefit of earlier applications, those benefit claims must still be present in the prior application.
For more information on continuation applications, visit: continuation applications.
For more information on patent priority, visit: patent priority.
The handling of assignment records for related patent applications, such as divisional, continuation, or continuation-in-part applications, is addressed in MPEP 301.01. The key point is:
If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14.
This policy has several implications:
- Once a patent is granted on a related application, the assignment records of the parent application become publicly accessible.
- This applies even if the parent application was previously unpublished or abandoned.
- The public accessibility extends to all assignment records in the chain of related applications leading to the granted patent.
This approach ensures transparency in the ownership history of patented inventions, allowing interested parties to trace the chain of title through related applications. It’s important for applicants and assignees to be aware of this when considering their IP strategy and the potential disclosure of ownership information for related applications.
For more information on continuation applications, visit: continuation applications.
For more information on public inspection, visit: public inspection.
No, Continued Prosecution Applications (CPAs) are not available for all types of patent applications. They are specifically limited to design patent applications. This is evident from the MPEP guidance, which states:
‘Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.’
This statement clearly indicates that CPAs are associated with design applications. For utility and plant patent applications, other continuation options are available, such as:
- Continuation Applications
- Divisional Applications
- Continuation-in-Part Applications
It’s important for inventors and patent practitioners to understand these distinctions to choose the appropriate type of continuing application for their specific situation.
For more information on continuation applications, visit: continuation applications.
For more information on design patents, visit: design patents.
For more information on patent application types, visit: patent application types.