Patent Law FAQ

Amendments to refer to Continued Prosecution Applications (CPAs) as continuation or divisional applications are not allowed because they are unnecessary and can potentially cause confusion. The MPEP ¶ 2.34 explains:

“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 means that the CPA itself already serves as the legally required reference to the prior application. Adding additional references through amendments is redundant and could potentially lead to inconsistencies or misinterpretations in the patent record.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

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

You should file a 37 CFR 1.48 request to correct inventorship in a Continued Prosecution Application (CPA) as soon as you realize there’s a need to add or remove an inventor. This should be done concurrently with or shortly after filing the CPA.

The MPEP ¶ 2.33 indicates:

Any request to add an inventor must be in the form of a request under 37 CFR 1.48.

It’s important to file this request promptly to ensure that the correct inventorship is recorded for your application. Failure to do so may result in the inventorship remaining the same as in the prior application, which could potentially affect the validity of your patent if granted.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

You should file a 37 CFR 1.48 request for a Continued Prosecution Application (CPA) whenever you need to add, remove, or change the order of inventors from the original application.

The MPEP ¶ 2.33 indicates: Any request to add an inventor must be in the form of a request under 37 CFR 1.48. This applies even if you’ve identified the new inventor in the CPA filing documents.

It’s best to file the 37 CFR 1.48 request as soon as you realize there’s a need to correct the inventorship. This ensures that the correct inventors are associated with the application throughout the examination process.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

Form Paragraph 2.35 should be used in specific circumstances during the patent examination process. According to the MPEP ¶ 2.35, this form paragraph is to be used:

in the first Office action of a CPA to advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established.

However, it’s important to note that this form paragraph should not be used in all situations. Specifically:

• It should only be used for design applications, as CPAs are only available for design applications.
• If the request for a CPA in a utility or plant application is improper and has been treated as an RCE (Request for Continued Examination), examiners should use form paragraph 7.42.15 instead.

Examiners should refer to MPEP § 706.07(h) for more information on handling improper CPA requests in utility or plant applications.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

A Continued Prosecution Application (CPA) is acceptable when it meets the requirements set forth in 37 CFR 1.53(d). According to MPEP § 201, the examiner will use specific language to indicate acceptance:

The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established.

It’s important to note that CPAs are now only available for design patent applications. For utility and plant applications, a Request for Continued Examination (RCE) would be used instead.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

A continuation application can be filed at various stages during the patent application process, as long as the parent application is still pending. The MPEP provides guidance on the timing:

“At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.”

It’s important to note that there are some exceptions for specific types of applications, such as continued prosecution applications (CPAs) for design applications, which have additional timing requirements.

To learn more:

• continuation application timing
• patent application process
• CPA
• design applications

Continued Prosecution Applications (CPAs) are limited to specific types of patent applications:

• Design Applications: CPAs are available for design applications filed before May 29, 2000.
• Plant Applications: CPAs can be used for plant patent applications.

It’s important to note that CPAs are not available for utility patent applications filed on or after May 29, 2000. For these applications, applicants should use a Request for Continued Examination (RCE) instead.

The MPEP ¶ 2.34 provides guidance on how CPAs reference prior applications:

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 means that for eligible applications, the CPA automatically establishes the necessary reference to the prior application without requiring amendments to the specification.

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.

For more information on plant patents, visit: plant patents.

A Continued Prosecution Application (CPA) can be filed for specific types of applications. According to MPEP 201.06(d):

Effective July 14, 2003, CPA practice under 37 CFR 1.53(d) is not available for utility and plant applications.

This means that CPAs are limited to:

• Design applications: Applications for design patents can be filed as CPAs.
• Continuation applications: These must be based on an earlier application of the same type (i.e., design).
• Divisional applications: These must also be based on an earlier design application.

It’s important to note that continuation-in-part (CIP) applications cannot be filed as CPAs. Additionally, utility and plant patent applications are no longer eligible for CPA practice since July 14, 2003.

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

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For a Continued Prosecution Application (CPA), the specific reference requirement under 35 U.S.C. 120 is satisfied by the CPA request itself. According to MPEP § 201.06(d):

“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 means that when you file a CPA request, it automatically serves as the required reference to the prior application under 35 U.S.C. 120. No additional amendments or references in the specification are necessary to establish this connection.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“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 means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

The filing date of a Continued Prosecution Application (CPA) is significant for several reasons. In the context of inventorship, the MPEP ¶ 2.33 mentions:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

The filing date [2] is important because:

• It establishes the effective date for the CPA.
• It determines the timeline for filing certain documents, such as inventor oaths or declarations.
• It affects the calculation of patent term adjustment.
• It’s used as a reference point for determining whether changes to inventorship were properly requested.

Always keep the CPA filing date in mind when managing patent application procedures and deadlines.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:

“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”

The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

The purpose of MPEP ¶ 2.33 is to provide guidance to patent examiners when they encounter a situation where a new inventor is identified in a Continued Prosecution Application (CPA) for design applications. It states:

Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA.

This paragraph helps examiners address situations where applicants have named new inventors in a CPA without following the proper procedure. It reminds both examiners and applicants that a formal request under 37 CFR 1.48 is required to change inventorship, even in a CPA.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

MPEP ¶ 2.32 provides guidance for patent examiners on how to acknowledge and process requests to delete a named inventor in Continued Prosecution Applications (CPAs) for design patents. The paragraph serves several purposes:

• It offers a standardized response for examiners to use when acknowledging the receipt of a request to delete an inventor.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and procedure for inventor deletion requests in CPAs.

The paragraph states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This standardized language ensures consistency in USPTO communications and helps applicants understand that their request has been processed successfully.

For more information on CPA, visit: CPA.

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

For more information on USPTO communication, visit: USPTO communication.

MPEP ¶ 2.32 provides guidance for patent examiners on how to respond to requests for deleting a named inventor in a Continued Prosecution Application (CPA) for design patents. The paragraph serves several purposes:

• It offers a template for examiners to acknowledge receipt of a statement requesting inventor deletion.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and requirements for inventorship changes in CPAs.

The paragraph states: Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This standardized language ensures consistent communication between the USPTO and applicants regarding inventorship changes in CPAs.

For more information on CPA, visit: CPA.

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

For more information on USPTO communication, visit: USPTO communication.

The proper procedure for correcting inventorship in a Continued Prosecution Application (CPA) is to file a request under 37 CFR 1.48. This applies whether you’re adding or removing an inventor. The MPEP guidance states: ‘Any request to add an inventor must be in the form of a request under 37 CFR 1.48.’ This formal request ensures that the USPTO properly processes and recognizes the change in inventorship.

For more information on CPA, visit: CPA.

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

The legal basis for denying amendments to Continued Prosecution Application (CPA) specifications that attempt to reference prior applications stems from both federal regulations and patent law. Specifically:

• 37 CFR 1.53(d)(7): This regulation establishes that a CPA request itself serves as the specific reference required by 35 U.S.C. 120.
• 35 U.S.C. 120: This statute outlines the requirements for claiming the benefit of an earlier filing date in the United States.

