Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (12)
Filing dates are crucial in patent law as they establish priority and can affect the patentability of an invention. The MPEP 201.02 discusses various application types and their relationship to filing dates:
- Original applications (including first filings and continuing applications) generally retain their filing date for priority purposes.
- Continuing applications (continuations, divisionals, and continuations-in-part) can benefit from the filing date of the parent application under specific conditions outlined in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
- Substitute applications, however, do not obtain the benefit of the filing date of the prior application.
The MPEP states:
A substitute application does not obtain the benefit of the filing date of the prior application.This emphasizes the importance of maintaining active applications and understanding the implications of different application types on priority dates.
For more information on continuing applications, visit: continuing applications.
For more information on patent applications, visit: patent applications.
A continuation application and a divisional application are both types of continuing applications, but they serve different purposes:
- Continuation application: Used to pursue additional claims to an invention disclosed in a prior application. It contains the same disclosure as the parent application.
- Divisional application: Used to pursue claims to an invention that was disclosed but not claimed in a prior application. It typically results from a restriction requirement in the parent application.
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.” In contrast, a divisional application focuses on a distinct invention that was not claimed in the parent application.
To learn more:
Copendency refers to the requirement that a later-filed application claiming the benefit of a prior-filed nonprovisional application must be filed before:
- (A) the patenting of the prior application;
- (B) the abandonment of the prior application; or
- (C) the termination of proceedings in the prior application.
As stated in MPEP 211.01(b):
“If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application.”
This means that to maintain copendency, applicants should file any continuing applications no later than the date the issue fee is paid for the prior application.
To learn more:
According to MPEP 201.02, there are several types of patent applications:
- National applications
- Provisional applications
- Nonprovisional applications
- International applications
- International design applications
The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.
For more information on continuing applications, visit: continuing applications.
For more information on international applications, visit: international applications.
For more information on international design applications, visit: international design applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on patent applications, visit: patent applications.
Inventorship in a continuing application depends on the type of continuing application and when it was filed. Key points:
- For applications filed on or after September 16, 2012, the inventorship is initially the inventor(s) named in the application data sheet
- For earlier applications, the inventorship carries over from the parent application
- In a continuation or divisional, the inventorship must include at least one inventor named in the parent application
- In a continuation-in-part, new inventors can be added to cover new matter
- Inventorship can be corrected if needed using procedures under 37 CFR 1.48
For CPAs filed on or after September 16, 2012, the MPEP states: The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.
If the inventorship needs to be changed, a request under 37 CFR 1.48 must be filed.
For more information on application data sheet, visit: application data sheet.
For more information on continuing applications, visit: continuing applications.
For more information on inventorship, visit: inventorship.
Continuity in patent applications refers to the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The MPEP 211.01(b) states:
“The term ‘continuity’ is used to express the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common.”
Continuing applications include:
- Divisional applications
- Continuation applications
- Continuation-in-part applications
It’s important to note that the prior application may disclose more than the later-filed application, or vice versa. In either case, the later-filed application is entitled to the benefit of the filing date of the prior application for the common subject matter disclosed in compliance with 35 U.S.C. 112(a).
To learn more:
How does a divisional application differ from other continuing applications?
A divisional application is a unique type of continuing application that focuses on a distinct invention separated from a parent application. According to the MPEP:
A divisional application is one filed for an invention which has been disclosed and claimed, but not allowed, in a prior nonprovisional application or international application designating the United States. It is a later application for an independent and distinct invention carved out of a pending application.(MPEP 201.02)
Key differences of a divisional application include:
- It is filed in response to a restriction requirement in the parent application
- It claims only subject matter that was disclosed but not claimed in the parent application
- It does not add new matter
- It allows the applicant to pursue protection for inventions that were deemed distinct in the original application
Unlike continuations or CIPs, divisional applications are specifically for pursuing separate inventions identified during the examination of the parent application.
To learn more:
A Continued Prosecution Application (CPA) differs from other types of continuing applications in several ways:
- CPAs are only available for design applications, not utility applications.
- Filing a CPA automatically establishes the necessary reference to the prior application under 35 U.S.C. 120, without needing to amend the specification.
- CPAs are processed differently from other continuing applications, as outlined in MPEP ยง 201.06(d).
The MPEP states: ‘As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.’ This unique feature distinguishes CPAs from other types of continuing applications, such as continuations or divisionals, which may require explicit references in the specification.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on patent application types, visit: patent application types.
A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:
A ‘continued prosecution application’ (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.
Key differences of CPAs compared to other continuing applications:
- Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
- Automatic abandonment: Filing a CPA automatically abandons the prior application.
- Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
- Examination continuation: The examination process continues from where it left off in the parent application.
It’s important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).
For more information on continued prosecution application, visit: continued prosecution application.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
A continuation-in-part (CIP) application is a type of continuing application that differs from a regular continuation in its content and priority claims. According to MPEP 201.08:
‘A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.’
Key differences between CIP and regular continuation applications:
- New Matter: CIPs include new subject matter not present in the parent application, while regular continuations do not.
- Priority Date: CIPs have different priority dates for different parts of the disclosure. The new matter gets the CIP’s filing date, while common subject matter retains the parent’s filing date.
- Examination: CIPs are examined for both the old and new subject matter, potentially requiring additional prior art searches.
- Term: The patent term for a CIP may be affected by the new subject matter’s later filing date.
CIPs are useful when inventors want to add new improvements or developments to their original invention while maintaining the priority date for the original subject matter.
For more information on continuing applications, visit: continuing applications.
Can I file a priority claim in a continuing application?
Yes, you can file a priority claim in a continuing application, but there are specific requirements and deadlines to consider. According to MPEP 214.01, “In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.” This means that even in a continuing application, you must adhere to the time limits for filing the priority claim. It’s important to note that the priority claim must be made in each continuing application; a priority claim in a parent application does not automatically carry over to child applications.
Can I file a divisional-continuation application?
Yes, you can file a divisional-continuation application, which is a hybrid type of continuing application. This type of application combines aspects of both divisional and continuation applications.
According to MPEP 201.06(c): “The disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.” However, a divisional-continuation can include both claims to a distinct invention (like a divisional) and additional claims to the invention disclosed in the parent (like a continuation).
When filing such an application, it’s crucial to:
- Ensure that the claims are properly grouped
- Clearly indicate which claims are divisional and which are continuation
- Comply with all requirements for both divisional and continuation applications
Always consult with a patent attorney or agent to determine the best filing strategy for your specific situation.
For more information on continuing applications, visit: continuing applications.
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)
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)).
MPEP 201 - Types of Applications (8)
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 dates are crucial in patent law as they establish priority and can affect the patentability of an invention. The MPEP 201.02 discusses various application types and their relationship to filing dates:
- Original applications (including first filings and continuing applications) generally retain their filing date for priority purposes.
- Continuing applications (continuations, divisionals, and continuations-in-part) can benefit from the filing date of the parent application under specific conditions outlined in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
- Substitute applications, however, do not obtain the benefit of the filing date of the prior application.
The MPEP states:
A substitute application does not obtain the benefit of the filing date of the prior application.
This emphasizes the importance of maintaining active applications and understanding the implications of different application types on priority dates.
For more information on continuing applications, visit: continuing applications.
For more information on patent applications, visit: patent applications.
According to MPEP 201.02, there are several types of patent applications:
- National applications
- Provisional applications
- Nonprovisional applications
- International applications
- International design applications
The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.
For more information on continuing applications, visit: continuing applications.
For more information on international applications, visit: international applications.
For more information on international design applications, visit: international design applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on patent applications, visit: patent applications.
Inventorship in a continuing application depends on the type of continuing application and when it was filed. Key points:
- For applications filed on or after September 16, 2012, the inventorship is initially the inventor(s) named in the application data sheet
- For earlier applications, the inventorship carries over from the parent application
- In a continuation or divisional, the inventorship must include at least one inventor named in the parent application
- In a continuation-in-part, new inventors can be added to cover new matter
- Inventorship can be corrected if needed using procedures under 37 CFR 1.48
For CPAs filed on or after September 16, 2012, the MPEP states: The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.
If the inventorship needs to be changed, a request under 37 CFR 1.48 must be filed.
For more information on application data sheet, visit: application data sheet.
For more information on continuing applications, visit: continuing applications.
For more information on inventorship, visit: inventorship.
A Continued Prosecution Application (CPA) differs from other types of continuing applications in several ways:
- CPAs are only available for design applications, not utility applications.
- Filing a CPA automatically establishes the necessary reference to the prior application under 35 U.S.C. 120, without needing to amend the specification.
- CPAs are processed differently from other continuing applications, as outlined in MPEP ยง 201.06(d).
The MPEP states: ‘As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.’ This unique feature distinguishes CPAs from other types of continuing applications, such as continuations or divisionals, which may require explicit references in the specification.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on patent application types, visit: patent application types.
A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:
A ‘continued prosecution application’ (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.
Key differences of CPAs compared to other continuing applications:
- Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
- Automatic abandonment: Filing a CPA automatically abandons the prior application.
- Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
- Examination continuation: The examination process continues from where it left off in the parent application.
It’s important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).
For more information on continued prosecution application, visit: continued prosecution application.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
A continuation-in-part (CIP) application is a type of continuing application that differs from a regular continuation in its content and priority claims. According to MPEP 201.08:
‘A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.’
Key differences between CIP and regular continuation applications:
- New Matter: CIPs include new subject matter not present in the parent application, while regular continuations do not.
- Priority Date: CIPs have different priority dates for different parts of the disclosure. The new matter gets the CIP’s filing date, while common subject matter retains the parent’s filing date.
- Examination: CIPs are examined for both the old and new subject matter, potentially requiring additional prior art searches.
- Term: The patent term for a CIP may be affected by the new subject matter’s later filing date.
CIPs are useful when inventors want to add new improvements or developments to their original invention while maintaining the priority date for the original subject matter.
For more information on continuing applications, visit: continuing applications.
Can I file a divisional-continuation application?
Yes, you can file a divisional-continuation application, which is a hybrid type of continuing application. This type of application combines aspects of both divisional and continuation applications.
According to MPEP 201.06(c): “The disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.” However, a divisional-continuation can include both claims to a distinct invention (like a divisional) and additional claims to the invention disclosed in the parent (like a continuation).
When filing such an application, it’s crucial to:
- Ensure that the claims are properly grouped
- Clearly indicate which claims are divisional and which are continuation
- Comply with all requirements for both divisional and continuation applications
Always consult with a patent attorney or agent to determine the best filing strategy for your specific situation.
For more information on continuing applications, visit: continuing applications.
MPEP 214-Formal Requirements of Claim for Foreign Priority (1)
Can I file a priority claim in a continuing application?
Yes, you can file a priority claim in a continuing application, but there are specific requirements and deadlines to consider. According to MPEP 214.01, “In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.” This means that even in a continuing application, you must adhere to the time limits for filing the priority claim. It’s important to note that the priority claim must be made in each continuing application; a priority claim in a parent application does not automatically carry over to child applications.
MPEP 300 - Ownership and Assignment (1)
For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:
- The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
- A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.
For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.
In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.
This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”
MPEP 400 - Representative of Applicant or Owner (1)
For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:
- A copy of the power of attorney from the prior application is filed in the continuing application
- The power of attorney was not granted by the inventor
- The continuing application does not name an inventor who was not named in the prior application
MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”
If these conditions are not met, a new power of attorney will need to be filed in the continuing application.
MPEP 402 - Power of Attorney; Naming Representative (1)
For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:
- A copy of the power of attorney from the prior application is filed in the continuing application
- The power of attorney was not granted by the inventor
- The continuing application does not name an inventor who was not named in the prior application
MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”
If these conditions are not met, a new power of attorney will need to be filed in the continuing application.
Patent Law (16)
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 dates are crucial in patent law as they establish priority and can affect the patentability of an invention. The MPEP 201.02 discusses various application types and their relationship to filing dates:
- Original applications (including first filings and continuing applications) generally retain their filing date for priority purposes.
- Continuing applications (continuations, divisionals, and continuations-in-part) can benefit from the filing date of the parent application under specific conditions outlined in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
- Substitute applications, however, do not obtain the benefit of the filing date of the prior application.
The MPEP states:
A substitute application does not obtain the benefit of the filing date of the prior application.
This emphasizes the importance of maintaining active applications and understanding the implications of different application types on priority dates.
For more information on continuing applications, visit: continuing applications.
For more information on patent applications, visit: patent applications.
A continuation application and a divisional application are both types of continuing applications, but they serve different purposes:
- Continuation application: Used to pursue additional claims to an invention disclosed in a prior application. It contains the same disclosure as the parent application.
- Divisional application: Used to pursue claims to an invention that was disclosed but not claimed in a prior application. It typically results from a restriction requirement in the parent application.
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.” In contrast, a divisional application focuses on a distinct invention that was not claimed in the parent application.
To learn more:
Copendency refers to the requirement that a later-filed application claiming the benefit of a prior-filed nonprovisional application must be filed before:
- (A) the patenting of the prior application;
- (B) the abandonment of the prior application; or
- (C) the termination of proceedings in the prior application.
As stated in MPEP 211.01(b):
“If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application.”
This means that to maintain copendency, applicants should file any continuing applications no later than the date the issue fee is paid for the prior application.
To learn more:
For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:
- A copy of the power of attorney from the prior application is filed in the continuing application
- The power of attorney was not granted by the inventor
- The continuing application does not name an inventor who was not named in the prior application
MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”
If these conditions are not met, a new power of attorney will need to be filed in the continuing application.
For continuing applications filed on or after September 16, 2012, the following requirements apply:
- A copy of an oath or declaration or substitute statement from the prior nonprovisional application can be used, provided it complies with 37 CFR 1.63 or 37 CFR 1.64.
- The oath or declaration must comply with 35 U.S.C. 115 and the relevant CFR sections in effect for applications filed on or after September 16, 2012.
- It must include a statement that the application was made or authorized to be made by the person executing the oath or declaration.
As stated in the MPEP, “a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012.”
To learn more:
According to MPEP 201.02, there are several types of patent applications:
- National applications
- Provisional applications
- Nonprovisional applications
- International applications
- International design applications
The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.
For more information on continuing applications, visit: continuing applications.
For more information on international applications, visit: international applications.
For more information on international design applications, visit: international design applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on patent applications, visit: patent applications.
For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:
- The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
- A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.
For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.
In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.
This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”
Inventorship in a continuing application depends on the type of continuing application and when it was filed. Key points:
- For applications filed on or after September 16, 2012, the inventorship is initially the inventor(s) named in the application data sheet
- For earlier applications, the inventorship carries over from the parent application
- In a continuation or divisional, the inventorship must include at least one inventor named in the parent application
- In a continuation-in-part, new inventors can be added to cover new matter
- Inventorship can be corrected if needed using procedures under 37 CFR 1.48
For CPAs filed on or after September 16, 2012, the MPEP states: The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.
If the inventorship needs to be changed, a request under 37 CFR 1.48 must be filed.
For more information on application data sheet, visit: application data sheet.
For more information on continuing applications, visit: continuing applications.
For more information on inventorship, visit: inventorship.
Continuity in patent applications refers to the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The MPEP 211.01(b) states:
“The term ‘continuity’ is used to express the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common.”
Continuing applications include:
- Divisional applications
- Continuation applications
- Continuation-in-part applications
It’s important to note that the prior application may disclose more than the later-filed application, or vice versa. In either case, the later-filed application is entitled to the benefit of the filing date of the prior application for the common subject matter disclosed in compliance with 35 U.S.C. 112(a).
To learn more:
How does a divisional application differ from other continuing applications?
A divisional application is a unique type of continuing application that focuses on a distinct invention separated from a parent application. According to the MPEP:
A divisional application is one filed for an invention which has been disclosed and claimed, but not allowed, in a prior nonprovisional application or international application designating the United States. It is a later application for an independent and distinct invention carved out of a pending application.(MPEP 201.02)
Key differences of a divisional application include:
- It is filed in response to a restriction requirement in the parent application
- It claims only subject matter that was disclosed but not claimed in the parent application
- It does not add new matter
- It allows the applicant to pursue protection for inventions that were deemed distinct in the original application
Unlike continuations or CIPs, divisional applications are specifically for pursuing separate inventions identified during the examination of the parent application.
To learn more:
A Continued Prosecution Application (CPA) differs from other types of continuing applications in several ways:
- CPAs are only available for design applications, not utility applications.
- Filing a CPA automatically establishes the necessary reference to the prior application under 35 U.S.C. 120, without needing to amend the specification.
- CPAs are processed differently from other continuing applications, as outlined in MPEP ยง 201.06(d).
The MPEP states: ‘As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.’ This unique feature distinguishes CPAs from other types of continuing applications, such as continuations or divisionals, which may require explicit references in the specification.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on patent application types, visit: patent application types.
A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:
A ‘continued prosecution application’ (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.
Key differences of CPAs compared to other continuing applications:
- Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
- Automatic abandonment: Filing a CPA automatically abandons the prior application.
- Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
- Examination continuation: The examination process continues from where it left off in the parent application.
It’s important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).
For more information on continued prosecution application, visit: continued prosecution application.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
A continuation-in-part (CIP) application is a type of continuing application that differs from a regular continuation in its content and priority claims. According to MPEP 201.08:
‘A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.’
Key differences between CIP and regular continuation applications:
- New Matter: CIPs include new subject matter not present in the parent application, while regular continuations do not.
- Priority Date: CIPs have different priority dates for different parts of the disclosure. The new matter gets the CIP’s filing date, while common subject matter retains the parent’s filing date.
- Examination: CIPs are examined for both the old and new subject matter, potentially requiring additional prior art searches.
- Term: The patent term for a CIP may be affected by the new subject matter’s later filing date.
CIPs are useful when inventors want to add new improvements or developments to their original invention while maintaining the priority date for the original subject matter.
For more information on continuing applications, visit: continuing applications.
Can I file a priority claim in a continuing application?
Yes, you can file a priority claim in a continuing application, but there are specific requirements and deadlines to consider. According to MPEP 214.01, “In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.” This means that even in a continuing application, you must adhere to the time limits for filing the priority claim. It’s important to note that the priority claim must be made in each continuing application; a priority claim in a parent application does not automatically carry over to child applications.
Can I file a divisional-continuation application?
Yes, you can file a divisional-continuation application, which is a hybrid type of continuing application. This type of application combines aspects of both divisional and continuation applications.
According to MPEP 201.06(c): “The disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.” However, a divisional-continuation can include both claims to a distinct invention (like a divisional) and additional claims to the invention disclosed in the parent (like a continuation).
When filing such an application, it’s crucial to:
- Ensure that the claims are properly grouped
- Clearly indicate which claims are divisional and which are continuation
- Comply with all requirements for both divisional and continuation applications
Always consult with a patent attorney or agent to determine the best filing strategy for your specific situation.
For more information on continuing applications, visit: continuing applications.
Patent Procedure (16)
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 dates are crucial in patent law as they establish priority and can affect the patentability of an invention. The MPEP 201.02 discusses various application types and their relationship to filing dates:
- Original applications (including first filings and continuing applications) generally retain their filing date for priority purposes.
- Continuing applications (continuations, divisionals, and continuations-in-part) can benefit from the filing date of the parent application under specific conditions outlined in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
- Substitute applications, however, do not obtain the benefit of the filing date of the prior application.
The MPEP states:
A substitute application does not obtain the benefit of the filing date of the prior application.
This emphasizes the importance of maintaining active applications and understanding the implications of different application types on priority dates.
For more information on continuing applications, visit: continuing applications.
For more information on patent applications, visit: patent applications.
A continuation application and a divisional application are both types of continuing applications, but they serve different purposes:
- Continuation application: Used to pursue additional claims to an invention disclosed in a prior application. It contains the same disclosure as the parent application.
- Divisional application: Used to pursue claims to an invention that was disclosed but not claimed in a prior application. It typically results from a restriction requirement in the parent application.
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.” In contrast, a divisional application focuses on a distinct invention that was not claimed in the parent application.
To learn more:
Copendency refers to the requirement that a later-filed application claiming the benefit of a prior-filed nonprovisional application must be filed before:
- (A) the patenting of the prior application;
- (B) the abandonment of the prior application; or
- (C) the termination of proceedings in the prior application.
As stated in MPEP 211.01(b):
“If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application.”
This means that to maintain copendency, applicants should file any continuing applications no later than the date the issue fee is paid for the prior application.
To learn more:
For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application may have effect in a continuing application if:
- A copy of the power of attorney from the prior application is filed in the continuing application
- The power of attorney was not granted by the inventor
- The continuing application does not name an inventor who was not named in the prior application
MPEP 402.02(a) states: “37 CFR 1.32(d) specifically requires that a copy of the power of attorney from the prior application be filed in the continuing application to have effect (even where a change in power did not occur in the prior application).”
If these conditions are not met, a new power of attorney will need to be filed in the continuing application.
For continuing applications filed on or after September 16, 2012, the following requirements apply:
- A copy of an oath or declaration or substitute statement from the prior nonprovisional application can be used, provided it complies with 37 CFR 1.63 or 37 CFR 1.64.
- The oath or declaration must comply with 35 U.S.C. 115 and the relevant CFR sections in effect for applications filed on or after September 16, 2012.
- It must include a statement that the application was made or authorized to be made by the person executing the oath or declaration.
As stated in the MPEP, “a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012.”
To learn more:
According to MPEP 201.02, there are several types of patent applications:
- National applications
- Provisional applications
- Nonprovisional applications
- International applications
- International design applications
The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.
For more information on continuing applications, visit: continuing applications.
For more information on international applications, visit: international applications.
For more information on international design applications, visit: international design applications.
For more information on nonprovisional applications, visit: nonprovisional applications.
For more information on patent applications, visit: patent applications.
For continuing applications (continuation or divisional) filed under 37 CFR 1.53(b) before September 16, 2012, ownership can be established in one of two ways:
- The application papers can contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application.
- A newly executed statement under pre-AIA 37 CFR 3.73(b) can be filed with the continuing application.
For continuation-in-part applications filed before September 16, 2012, a newly executed statement under pre-AIA 37 CFR 3.73(b) must be filed.
In the case of design applications where a continued prosecution application (CPA) is filed under 37 CFR 1.53(d), the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.
This is outlined in MPEP 324, section III, which states: “When an assignee files a continuation or divisional application under 37 CFR 1.53(b) before September 16, 2012, the application papers must: (A) contain a copy of a statement filed under pre-AIA 37 CFR 3.73(b) in the parent application; or (B) contain a newly executed statement under pre-AIA 37 CFR 3.73(b).”
Inventorship in a continuing application depends on the type of continuing application and when it was filed. Key points:
- For applications filed on or after September 16, 2012, the inventorship is initially the inventor(s) named in the application data sheet
- For earlier applications, the inventorship carries over from the parent application
- In a continuation or divisional, the inventorship must include at least one inventor named in the parent application
- In a continuation-in-part, new inventors can be added to cover new matter
- Inventorship can be corrected if needed using procedures under 37 CFR 1.48
For CPAs filed on or after September 16, 2012, the MPEP states: The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application.
If the inventorship needs to be changed, a request under 37 CFR 1.48 must be filed.
For more information on application data sheet, visit: application data sheet.
For more information on continuing applications, visit: continuing applications.
For more information on inventorship, visit: inventorship.
Continuity in patent applications refers to the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The MPEP 211.01(b) states:
“The term ‘continuity’ is used to express the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common.”
Continuing applications include:
- Divisional applications
- Continuation applications
- Continuation-in-part applications
It’s important to note that the prior application may disclose more than the later-filed application, or vice versa. In either case, the later-filed application is entitled to the benefit of the filing date of the prior application for the common subject matter disclosed in compliance with 35 U.S.C. 112(a).
To learn more:
How does a divisional application differ from other continuing applications?
