Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
'MPEP 306-Assignment of Division (2)
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
and Continuation-in-Part in Relation to Parent Application' (2)
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
MPEP 200 – Types and Status of Application; Benefit and Priority (2)
Can a continuation-in-part (CIP) application claim benefit to a provisional application?
Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:
“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”
However, it’s crucial to understand that:
- Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
- New matter added in the CIP will have the filing date of the CIP application itself.
- The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.
For more details on claiming benefit of provisional applications, see MPEP 211.
To learn more:
When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:
- Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
- Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
- The new matter may affect the application’s ability to overcome prior art references.
As stated in MPEP 211.05:
“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”
This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.
To learn more:
MPEP 200 – Types and Status of Application; Benefit and Priority Claims (4)
Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:
1. Continuations: A design application can be a continuation of a prior design application.
2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.
3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.
The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”
It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.
A ‘bypass’ application is:
- A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
- It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
- It can be filed as a continuation, divisional, or continuation-in-part of the international application
MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”
No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”
Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.
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 (3)
Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:
1. Continuations: A design application can be a continuation of a prior design application.
2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.
3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.
The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”
It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.
No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”
Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.
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 211 – Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)
A ‘bypass’ application is:
- A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
- It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
- It can be filed as a continuation, divisional, or continuation-in-part of the international application
MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”
MPEP 300 – Ownership and Assignment (2)
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
Patent Law (11)
Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:
1. Continuations: A design application can be a continuation of a prior design application.
2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.
3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.
The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”
It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
To learn more:
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 ‘bypass’ application is:
- A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
- It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
- It can be filed as a continuation, divisional, or continuation-in-part of the international application
MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”
Can a continuation-in-part (CIP) application claim benefit to a provisional application?
Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:
“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”
However, it’s crucial to understand that:
- Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
- New matter added in the CIP will have the filing date of the CIP application itself.
- The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.
For more details on claiming benefit of provisional applications, see MPEP 211.
To learn more:
A new oath or declaration is required for a continuation-in-part (CIP) application, and it must acknowledge the duty to disclose information material to patentability as defined in 37 CFR 1.56.
MPEP 602.02 states: ‘A new oath or declaration is required in a continuation-in-part application, which includes subject matter not disclosed in the prior nonprovisional application. See MPEP § 201.08 and § 602.’
The new oath or declaration in a CIP application should:
- Identify the application as a continuation-in-part
- Acknowledge the duty to disclose material information
- Cover the new subject matter introduced in the CIP
- Be signed by all inventors, including any new inventors added due to the new subject matter
It’s important to ensure that the new oath or declaration complies with all requirements of 37 CFR 1.63 to avoid potential issues during prosecution.
To learn more:
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”
Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.
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.
When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:
- Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
- Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
- The new matter may affect the application’s ability to overcome prior art references.
As stated in MPEP 211.05:
“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”
This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.
To learn more:
Patent Procedure (11)
Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:
1. Continuations: A design application can be a continuation of a prior design application.
2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.
3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.
The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”
It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:
Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
This means:
- For CIP applications filed before September 16, 2012: A new assignment is always required.
- For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.
The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.
When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
To learn more:
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 ‘bypass’ application is:
- A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b)
- It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371
- It can be filed as a continuation, divisional, or continuation-in-part of the international application
MPEP 211.01(c) explains: “Rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as ‘bypass’ applications.”
Can a continuation-in-part (CIP) application claim benefit to a provisional application?
Yes, a continuation-in-part (CIP) application can claim benefit to a provisional application, but there are important considerations regarding the disclosure and priority dates. The MPEP provides guidance on this:
“An applicant may claim the benefit of the filing date of a provisional application in a subsequent nonprovisional application or international application designating the United States if the nonprovisional application or international application designating the United States is filed within 12 months from the filing date of the provisional application.”
However, it’s crucial to understand that:
- Only the subject matter that was disclosed in the provisional application will receive the benefit of the provisional filing date.
- New matter added in the CIP will have the filing date of the CIP application itself.
- The applicant must comply with the requirements of 35 U.S.C. 119(e) and 37 CFR 1.78.
For more details on claiming benefit of provisional applications, see MPEP 211.
To learn more:
A new oath or declaration is required for a continuation-in-part (CIP) application, and it must acknowledge the duty to disclose information material to patentability as defined in 37 CFR 1.56.
MPEP 602.02 states: ‘A new oath or declaration is required in a continuation-in-part application, which includes subject matter not disclosed in the prior nonprovisional application. See MPEP § 201.08 and § 602.’
The new oath or declaration in a CIP application should:
- Identify the application as a continuation-in-part
- Acknowledge the duty to disclose material information
- Cover the new subject matter introduced in the CIP
- Be signed by all inventors, including any new inventors added due to the new subject matter
It’s important to ensure that the new oath or declaration complies with all requirements of 37 CFR 1.63 to avoid potential issues during prosecution.
To learn more:
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.
However, there is an exception for applications filed on or after September 16, 2012: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.
No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”
Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.
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.
When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:
- Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
- Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
- The new matter may affect the application’s ability to overcome prior art references.
As stated in MPEP 211.05:
“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”
This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.
To learn more: