Patent Law FAQ

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:

• 37 CFR 1.53(b)

Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03:

“Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”

Similarly, for domestic priority under 35 U.S.C. 120:

“Under 35 U.S.C. 120, the claims in a U.S. application are entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier filed application.”

In essence, to claim priority, the earlier application (foreign, provisional, or U.S.) must provide adequate written description support for the claims in the later application. This ensures that the applicant had possession of the claimed invention at the time of the earlier filing.

To learn more:

• priority claims
• written description
• foreign priority
• provisional applications
• continuation applications

Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03:

“Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”

Similarly, for domestic priority under 35 U.S.C. 120:

“Under 35 U.S.C. 120, the claims in a U.S. application are entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier filed application.”

In essence, to claim priority, the earlier application (foreign, provisional, or U.S.) must provide adequate written description support for the claims in the later application. This ensures that the applicant had possession of the claimed invention at the time of the earlier filing.

To learn more:

• priority claims
• written description
• foreign priority
• provisional applications
• continuation applications

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:

• 37 CFR 1.53(b)

Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03:

“Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”

Similarly, for domestic priority under 35 U.S.C. 120:

“Under 35 U.S.C. 120, the claims in a U.S. application are entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier filed application.”

In essence, to claim priority, the earlier application (foreign, provisional, or U.S.) must provide adequate written description support for the claims in the later application. This ensures that the applicant had possession of the claimed invention at the time of the earlier filing.

To learn more:

• priority claims
• written description
• foreign priority
• provisional applications
• continuation 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:

• continuation applications
• new matter
• USPTO
• MPEP 608.04

To learn more:

• MPEP 608.04

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:

• 37 CFR 1.53(b)

Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03:

“Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the corresponding foreign application or provisional application supports the claims in the manner required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”

Similarly, for domestic priority under 35 U.S.C. 120:

“Under 35 U.S.C. 120, the claims in a U.S. application are entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph in the earlier filed application.”

In essence, to claim priority, the earlier application (foreign, provisional, or U.S.) must provide adequate written description support for the claims in the later application. This ensures that the applicant had possession of the claimed invention at the time of the earlier filing.

To learn more:

• priority claims
• written description
• foreign priority
• provisional applications
• continuation 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:

• continuation applications
• new matter
• USPTO
• MPEP 608.04

To learn more:

• MPEP 608.04