According to MPEP ¶ 2.34:

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. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.

This means that the CPA filing itself legally establishes the necessary connection to the prior application, making any specification amendment both redundant and impermissible.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

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

The filing date of a Continued Prosecution Application (CPA) is determined by when the request for the CPA is received by the USPTO. As stated in the MPEP, The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. This means that the CPA’s filing date is not the same as the filing date of the prior application, but rather the date when the USPTO receives the proper CPA request.

To learn more:

• CPA
• Filing Date
• Patent Application

What is the filing date for a Continued Prosecution Application (CPA)?

The filing date for a Continued Prosecution Application (CPA) is determined based on when it is filed. According to MPEP 201.06(d):

The filing date of a CPA is the date on which a request on a separate paper for an application under 37 CFR 1.53(d) is filed. A request for a CPA is a specific reference to the prior application as required by 35 U.S.C. 120.

This means that the CPA’s filing date is the day when the separate request for a CPA is submitted, not the filing date of the prior application. It’s important to note that this request must specifically reference the prior application to comply with 35 U.S.C. 120.

To learn more:

• CPA
• filing date
• Continued Prosecution Application
• 35 U.S.C. 120

To learn more:

• 35 U.S.C. 120

What is the effect of filing a CPA on pending appeals or interferences?

Filing a Continued Prosecution Application (CPA) has significant effects on pending appeals or interferences. According to MPEP 201.06(d):

The filing of a CPA is a specific request to expressly abandon the prior application as of the filing date granted the CPA and to continue prosecution of the prior application in the CPA.

This means that when a CPA is filed:

• Any pending appeal in the prior application is automatically withdrawn.
• Any pending interference proceeding in the prior application is terminated.

It’s important to note that these actions occur automatically upon the granting of a filing date to the CPA. Applicants should carefully consider the status of any pending appeals or interferences before filing a CPA, as these proceedings cannot be continued in the CPA.

For more information on CPA, visit: CPA.

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

Filing a Continued Prosecution Application (CPA) has a significant effect on the prior application. According to MPEP 201.06(d):

‘A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA.’

This means that:

• The prior application is automatically and expressly abandoned when the CPA is filed.
• The abandonment is effective as of the CPA filing date.
• Any claims or amendments in the prior application that were not entered are not carried over to the CPA.

It’s important to note that while the prior application is abandoned, the CPA is a continuation of that application, maintaining continuity for purposes such as priority claims and patent term calculations.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

The process for deleting an inventor from a Continued Prosecution Application (CPA) differs depending on when the request is made:

• At CPA Filing: You can submit a statement requesting the deletion of an inventor when filing the CPA. This is a straightforward process that doesn’t require additional paperwork.
• After CPA Filing: If you need to delete an inventor after the CPA has been filed, you must follow a more formal procedure. The MPEP states:
  

  “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”

This means that post-filing inventor deletions require a formal request under 37 CFR 1.48, which typically involves additional documentation and potentially fees.

For more information on CPA, visit: CPA.

The process for correcting inventorship in a Continued Prosecution Application (CPA) differs depending on when the correction is requested:

• At CPA filing: Inventorship can be corrected by submitting a statement requesting deletion of a named inventor along with the CPA filing. This process is straightforward and does not require additional procedures.
• After CPA filing: The MPEP states, Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48. This means additional documentation and possibly fees are required for post-filing inventorship changes.

It’s generally simpler to correct inventorship at the time of CPA filing if possible.

For more information on CPA, visit: CPA.

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

There is a significant difference in how Continued Prosecution Applications (CPAs) are treated for utility/plant applications versus design applications. According to the examiner’s note in MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This indicates that for utility or plant applications, an improper CPA request is treated as a Request for Continued Examination (RCE). However, for design applications, CPA requests are generally accepted and processed as described in MPEP ¶ 2.35. This distinction is important for applicants to understand when considering their continued prosecution options.

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.

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

Continued Prosecution Applications (CPAs) are primarily used for design patent applications. For utility or plant applications, improper CPA requests are typically treated as Requests for Continued Examination (RCE). The MPEP ¶ 2.35 notes:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This distinction is important for applicants to understand when considering their options for continuing prosecution of their patent applications.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

Form Paragraph 2.34 is a standardized response used by patent examiners when addressing improper amendments to Continued Prosecution Applications (CPAs). According to MPEP § 201.06(d), this form paragraph is specifically used to:

“inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.”

The form paragraph explains that such amendments are unnecessary because the CPA request itself serves as the specific reference required by 35 U.S.C. 120. It helps maintain consistency in examiner responses and ensures that applicants are properly informed about the treatment of these amendments in CPA applications.

For more information on CPA, visit: CPA.

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

A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.

According to MPEP ¶ 2.32:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on inventorship, visit: inventorship.

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

A Continued Prosecution Application (CPA) is a type of continuation or divisional application that can be filed under 37 CFR 1.53(d) for design applications. As stated in the MPEP, A continuation or divisional application filed under 37 CFR 1.53(d) is called a ‘Continued Prosecution Application’ (CPA). CPAs allow applicants to continue prosecution of a prior design application while retaining the benefit of the earlier filing date.

To learn more:

• CPA
• Continued Prosecution Application
• Design Patents
• Patent Application

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

For more information on USPTO procedures, visit: USPTO procedures.

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a parent application. It is governed by 37 CFR 1.53(d). According to MPEP ¶ 2.30, when a CPA is accepted, the examiner will use the following language:

“The request filed on [filing date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [parent application number] is acceptable and a CPA has been established.”

This indicates that the CPA has been properly filed and prosecution will continue based on the parent application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents. It allows applicants to continue prosecution of a previously filed design application by filing a request for continued examination. CPAs are governed by 37 CFR 1.53(d) and are only available for design applications.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

A Continued Prosecution Application (CPA) is a type of continuation or divisional application that can be filed for design patent applications under 37 CFR 1.53(d). It allows an applicant to continue prosecution of a prior design application. As stated in the MPEP:

A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;

CPAs can only be filed before the earliest of: payment of the issue fee, abandonment, or termination of proceedings on the prior application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

A Conditional Request for a Continued Prosecution Application (CPA) is a filing made under 37 CFR 1.53(d) for design applications. However, it’s important to note that any “conditional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA. This means that even if an applicant intends the request to be conditional, the USPTO will process it as a standard CPA request.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:

1. A clear statement requesting the deletion of the inventor(s)
2. The name(s) of the inventor(s) to be deleted
3. The filing date of the CPA

The MPEP provides a template for acknowledging such requests:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

For more information on USPTO, visit: USPTO.