A divisional application is a unique type of continuing application that focuses on a distinct invention separated from a parent application. According to the MPEP:
A divisional application is one filed for an invention which has been disclosed and claimed, but not allowed, in a prior nonprovisional application or international application designating the United States. It is a later application for an independent and distinct invention carved out of a pending application.(MPEP 201.02)
Key differences of a divisional application include:
- It is filed in response to a restriction requirement in the parent application
- It claims only subject matter that was disclosed but not claimed in the parent application
- It does not add new matter
- It allows the applicant to pursue protection for inventions that were deemed distinct in the original application
Unlike continuations or CIPs, divisional applications are specifically for pursuing separate inventions identified during the examination of the parent application.
To learn more:
A Continued Prosecution Application (CPA) differs from other types of continuing applications in several ways:
- CPAs are only available for design applications, not utility applications.
- Filing a CPA automatically establishes the necessary reference to the prior application under 35 U.S.C. 120, without needing to amend the specification.
- CPAs are processed differently from other continuing applications, as outlined in MPEP ยง 201.06(d).
The MPEP states: ‘As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.’ This unique feature distinguishes CPAs from other types of continuing applications, such as continuations or divisionals, which may require explicit references in the specification.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
For more information on patent application types, visit: patent application types.
A Continued Prosecution Application (CPA) is a unique type of continuing application that has specific limitations. According to MPEP 201.02:
A ‘continued prosecution application’ (CPA) is a continuation or divisional application for an invention disclosed in a prior nonprovisional application filed under 37 CFR 1.53(b) or (d). A CPA can only be filed in a design application.
Key differences of CPAs compared to other continuing applications:
- Limited to design applications: CPAs can only be filed for design patents, not utility or plant patents.
- Automatic abandonment: Filing a CPA automatically abandons the prior application.
- Simplified filing: CPAs can be filed with fewer formalities than other continuing applications.
- Examination continuation: The examination process continues from where it left off in the parent application.
It’s important to note that CPAs are no longer available for utility or plant applications filed on or after May 29, 2000. For these types of applications, applicants must use other forms of continuing applications, such as RCEs (Requests for Continued Examination).
For more information on continued prosecution application, visit: continued prosecution application.
For more information on continuing applications, visit: continuing applications.
For more information on CPA, visit: CPA.
For more information on design patents, visit: design patents.
A continuation-in-part (CIP) application is a type of continuing application that differs from a regular continuation in its content and priority claims. According to MPEP 201.08:
‘A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.’
Key differences between CIP and regular continuation applications:
- New Matter: CIPs include new subject matter not present in the parent application, while regular continuations do not.
- Priority Date: CIPs have different priority dates for different parts of the disclosure. The new matter gets the CIP’s filing date, while common subject matter retains the parent’s filing date.
- Examination: CIPs are examined for both the old and new subject matter, potentially requiring additional prior art searches.
- Term: The patent term for a CIP may be affected by the new subject matter’s later filing date.
CIPs are useful when inventors want to add new improvements or developments to their original invention while maintaining the priority date for the original subject matter.
For more information on continuing applications, visit: continuing applications.
Can I file a priority claim in a continuing application?
Yes, you can file a priority claim in a continuing application, but there are specific requirements and deadlines to consider. According to MPEP 214.01, “In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.” This means that even in a continuing application, you must adhere to the time limits for filing the priority claim. It’s important to note that the priority claim must be made in each continuing application; a priority claim in a parent application does not automatically carry over to child applications.
Can I file a divisional-continuation application?
Yes, you can file a divisional-continuation application, which is a hybrid type of continuing application. This type of application combines aspects of both divisional and continuation applications.
According to MPEP 201.06(c): “The disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.” However, a divisional-continuation can include both claims to a distinct invention (like a divisional) and additional claims to the invention disclosed in the parent (like a continuation).
When filing such an application, it’s crucial to:
- Ensure that the claims are properly grouped
- Clearly indicate which claims are divisional and which are continuation
- Comply with all requirements for both divisional and continuation applications
Always consult with a patent attorney or agent to determine the best filing strategy for your specific situation.
For more information on continuing applications, visit: continuing applications.