Patent Law FAQ

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.

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

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

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

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

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The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

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.

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.

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

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

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

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

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The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

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.

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that claim priority to an earlier filed application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07: “A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.”
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the prior application.

The key difference is that a continuation application does not introduce new subject matter, while a CIP application does.

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A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application.

As stated in the MPEP:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

Key points about CIP applications:

• A CIP application may only be filed under 37 CFR 1.53(b).
• The CIP application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• A CIP application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
• The mere filing of a CIP application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending parent application.

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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.

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A continuation-in-part (CIP) application has specific filing requirements. Key points include:

• A CIP application can only be filed under 37 CFR 1.53(b).
• It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance).
• The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• For applications filed on or after September 16, 2012, the benefit claim must be in an application data sheet (ADS).
• The CIP must have at least one common inventor with the prior application.
• New matter can be added to the specification, but claims relying on this new matter will not get the benefit of the earlier filing date.

As stated in the MPEP:

A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

It’s important to note that while a CIP allows for the addition of new matter, any claims that rely on this new matter will only be entitled to the filing date of the CIP application, not the earlier filing date of the parent application.

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

According to MPEP ¶ 2.10.01:

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

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

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

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

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

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

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

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

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

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

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

For continuation and divisional applications:

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

For continuation-in-part applications:

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

As stated in MPEP 211.05:

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

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

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

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

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

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

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

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

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A divisional application discloses and claims only subject matter disclosed in the parent application, while a continuation-in-part (CIP) application may include new matter. The MPEP states:

A continuation-in-part application should not be designated as a divisional application. The Court of Appeals for the Federal Circuit has concluded that the protection of the third sentence of 35 U.S.C. 121 does not extend to continuation-in-part applications, stating that ‘the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.’

This means that divisional applications have certain protections against double patenting rejections that CIPs do not have.

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

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

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

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

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

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The treatment of continuation-in-part (CIP) applications changed significantly after the deletion of 37 CFR 1.62. According to the MPEP: “A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or divisional of an application having a filing date before June 8, 1995, will be treated as an improper application.” This means that CIP applications can no longer be filed under the former File Wrapper Continuing Procedure and must be filed as new applications.

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Continuation-in-part (CIP) applications filed under former 37 CFR 1.62 on or after December 1, 1997, are treated as improper applications, regardless of the original application’s filing date.

The MPEP specifically states: A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or divisional of an application having a filing date before June 8, 1995, will be treated as an improper application.

This means that applicants seeking to file a CIP application after December 1, 1997, would need to use a different filing procedure, such as filing a new application under 37 CFR 1.53(b).

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For continuation-in-part (CIP) applications, the MPEP states: “A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application… will be treated as an improper application.”

This means that after the deletion of 37 CFR 1.62, CIP applications can no longer be filed using the former File Wrapper Continuing Procedure. Applicants seeking to file a CIP application must do so through the standard application process outlined in MPEP 201.06(d).

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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.

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For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:

• An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

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

Key points to note:

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

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

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

The MPEP states: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

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

A ‘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.”

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

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

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

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

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

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

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

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

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

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

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

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

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

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

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

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

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

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

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

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.

For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:

• An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

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

Key points to note:

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

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

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

The MPEP states: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

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

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that claim priority to an earlier filed application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07: “A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.”
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the prior application.

The key difference is that a continuation application does not introduce new subject matter, while a CIP application does.

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A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application.

As stated in the MPEP:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

Key points about CIP applications:

• A CIP application may only be filed under 37 CFR 1.53(b).
• The CIP application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• A CIP application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
• The mere filing of a CIP application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending parent application.

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

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

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

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

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

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

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

A continuation-in-part (CIP) application has specific filing requirements. Key points include:

• A CIP application can only be filed under 37 CFR 1.53(b).
• It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance).
• The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• For applications filed on or after September 16, 2012, the benefit claim must be in an application data sheet (ADS).
• The CIP must have at least one common inventor with the prior application.
• New matter can be added to the specification, but claims relying on this new matter will not get the benefit of the earlier filing date.

As stated in the MPEP:

A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

It’s important to note that while a CIP allows for the addition of new matter, any claims that rely on this new matter will only be entitled to the filing date of the CIP application, not the earlier filing date of the parent application.