The first Office action of a Continued Prosecution Application (CPA) includes important information for the applicant. According to MPEP ¶ 2.35, the examiner should:

• Advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request
• Confirm that the CPA is acceptable and has been established
• Provide notice that an action on the CPA follows

This information is crucial because, as stated in the MPEP, “applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.” Therefore, this Office action serves as an important communication regarding the status of the application.

For more information on CPA, visit: CPA.

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

For more information on USPTO communication, visit: USPTO communication.

The front page of a patent issuing from a continued prosecution application (CPA) filed under 37 CFR 1.53(d) contains specific information about prior applications.

As stated in the MPEP: The front page of a printed patent issuing on a continued prosecution application (CPA) filed under37 CFR 1.53(d)will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application. (MPEP 202)

This means that for a CPA:

• The application number and filing date of the most recent non-CPA application are shown
• The CPA’s own filing date is not displayed
• All prior applications claimed as benefit in the most recent non-CPA application are listed

This information helps establish the continuity and priority of the patent application.

For more information on benefit claims, visit: benefit claims.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on patent front page, visit: patent front page.

For more information on prior applications, visit: prior applications.

What happens to the status of the prior application when filing a CPA?

When filing a Continued Prosecution Application (CPA), the status of the prior application changes. According to MPEP 201.06(d):

The filing of a CPA is not a filing of a new application. Rather, a CPA is a continuation of the prior application and maintains the same application number as the prior application, i.e., the application number of the prior application is used as the application number for the CPA.

This means that:

• The prior application is not abandoned
• The CPA continues the examination process of the prior application
• The same application number is retained for the CPA

It’s important to note that while the CPA continues the examination, it is treated as a new application for all other purposes under the patent statute and rules.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

What happens to the prior application when a CPA is filed?

When a Continued Prosecution Application (CPA) is filed, the prior application is automatically abandoned. According to MPEP 201.06(d):

The filing of a CPA is not a filing of a new application. Rather, a CPA is a continuation of the prior application and maintains the same application number as the prior application, i.e., a “streeting” of the prior application.

This means that:

• The prior application is considered abandoned as of the filing date of the CPA.
• The CPA is not assigned a new application number but continues under the number of the prior application.
• All correspondence for the CPA should refer to the original application number.

It’s important to note that this automatic abandonment of the prior application is a key feature of CPA practice, distinguishing it from other types of continuing applications.

To learn more:

• CPA
• prior application
• application abandonment
• application number

What happens to the prior application when a Continued Prosecution Application (CPA) is filed?

When a Continued Prosecution Application (CPA) is filed, it has specific effects on the prior application. According to MPEP 201.06(d):

‘The filing of a CPA is a specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in the request for a CPA. Such a specific reference will constitute a waiver of confidentiality of the prior design application(s) under 35 U.S.C. 122 when the CPA is pending and/or any ex parte reexamination proceeding is pending in the prior design application(s).’

This means:

• The prior application becomes part of the record of the CPA
• Confidentiality of the prior application is waived
• The CPA is considered a continuation of the prior application
• The prior application is not automatically abandoned, but will be abandoned if the issue fee is not paid

It’s important to note that while the CPA continues the examination process, the prior application remains a distinct entity until it is either allowed to go abandoned or is explicitly abandoned by the applicant.

To learn more:

• CPA
• prior application
• continuation
• confidentiality

What happens to continuation or divisional applications filed after a CPA in a design application?

Continuation or divisional applications filed after a Continued Prosecution Application (CPA) in a design application are treated differently than those filed after a CPA in a utility or plant application. According to MPEP 201.06(d):

Any continuation or divisional application filed under 37 CFR 1.53(b) after the filing of a CPA of a design application will be assigned a new application number and will reflect the filing date of the 37 CFR 1.53(b) application.

This means that unlike utility or plant applications, where a continuation or divisional application would get the benefit of the CPA’s filing date, in design applications, these subsequent applications are treated as new applications with their own filing dates.

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

For more information on CPA, visit: CPA.

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

If the basic filing fee is not paid when filing a Continued Prosecution Application (CPA), the USPTO will send a notice to the applicant. According to MPEP 201.06(d):

‘If the basic filing fee is not paid when the CPA is filed or within the time period set forth in a notice from the Office, the USPTO will send a Notice to File Missing Parts in the CPA.’

This notice gives the applicant a chance to pay the fee and continue the application process. However, it’s important to note that failing to respond to this notice or pay the required fee within the specified time frame could result in the CPA being abandoned. It’s always best practice to submit all required fees at the time of filing to avoid potential delays or complications in the patent application process.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on Notice to File Missing Parts, visit: Notice to File Missing Parts.

If you submit an amendment to refer to a Continued Prosecution Application (CPA) as a continuation or divisional application, it will be denied entry by the patent examiner. The MPEP ¶ 2.34 states:

“Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.”

This means that the patent examiner will not accept or incorporate such amendments into the application. The CPA itself serves as the necessary reference to the prior application, making additional amendments unnecessary and inappropriate.

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

For more information on CPA, visit: CPA.

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

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

If you identify a new inventor in a Continued Prosecution Application (CPA) without filing a request under 37 CFR 1.48, the inventorship will not be officially changed. The MPEP clearly states: ‘It is noted that [new inventor] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [filing date], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.’ In such cases, the inventorship in the CPA will remain the same as in the prior application, despite the attempt to name a new inventor.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

When an improper Continued Prosecution Application (CPA) is filed, the USPTO’s response depends on the type of application and the nature of the impropriety:

• For utility or plant applications filed on or after July 14, 2003, an improper CPA is treated as a Request for Continued Examination (RCE) if possible
• If the improper CPA doesn’t meet RCE requirements, it’s treated as an improper RCE
• For design applications, an improper CPA may be treated as a new application under 37 CFR 1.53(b) in some circumstances
• The Office will not automatically convert an improper CPA to an application under 37 CFR 1.53(b) without extenuating circumstances

The MPEP states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed.

Regarding treatment as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

If the improper CPA doesn’t meet RCE requirements: If the improper CPA does not satisfy the requirements of 37 CFR 1.114 (e.g., the request lacks a submission or the fee under 37 CFR 1.17(e), or the prosecution of the application is not closed), the Office treats the improper CPA as an improper RCE, and the time period set in the last Office action (or notice) will continue to run.

Examiners are instructed to notify supervisory staff if they discover an improper CPA has been processed: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the Technology Center (TC) who will reprocess the CPA and correct the application records as appropriate.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

If a new inventor is identified in a Continued Prosecution Application (CPA) without proper documentation, it can lead to issues with the application. The MPEP ¶ 2.33 states:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

This means that if an examiner notices a new inventor listed on a CPA without the required request under 37 CFR 1.48, they will issue a notice to the applicant. The inventorship will remain the same as in the prior application until the proper request is filed and approved.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

If a new inventor is identified in a Continued Prosecution Application (CPA) without filing a proper request, it can lead to inventorship issues. The MPEP ¶ 2.33 states:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

This means that simply naming a new inventor in the CPA filing documents is not sufficient. Without a proper request under 37 CFR 1.48, the inventorship will remain the same as in the prior application, potentially leading to complications in the patent prosecution process.

For more information on CPA, visit: CPA.

If a new inventor is identified in a Continued Prosecution Application (CPA) for a design application, specific steps must be taken to properly add them to the application.

MPEP ¶ 2.33 states: “It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.”

This means that simply naming a new inventor in the CPA filing is not sufficient. A formal request under 37 CFR 1.48 must be filed to correct the inventorship. Without this request, the inventorship will remain the same as in the prior application, regardless of any new names listed on the CPA filing.

For more information on CPA, visit: CPA.

If a Continued Prosecution Application (CPA) request is improper for a utility or plant application, the USPTO handles it differently than for design applications. According to MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the USPTO treats the improper CPA request as a Request for Continued Examination (RCE). This approach ensures that the application can continue to be prosecuted, albeit under a different procedure. Applicants should be aware of this distinction and the potential implications for their patent prosecution strategy.

For more information on CPA, visit: CPA.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

If a Continued Prosecution Application (CPA) is improperly requested for a utility or plant patent application, it is typically treated as a Request for Continued Examination (RCE). The MPEP ¶ 2.30 provides guidance on this situation:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the examiner will use a different form paragraph (7.42.15) to notify the applicant that their CPA request has been treated as an RCE. This ensures that the application can continue to be examined under the appropriate procedure for utility or plant patents.

For more information on CPA, visit: CPA.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

If a Continued Prosecution Application (CPA) is filed in a utility or plant application after July 14, 2003, it will not be treated as a proper CPA. According to MPEP 201.06(d):

‘Any CPA filed on or after July 14, 2003 in a utility or plant application will automatically be treated as a request for continued examination (RCE) under 37 CFR 1.114, see MPEP § 706.07(h), paragraph II.’

This means that instead of being processed as a CPA, the application will be treated as a Request for Continued Examination (RCE). Applicants should be aware of this automatic conversion and ensure they meet the requirements for an RCE if they inadvertently file a CPA for a utility or plant application.

For more information on CPA, visit: CPA.

For more information on RCE, visit: RCE.

If a Continued Prosecution Application (CPA) is filed after the issue fee has been paid, it will not be treated as a CPA. Instead, it will be processed as follows:

• For applications filed on or after May 29, 2000, the CPA will be treated as a request for continued examination (RCE) under 37 CFR 1.114.
• For applications filed before May 29, 2000, the CPA will be treated as an improper application and will not be processed.

As stated in MPEP 201.06(d): “If an application is filed on or after May 29, 2000, the filing of a CPA is not permitted after payment of the issue fee. In such a case, the Office will treat the improper CPA as an RCE under 37 CFR 1.114, provided that the application is a utility or plant application filed on or after June 8, 1995.”

It’s important to note that this treatment as an RCE is only possible for utility or plant applications filed on or after June 8, 1995. For other types of applications or those filed before this date, the improper CPA filing will not be processed, and the applicant may need to consider other options, such as filing a reissue application if the patent has already issued.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on issue fee, visit: issue fee.

For more information on RCE, visit: RCE.

After a Continued Prosecution Application (CPA) is established, the USPTO proceeds with examination. According to MPEP ¶ 2.35:

Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.

This means that once the CPA is established, the examiner will review the application and issue an Office action. It’s important to note that applicants are not separately notified of the abandonment of the parent application, nor is a filing receipt normally sent for a CPA.

For more information on CPA, visit: CPA.

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

For more information on USPTO procedures, visit: USPTO procedures.

Once a Continued Prosecution Application (CPA) is established from a Conditional Request, the USPTO proceeds with the examination process as it would for any other CPA. According to MPEP ¶ 2.35: “An action on the CPA follows.”

This means that after the CPA is established:

• The parent application is considered abandoned
• The examiner will review the CPA and issue an Office action
• The applicant should be aware that they may not receive a filing receipt for the CPA, as noted in the MPEP: “This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.”

For more information on CPA, visit: CPA.

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

The signature requirements for filing a Continued Prosecution Application (CPA) are specific and important. According to MPEP 201.06(d):

A Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) must be signed by a person authorized to prosecute the application, except as provided in 37 CFR 1.33(b).

This means that:

• The CPA must be signed by someone authorized to prosecute the application.
• Typically, this would be the applicant or the applicant’s patent attorney or agent.
• There are exceptions outlined in 37 CFR 1.33(b), which allow for certain communications to be signed by other parties in specific circumstances.

It’s crucial to ensure that the proper signature is provided when filing a CPA to avoid potential issues with the application’s acceptance or processing.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

The signature requirements for a Continued Prosecution Application (CPA) request are specific and important to ensure proper filing. According to MPEP 201.06(d):

• The request for a CPA must be signed by a person authorized to prosecute the prior application.
• This includes:
  • A registered patent practitioner
  • The applicant (inventor or assignee of the entire interest)
• The signature can be provided through any of the approved signature methods outlined in 37 CFR 1.4(d).

The MPEP states: ‘A request for a CPA may only be signed by a person authorized to prosecute the application as set forth in 37 CFR 1.33(b).’ This ensures that only authorized individuals can initiate the CPA process, maintaining the integrity of the application.

It’s crucial to note that if the CPA request is not properly signed, it may not be granted a filing date, potentially affecting the continuity of the application.

For more information on CPA, visit: CPA.

To file a Continued Prosecution Application (CPA) in a design application, the following requirements must be met:

• The application must be a design application.
• The prior application must be a nonprovisional application.
• The application must be filed before the earliest of:
  • Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
  • Abandonment of the prior application; or
  • Termination of proceedings on the prior application.

As stated in the MPEP 201.06(d): “A continuation or divisional application that is a nonprovisional application may be filed as a CPA under 37 CFR 1.53(d) if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).”

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

For more information on CPA, visit: CPA.

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

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

In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), there are specific rules regarding benefit claims. The MPEP states:

In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), no amendment may delete the specific reference to a prior application assigned the same application number.

This is because in a CPA:

• The request itself serves as the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78 to every application assigned the same application number identified in the request.
• A specific reference in the first sentence(s) of the specification following the title, or in an application data sheet, to a prior application assigned the same application number is not required and should not be made.

Therefore, when dealing with a CPA, it’s crucial to understand that the benefit claim to the prior application with the same application number is inherent in the CPA request itself and cannot be deleted. Any additional benefit claims would need to follow the standard procedures for adding benefit claims after filing.

To learn more:

• CPA
• continued prosecution application
• benefit claim
• patent application

There are two primary methods for requesting the deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications:

• Letter to the examiner: You can submit a letter directly to the patent examiner handling your application.
• Request for corrected filing receipt: You can file a formal request for a corrected filing receipt with the USPTO.

These methods are outlined in MPEP § 201, ¶ 2.32, which states:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt.

It’s important to note that this procedure is specific to design applications and is not applicable to utility patents.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

For more information on USPTO procedures, visit: USPTO procedures.

The filing requirements for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) are as follows:

• The CPA must be filed before the earliest of:
  • Payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted;
  • Abandonment of the prior application; or
  • Termination of proceedings on the prior application.
• The CPA must include a request to initiate proceedings under 37 CFR 1.53(d).
• The prior application must be a design application eligible for CPA practice.

As stated in the MPEP 201.06(d): ‘A continuation or divisional application may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b).’

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

What are the filing date requirements for a CPA?

The filing date requirements for a Continued Prosecution Application (CPA) are specific and must be adhered to. According to MPEP 201.06(d):

The filing date of a CPA is the date on which a request on a separate paper for an application under 37 CFR 1.53(d) is filed. A request for a CPA is a paper filing, even though it may be submitted via EFS-Web.

Key points about CPA filing date requirements include:

• The CPA must be filed before the payment of the issue fee for the prior application
• It must be filed before abandonment of the prior application
• The request for a CPA must be made on a separate paper
• The filing date is based on when the CPA request is received, not when other application documents are submitted

It’s crucial to meet these requirements to ensure the CPA is properly filed and receives the correct filing date.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

To receive a filing date for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d), the following requirements must be met:

• The application must be for a design patent;
• The prior application must be a design application that is complete as defined by 37 CFR 1.51(b);
• The application must be submitted before the payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application;
• The application must be filed within the period set forth in 37 CFR 1.53(d)(1)(ii); and
• The application must be filed with a request for a CPA.

As stated in the MPEP: ‘A CPA may be filed under 37 CFR 1.53(d) only if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).’

For more information on CPA, visit: CPA.

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

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

What are the filing date requirements for a Continued Prosecution Application (CPA)?

For a Continued Prosecution Application (CPA) to receive a filing date, it must meet specific requirements as outlined in MPEP 201.06(d):

• The application must be for a design patent
• The prior application must be a design application that is complete as defined by 37 CFR 1.51(b)
• The application must be submitted before the payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application
• The application must be filed within the period set forth in 37 CFR 1.53(d)(1)(ii)

The MPEP states: ‘A CPA may be filed where the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).’ This ensures that the CPA is based on a properly filed and complete prior application.

To learn more:

• CPA
• filing date
• design patent
• requirements

Failing to file a 37 CFR 1.48 request when adding a new inventor to a Continued Prosecution Application (CPA) can have significant consequences.

MPEP ¶ 2.33 states: “Otherwise, the inventorship in the CPA shall be the same as in the prior application.” This means that without a proper 37 CFR 1.48 request:

• The new inventor will not be officially recognized on the application.
• The inventorship will remain unchanged from the prior application.
• This discrepancy could potentially affect the validity of the patent if granted.
• It may lead to complications in future patent proceedings or enforcement efforts.

It’s crucial to follow proper procedures to ensure all inventors are correctly listed and legally recognized on the patent application.

For more information on CPA, visit: CPA.

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

When filing a Continued Prosecution Application (CPA), there are specific conditions under which the prior application may be automatically abandoned. According to MPEP 201.06(d):

A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA. See 37 CFR 1.53(d)(2)(v).

However, it’s important to note that:

• The prior application is only expressly abandoned if the CPA is properly filed.
• If the CPA is improper (e.g., filed in a utility application), the express abandonment of the prior application will not be effective.
• The abandonment of the prior application is automatic upon the filing date of the properly filed CPA.

This automatic abandonment provision ensures a clear transition from the prior application to the CPA, which is particularly relevant for design applications where CPAs are permitted.

For more information on CPA, visit: CPA.

All relevant information from MPEP ¶ 2.33 New Inventor Identified in CPA (for Design Applications) has been covered in the previous FAQs. No additional meaningful questions can be generated without redundancy.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on inventorship, visit: inventorship.

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

Inventorship in a Continued Prosecution Application (CPA) is generally maintained from the prior application. However, if there’s a need to add or change inventors, specific procedures must be followed.

According to MPEP ¶ 2.33: “Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inventorship in the CPA shall be the same as in the prior application.”

This means that if you want to add or change inventors in a CPA, you must file a formal request under 37 CFR 1.48, which outlines the procedure for correction of inventorship in patent applications.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

According to MPEP ¶ 2.35, the USPTO treats ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. The MPEP explicitly states:

Any ‘conditional’ request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.

This means that even if an applicant submits a CPA request with conditions attached, the USPTO will process it as a standard, unconditional CPA request. This policy ensures clarity and consistency in the application process.

For more information on CPA, visit: CPA.

For more information on USPTO procedures, visit: USPTO procedures.

The USPTO treats all ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. According to MPEP ¶ 2.35:

Any “conditional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.

This means that once a conditional CPA request is submitted, it will be processed as a standard CPA, regardless of the applicant’s original intent.

For more information on CPA, visit: CPA.

The United States Patent and Trademark Office (USPTO) treats all ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. This is clearly stated in MPEP ¶ 2.35:

“Any ‘conditional’ request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.”

This means that once a CPA request is filed, even if the applicant intended it to be conditional, the USPTO will process it as a regular CPA. The conditions specified by the applicant are essentially disregarded, and the CPA is established based on the filing of the request alone.

For more information on CPA, visit: CPA.

For more information on Patent Application Process, visit: Patent Application Process.

The United States Patent and Trademark Office (USPTO) formally acknowledges a Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) through an official response. This acknowledgment serves as confirmation that the request has been received and processed.

The MPEP ¶ 2.32 provides the standard language used by examiners to acknowledge such requests:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

In this acknowledgment:

• [1] refers to the name(s) of the inventor(s) requested to be deleted
• [2] indicates the filing date of the CPA

This official response confirms that the USPTO has processed the request and updated the inventorship accordingly.

For more information on CPA, visit: CPA.

For more information on USPTO acknowledgment, visit: USPTO acknowledgment.

The inventorship in a Continued Prosecution Application (CPA) is directly related to the parent application. As stated in MPEP 201.06(d):

‘The inventorship in a CPA filed under 37 CFR 1.53(d) is the same as in the prior application.’

This means that when you file a CPA, you are essentially continuing the same application with the same inventors. However, it’s important to note that if there are any changes to inventorship required, they must be made through the appropriate procedures, such as filing a request under 37 CFR 1.48. Any such changes should be made promptly to ensure the accuracy of the patent application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

The filing date of a Continued Prosecution Application (CPA) has important implications for its priority claim. According to MPEP 201.06(d):

The filing date of a CPA is the date on which a request on a separate paper for an application under 37 CFR 1.53(d) is filed. A request for a CPA is not entitled to the benefit of a Certificate of Mailing or Transmission under 37 CFR 1.8.

This means that:

• The CPA’s filing date is the actual date the USPTO receives the CPA request.
• This date cannot be backdated using a Certificate of Mailing or Transmission.
• The CPA automatically receives the benefit of the filing date of the prior application.
• Any foreign priority or domestic benefit claims made in the prior application are automatically carried forward to the CPA.

It’s crucial to understand that while the CPA maintains the priority claims of the prior application, its actual filing date is the date of receipt by the USPTO, which can affect certain statutory deadlines and prior art considerations.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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.

Inventorship in a Continued Prosecution Application (CPA) generally carries over from the prior application, but there are some important considerations:

• The inventive entity of the CPA is automatically the same as the prior application unless a statement is filed requesting deletion of inventors
• A statement requesting deletion of inventors must be filed with the CPA request and signed by a person authorized under 37 CFR 1.33(b)
• New inventors cannot be added simply by naming them in the CPA transmittal letter or a new oath/declaration
• To add new inventors, a request under 37 CFR 1.48 must be filed, including the required fee

The MPEP states: The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

If an inventor is named in the CPA who was not in the prior application, the examiner will notify the applicant using form paragraph 2.33:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

In a Continued Prosecution Application (CPA), the inventorship is typically the same as in the prior application. However, if a new inventor needs to be added, a specific process must be followed. According to MPEP ¶ 2.33:

Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inventorship in the CPA shall be the same as in the prior application.

This means that if you want to add a new inventor to a CPA, you must file a formal request under 37 CFR 1.48, which outlines the procedures for correcting or changing inventorship in patent applications.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

Filing a Continued Prosecution Application (CPA) has a significant effect on the prior application. According to the MPEP, A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA. This means that when you file a CPA, the previous application is automatically abandoned in favor of the new CPA. The CPA will use the file wrapper and contents of the prior application, including the specification, drawings, and oath or declaration, and will be assigned the same application number as the prior application.

To learn more:

• CPA
• Prior Application
• Application Abandonment

Continued Prosecution Application (CPA) practice differs significantly for utility and plant applications compared to design applications. The key difference is:

CPA practice is not available for utility and plant applications filed on or after May 29, 2000.

As stated in the MPEP 201.06(d): “Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications in view of the eighteen-month publication of applications under 35 U.S.C. 122(b). A request for a CPA filed on or after July 14, 2003 in a utility or plant application is improper and will not be treated as a CPA.”

For utility and plant applications, applicants should instead consider filing:

• A request for continued examination (RCE) under 37 CFR 1.114
• A continuation or divisional application under 37 CFR 1.53(b)

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

For more information on CPA, visit: CPA.

For more information on RCE, visit: RCE.

Confidentiality in Continued Prosecution Applications (CPAs) is handled differently from standard applications. Filing a CPA includes a waiver of confidentiality to some extent:

• The CPA is construed to include a waiver of confidentiality under 35 U.S.C. 122
• This waiver allows public access to both the prior application and any continuing applications filed under 37 CFR 1.53(d)
• Access is limited to those entitled under 37 CFR 1.14 to obtain information about the applications

The MPEP states: A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

This means that if someone is entitled to access information about either the prior application or the CPA, they may be given similar access to information about both applications. This is different from the standard confidentiality provisions for pending applications.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

According to MPEP § 201, specifically paragraph 2.30, an examiner notifies an applicant about a Continued Prosecution Application’s (CPA) acceptance in the first Office action of the CPA. The MPEP states:

Use this form paragraph in the first Office action of a CPA to advise the applicant that a request for a CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

This notification is crucial because it confirms the establishment of the CPA and provides important information to the applicant about the status of their application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

When a patent examiner encounters an amendment attempting to reference a prior application in a Continued Prosecution Application (CPA), they should not enter the amendment and inform the applicant of this decision.

According to MPEP ¶ 2.34, examiners should use the following language:

“The amendment filed [1] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [2] application of Application No. [3] has not been entered. 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. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.”

Examiners should fill in the brackets with: [1] the filing date of the amendment, [2] either “continuation” or “divisional”, and [3] the Application Number of the prior nonprovisional application.

For more information on CPA, visit: CPA.

When a patent examiner encounters an amendment attempting to refer to a Continued Prosecution Application (CPA) as a continuation or divisional application, they should not enter the amendment. According to MPEP § 201.06(d), examiners are instructed to use Form Paragraph 2.34 to inform the applicant that such amendments will not be entered:

“Use this form paragraph to inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.”

The examiner will provide the reason for non-entry, explaining that the CPA request itself serves as the specific reference required by 35 U.S.C. 120, and there is no need to amend the specification to refer back to the prior application.

For more information on CPA, visit: CPA.

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 § 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) and a continuation application are both ways to continue prosecution of a patent application, but they have key differences:

• CPA: Only available for design applications filed before May 29, 2000, and for plant applications. It continues examination of the same application.
• Continuation: Available for all types of applications and creates a new application that claims priority to the parent application.

The MPEP ¶ 2.34 highlights a crucial distinction in how they reference prior applications:

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 means that for a CPA, the mere act of filing establishes the reference to the prior application. In contrast, a continuation application typically requires an explicit reference to the parent application in the specification.

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

For more information on CPA, visit: CPA.

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

Filing a Continued Prosecution Application (CPA) has specific effects on the status of the prior application:

• The prior application is abandoned by operation of law upon filing of the CPA.
• Any appeal in the prior application is dismissed automatically.
• Any amendment filed with the CPA request is not entered unless it is specifically requested by the applicant.

As stated in the MPEP 201.06(d): ‘The filing of a CPA is not a filing of a new application. Rather, it is a continuation of the pending prior application.’ This means that while the prior application is technically abandoned, its substance continues in the CPA.

It’s important to note that any amendment accompanying the CPA request will be placed in the file but not entered unless the applicant specifically requests it. This allows applicants to submit potential amendments without automatically changing the application’s content.

For more information on CPA, visit: CPA.

Filing a Continued Prosecution Application (CPA) can affect patent term because it results in a new filing date. While the CPA retains the benefit of the earlier filing date for prior art purposes, the actual filing date of the CPA is used for calculating patent term. The MPEP notes: Applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes). This means that the patent term for a CPA will generally be shorter than if the original application had been allowed, as the term is calculated from the CPA filing date, not the original application’s filing date.

To learn more:

• CPA
• Patent Term
• Filing Date

The inventorship in a Continued Prosecution Application (CPA) generally remains the same as in the prior application. The MPEP states, The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA. If changes to inventorship are needed, they must be made through a specific request under 37 CFR 1.48.

To learn more:

• CPA
• Inventorship
• Patent Application

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.

To request deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications, you need to file a proper request with the USPTO. According to MPEP § 201, specifically paragraph 2.32:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt. However, it should be noted that this is only available for design applications.

This process is specific to design applications and allows for the correction of inventorship in CPAs.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on USPTO procedures, visit: USPTO procedures.

To correctly add a new inventor to a Continued Prosecution Application (CPA), you must follow the procedures outlined in 37 CFR 1.48. The MPEP ¶ 2.33 states:

Any request to add an inventor must be in the form of a request under 37 CFR 1.48.

To add a new inventor:

1. File a request under 37 CFR 1.48 to correct the inventorship.
2. Include a statement from the new inventor agreeing to the addition.
3. Pay any required fees.
4. Provide an oath or declaration from the new inventor.

Failure to follow these steps may result in the inventorship remaining the same as in the prior application.

For more information on CPA, visit: CPA.

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: A request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

For more information on benefit claims, visit: benefit claims.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

Inventorship in a Continued Prosecution Application (CPA) for design patents can be corrected by filing a statement requesting the deletion of a named inventor along with the CPA filing. The MPEP states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This process allows for immediate correction of inventorship when filing a CPA. However, it’s important to note that any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on inventorship, visit: inventorship.

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

To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

An inventor can be deleted from a Continued Prosecution Application (CPA) for design patents by submitting a statement requesting the deletion at the time of filing the CPA. The MPEP states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This process allows for the correction of inventorship at the time of filing the CPA. However, it’s important to note that if you need to delete an inventor after the CPA has been filed, you must follow a different procedure, as stated in the MPEP: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”

For more information on CPA, visit: CPA.

Continued Prosecution Applications (CPAs) and Requests for Continued Examination (RCEs) are both methods to continue prosecution of an application, but they have significant differences:

• CPAs are only available for design patent applications, while RCEs can be used for utility, plant, and design applications
• CPAs result in a new application with the same application number, while RCEs continue examination of the same application
• CPAs can only be filed before payment of the issue fee, abandonment, or termination of proceedings; RCEs can be filed after payment of the issue fee with a petition
• CPAs automatically abandon the prior application, while RCEs do not

The MPEP states: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. Henceforth, applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE) under 37 CFR 1.114.

It’s important to note that if an improper CPA is filed for a utility or plant application on or after July 14, 2003, it may be treated as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

Can you file a CPA in a provisional application?

No, you cannot file a Continued Prosecution Application (CPA) in a provisional application. The MPEP 201.06(d) clearly states:

A CPA may not be filed in a provisional application.

CPAs are only available for certain types of nonprovisional applications. Specifically, they can be filed in design applications, and in utility and plant applications that were filed before May 29, 2000. Provisional applications have a different purpose and process, and do not allow for the filing of CPAs.

For more information on CPA, visit: CPA.

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

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

Yes, the inventorship in a Continued Prosecution Application (CPA) can differ from the original application, but only if a proper request is filed and approved.

According to MPEP ¶ 2.33: Otherwise, the inventorship in the CPA shall be the same as in the prior application. This implies that changes to inventorship are possible, but they require specific action.

To change the inventorship, you must file a request under 37 CFR 1.48. This applies whether you’re adding, removing, or changing the order of inventors. Without this formal request, the inventorship will remain the same as in the original application, even if new inventors are listed on the CPA filing documents.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

No, new matter cannot be added in a Continued Prosecution Application (CPA). The MPEP clearly states: No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any attempt to add new matter will be denied entry by the examiner. If an applicant needs to add new matter, they should consider filing a continuation-in-part application under 37 CFR 1.53(b) instead of a CPA.

To learn more:

• CPA
• New Matter
• Patent Application

Yes, multiple inventors can be deleted from a Continued Prosecution Application (CPA) at once. The language in MPEP ¶ 2.32 supports this:

In bracket 1 insert the name or names of the inventor(s) requested to be deleted.

This indicates that the process allows for the deletion of one or more inventors simultaneously. When filing a CPA, applicants can submit a statement requesting the deletion of multiple named inventors who are not inventors of the invention being claimed in the new application.

However, it’s crucial to ensure that all remaining inventors are correctly named and that the inventorship accurately reflects those who contributed to the claimed invention. If the CPA has already been filed, remember that any subsequent inventorship changes must follow the procedures outlined in 37 CFR 1.48.

For more information on CPA, visit: CPA.

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
2. For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

• Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
• If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
• Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
• In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

For more information on prior art, visit: prior art.

No, you cannot amend the specification to refer to a Continued Prosecution Application (CPA) as a continuation of a prior application. The USPTO explicitly denies such amendments. As stated in MPEP ¶ 2.34:

The amendment filed [date] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [continuation/divisional] application of Application No. [X] has not been entered. 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. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.

This means that the act of filing a CPA automatically establishes the necessary reference to the prior application, making any specification amendment unnecessary and prohibited.

For more information on CPA, visit: CPA.

No, you cannot amend the specification of a Continued Prosecution Application (CPA) to refer to it as a continuation or divisional application. According to MPEP § 201.06(d):

“The amendment filed [date] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [continuation/divisional] application of Application No. [X] has not been entered. 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. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.”

This means that the CPA request itself serves as the required reference to the prior application, and no additional amendment to the specification is necessary or allowed.

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

For more information on CPA, visit: CPA.

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

The MPEP ¶ 2.32 specifically addresses the process of deleting named inventors when filing a Continued Prosecution Application (CPA) for design patents. However, it does not explicitly mention adding or substituting inventors at the time of CPA filing.

If you need to add or substitute inventors, rather than just delete them, you should follow the general procedures for correction of inventorship outlined in 37 CFR 1.48. This regulation provides the requirements for adding, deleting, or substituting inventors in patent applications.

It’s advisable to consult with a patent attorney or contact the USPTO directly for guidance on the proper procedure for adding or substituting inventors when filing a CPA, as this may require additional documentation or fees beyond a simple deletion request.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

Amendments can be made when filing a Continued Prosecution Application (CPA), but there are important restrictions and considerations:

• Any changes must be made as an amendment to the prior application as it existed before filing the CPA
• No new matter can be introduced in a CPA
• Preliminary amendments filed with a CPA are generally entered, but could be denied entry if they unduly interfere with examination
• New specifications filed with a CPA request are treated as substitute specifications and must comply with 37 CFR 1.125

The MPEP states: Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application.

Regarding preliminary amendments, the MPEP advises: Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.

If more time is needed to prepare amendments, applicants can request a three-month suspension of action under 37 CFR 1.103(b) at the time of filing the CPA.

For more information on amendments, visit: amendments.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

Can a CPA be filed in a provisional application?

No, a Continued Prosecution Application (CPA) cannot be filed in a provisional application. The MPEP 201.06(d) clearly states:

A continuation or divisional application may be filed under 37 CFR 1.53(d) if the prior application is a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor’s oath or declaration if the application is filed on or after September 16, 2012, and the prior application was filed under 35 U.S.C. 111(a).

This means that CPAs are limited to design applications filed under 35 U.S.C. 111(a). Provisional applications, which are filed under 35 U.S.C. 111(b), are not eligible for CPA filing.