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

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

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

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

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

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

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

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

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

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

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

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

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

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

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

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The treatment of continuation-in-part (CIP) applications changed significantly after the deletion of 37 CFR 1.62. According to the MPEP: “A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or divisional of an application having a filing date before June 8, 1995, will be treated as an improper application.” This means that CIP applications can no longer be filed under the former File Wrapper Continuing Procedure and must be filed as new applications.

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For continuation-in-part (CIP) applications, the MPEP states: “A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application… will be treated as an improper application.”

This means that after the deletion of 37 CFR 1.62, CIP applications can no longer be filed using the former File Wrapper Continuing Procedure. Applicants seeking to file a CIP application must do so through the standard application process outlined in MPEP 201.06(d).

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

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

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

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

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

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

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

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

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

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

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

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

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.

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.”

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

According to MPEP ¶ 2.10.01:

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

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

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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.

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

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

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

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

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The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

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.

For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:

• An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

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

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

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

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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.

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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.

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

Key points to note:

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

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

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

The MPEP states: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

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

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

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

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

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that claim priority to an earlier filed application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07: “A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.”
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the prior application.

The key difference is that a continuation application does not introduce new subject matter, while a CIP application does.

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

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

A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application.

As stated in the MPEP:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

Key points about CIP applications:

• A CIP application may only be filed under 37 CFR 1.53(b).
• The CIP application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• A CIP application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
• The mere filing of a CIP application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

A ‘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.”

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.

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For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:

• If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
• If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.

The MPEP further states:

“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”

When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.

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

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

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

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

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

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

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.

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Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

A continuation-in-part (CIP) application has specific filing requirements. Key points include:

• A CIP application can only be filed under 37 CFR 1.53(b).
• It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance).
• The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• For applications filed on or after September 16, 2012, the benefit claim must be in an application data sheet (ADS).
• The CIP must have at least one common inventor with the prior application.
• New matter can be added to the specification, but claims relying on this new matter will not get the benefit of the earlier filing date.

As stated in the MPEP:

A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

It’s important to note that while a CIP allows for the addition of new matter, any claims that rely on this new matter will only be entitled to the filing date of the CIP application, not the earlier filing date of the parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

According to MPEP ¶ 2.10.01:

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

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

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

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

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

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

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

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

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

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

For continuation and divisional applications:

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

For continuation-in-part applications:

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

As stated in MPEP 211.05:

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

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

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The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

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

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

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

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

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

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

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

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on CPA, visit: CPA.

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

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

A divisional application discloses and claims only subject matter disclosed in the parent application, while a continuation-in-part (CIP) application may include new matter. The MPEP states:

A continuation-in-part application should not be designated as a divisional application. The Court of Appeals for the Federal Circuit has concluded that the protection of the third sentence of 35 U.S.C. 121 does not extend to continuation-in-part applications, stating that ‘the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.’

This means that divisional applications have certain protections against double patenting rejections that CIPs do not have.

To learn more:

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

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

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

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

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

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

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

The treatment of continuation-in-part (CIP) applications changed significantly after the deletion of 37 CFR 1.62. According to the MPEP: “A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or divisional of an application having a filing date before June 8, 1995, will be treated as an improper application.” This means that CIP applications can no longer be filed under the former File Wrapper Continuing Procedure and must be filed as new applications.

For more information on continuation-in-part application, visit: continuation-in-part application.

Continuation-in-part (CIP) applications filed under former 37 CFR 1.62 on or after December 1, 1997, are treated as improper applications, regardless of the original application’s filing date.

The MPEP specifically states: A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or divisional of an application having a filing date before June 8, 1995, will be treated as an improper application.

This means that applicants seeking to file a CIP application after December 1, 1997, would need to use a different filing procedure, such as filing a new application under 37 CFR 1.53(b).

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• Continuation-in-Part Application
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• 37 CFR 1.62

For continuation-in-part (CIP) applications, the MPEP states: “A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application… will be treated as an improper application.”

This means that after the deletion of 37 CFR 1.62, CIP applications can no longer be filed using the former File Wrapper Continuing Procedure. Applicants seeking to file a CIP application must do so through the standard application process outlined in MPEP 201.06(d).

For more information on continuation-in-part application, visit: continuation-in-part application.

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.

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

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

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

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

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

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

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

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

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

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

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

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

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.

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:

• continuation-in-part application
• provisional application
• benefit claim
• priority date

For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if:

• An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application
• A copy of the executed oath/declaration from the earlier application is submitted in the continuing application showing it was executed

However, a newly executed inventor’s oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application (37 CFR 1.63(d)(3)).

For continuing applications filed before 9/16/2012, a newly executed oath or declaration is required unless a copy of the executed oath or declaration filed in the prior application is submitted with certain other requirements met (see pre-AIA 37 CFR 1.63(d)).

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

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

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

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• declaration
• continuation application
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• inventorship

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:

• continuation-in-part application
• CIP
• oath
• declaration
• new matter

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.

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

Key points to note:

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

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

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

The MPEP states: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

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

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

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

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

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that claim priority to an earlier filed application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07: “A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.”
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the prior application.

The key difference is that a continuation application does not introduce new subject matter, while a CIP application does.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application.

As stated in the MPEP:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

Key points about CIP applications:

• A CIP application may only be filed under 37 CFR 1.53(b).
• The CIP application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• A CIP application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
• The mere filing of a CIP application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

A ‘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.”

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:

• continuation-in-part application
• new matter
• prior art
• effective filing date
• parent application

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:

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

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

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

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

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

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

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:

• oath
• declaration
• continuation-in-part application
• CIP
• duty to disclose

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

A continuation-in-part (CIP) application has specific filing requirements. Key points include:

• A CIP application can only be filed under 37 CFR 1.53(b).
• It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance).
• The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• For applications filed on or after September 16, 2012, the benefit claim must be in an application data sheet (ADS).
• The CIP must have at least one common inventor with the prior application.
• New matter can be added to the specification, but claims relying on this new matter will not get the benefit of the earlier filing date.

As stated in the MPEP:

A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

It’s important to note that while a CIP allows for the addition of new matter, any claims that rely on this new matter will only be entitled to the filing date of the CIP application, not the earlier filing date of the parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

According to MPEP ¶ 2.10.01:

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

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

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

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

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

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

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

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

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

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

For continuation and divisional applications:

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

For continuation-in-part applications:

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

As stated in MPEP 211.05:

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

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

To learn more:

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

The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:

If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

In essence:

• For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
• For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.

This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.

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

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

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

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

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

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

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

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on CPA, visit: CPA.

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

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

A divisional application discloses and claims only subject matter disclosed in the parent application, while a continuation-in-part (CIP) application may include new matter. The MPEP states:

A continuation-in-part application should not be designated as a divisional application. The Court of Appeals for the Federal Circuit has concluded that the protection of the third sentence of 35 U.S.C. 121 does not extend to continuation-in-part applications, stating that ‘the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.’

This means that divisional applications have certain protections against double patenting rejections that CIPs do not have.

To learn more:

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

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

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

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

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

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

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

The treatment of continuation-in-part (CIP) applications changed significantly after the deletion of 37 CFR 1.62. According to the MPEP: “A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or divisional of an application having a filing date before June 8, 1995, will be treated as an improper application.” This means that CIP applications can no longer be filed under the former File Wrapper Continuing Procedure and must be filed as new applications.

For more information on continuation-in-part application, visit: continuation-in-part application.

Continuation-in-part (CIP) applications filed under former 37 CFR 1.62 on or after December 1, 1997, are treated as improper applications, regardless of the original application’s filing date.

The MPEP specifically states: A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or divisional of an application having a filing date before June 8, 1995, will be treated as an improper application.

This means that applicants seeking to file a CIP application after December 1, 1997, would need to use a different filing procedure, such as filing a new application under 37 CFR 1.53(b).

To learn more:

• Continuation-in-Part Application
• CIP
• 37 CFR 1.62
• Improper Application

To learn more:

• 37 CFR 1.62

For continuation-in-part (CIP) applications, the MPEP states: “A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application… will be treated as an improper application.”

This means that after the deletion of 37 CFR 1.62, CIP applications can no longer be filed using the former File Wrapper Continuing Procedure. Applicants seeking to file a CIP application must do so through the standard application process outlined in MPEP 201.06(d).

For more information on continuation-in-part application, visit: continuation-in-part application.

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.

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

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

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

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

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

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

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

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

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

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

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

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

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.

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:

• continuation-in-part application
• provisional application
• benefit claim
• priority date