To learn more:

• CPA
• provisional application
• design application
• 35 U.S.C. 111(a)
• 35 U.S.C. 111(b)

To learn more:

• 35 U.S.C. 111(a)
• 35 U.S.C. 111(b)

No, Continued Prosecution Applications (CPAs) cannot be filed for utility or plant applications. The MPEP clearly states: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. For utility and plant applications, applicants should consider filing a request for continued examination (RCE) under 37 CFR 1.114 or a new application under 37 CFR 1.53(b) instead.

To learn more:

• CPA
• Utility Patents
• Plant Patents
• RCE

Can a CPA be filed as a continuation-in-part application?

No, a Continued Prosecution Application (CPA) cannot be filed as a continuation-in-part application. According to MPEP 201.06(d):

‘A continuation or divisional application (but not a continuation-in-part) may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b).’

This means that while you can file a CPA as a continuation or divisional application of a prior design application, you cannot file it as a continuation-in-part. Continuation-in-part applications typically contain new matter not present in the prior application, which is not allowed in a CPA filing.

For more information on CPA, visit: CPA.

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

Can a Continued Prosecution Application (CPA) be filed in a provisional application?

No, a Continued Prosecution Application (CPA) cannot be filed in a provisional application. According to MPEP 201.06(d):

“A continuation or divisional application may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b).”

This explicitly limits CPA practice to design applications. Provisional applications are not eligible for CPA filings. If an applicant wishes to continue prosecution based on a provisional application, they must file a non-provisional application claiming priority to the provisional application within the appropriate time frame.

For more information on CPA, visit: CPA.

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

Can a Continued Prosecution Application (CPA) be filed for utility or plant patent applications?

No, a Continued Prosecution Application (CPA) cannot be filed for utility or plant patent applications. According to MPEP 201.06(d):

‘Effective July 14, 2003, CPAs are only available for design applications.’

This means that CPAs are exclusively for design patent applications. For utility or plant patent applications, applicants must use other continuation options such as:

• Continuation applications under 37 CFR 1.53(b)
• Requests for Continued Examination (RCE) under 37 CFR 1.114

If an applicant attempts to file a CPA for a utility or plant application, the USPTO will process it as a request for continued examination (RCE) under 37 CFR 1.114, if applicable, or will otherwise treat it as an improper application.

To learn more:

• CPA
• utility patent
• plant patent
• design patent

Yes, a Continued Prosecution Application (CPA) can be filed for design applications. In fact, as of September 8, 2000, CPAs are only available for design applications. According to MPEP 201.06(d):

‘Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications. CPAs can only be filed for design applications.’

This means that for utility and plant patent applications, other forms of continuing applications such as RCEs (Request for Continued Examination) or continuation applications under 37 CFR 1.53(b) must be used instead of CPAs.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

Yes, a continuation application can be filed after the parent application is granted or abandoned, but there are timing restrictions. The MPEP states:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

However, it’s important to note:

• For standard continuation applications under 37 CFR 1.53(b), they must be filed before the patenting, abandonment, or termination of proceedings on the earlier application.
• For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), they must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

Always consult with a patent attorney to ensure proper timing and procedures are followed.

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

For more information on CPA, visit: CPA.

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

No, applicants are not separately notified when their parent application is abandoned due to the filing of a Continued Prosecution Application (CPA). This is implied in the examiner’s note in MPEP ¶ 2.35:

This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

The establishment of a CPA automatically results in the abandonment of the parent application. Applicants should be aware that by filing a CPA, they are effectively abandoning the parent application in favor of continuing prosecution through the CPA.

For more information on CPA, visit: CPA.

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

For continued prosecution applications (CPAs) filed under 37 CFR 1.53(d), the front page of a printed patent will include:

• The application number and filing date of the most recent noncontinued prosecution application
• All prior applications from which benefit was claimed in the most recent noncontinued prosecution application

Notably, the filing date of the CPA itself is not included. As stated in the MPEP: “The front page of a printed patent issuing on a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application.” (MPEP 202)

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.

Amendments to refer to Continued Prosecution Applications (CPAs) as continuation or divisional applications are not allowed because they are unnecessary and can potentially cause confusion. The MPEP ¶ 2.34 explains:

“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 means that the CPA itself already serves as the legally required reference to the prior application. Adding additional references through amendments is redundant and could potentially lead to inconsistencies or misinterpretations in the patent record.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

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

You should file a 37 CFR 1.48 request to correct inventorship in a Continued Prosecution Application (CPA) as soon as you realize there’s a need to add or remove an inventor. This should be done concurrently with or shortly after filing the CPA.

The MPEP ¶ 2.33 indicates:

Any request to add an inventor must be in the form of a request under 37 CFR 1.48.

It’s important to file this request promptly to ensure that the correct inventorship is recorded for your application. Failure to do so may result in the inventorship remaining the same as in the prior application, which could potentially affect the validity of your patent if granted.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

You should file a 37 CFR 1.48 request for a Continued Prosecution Application (CPA) whenever you need to add, remove, or change the order of inventors from the original application.

The MPEP ¶ 2.33 indicates: Any request to add an inventor must be in the form of a request under 37 CFR 1.48. This applies even if you’ve identified the new inventor in the CPA filing documents.

It’s best to file the 37 CFR 1.48 request as soon as you realize there’s a need to correct the inventorship. This ensures that the correct inventors are associated with the application throughout the examination process.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

Form Paragraph 2.35 should be used in specific circumstances during the patent examination process. According to the MPEP ¶ 2.35, this form paragraph is to be used:

in the first Office action of a CPA to advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established.

However, it’s important to note that this form paragraph should not be used in all situations. Specifically:

• It should only be used for design applications, as CPAs are only available for design applications.
• If the request for a CPA in a utility or plant application is improper and has been treated as an RCE (Request for Continued Examination), examiners should use form paragraph 7.42.15 instead.

Examiners should refer to MPEP § 706.07(h) for more information on handling improper CPA requests in utility or plant applications.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

A Continued Prosecution Application (CPA) is acceptable when it meets the requirements set forth in 37 CFR 1.53(d). According to MPEP § 201, the examiner will use specific language to indicate acceptance:

The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established.

It’s important to note that CPAs are now only available for design patent applications. For utility and plant applications, a Request for Continued Examination (RCE) would be used instead.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

Continued Prosecution Applications (CPAs) are limited to specific types of patent applications:

• Design Applications: CPAs are available for design applications filed before May 29, 2000.
• Plant Applications: CPAs can be used for plant patent applications.

It’s important to note that CPAs are not available for utility patent applications filed on or after May 29, 2000. For these applications, applicants should use a Request for Continued Examination (RCE) instead.

The MPEP ¶ 2.34 provides guidance on how CPAs reference prior applications:

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 means that for eligible applications, the CPA automatically establishes the necessary reference to the prior application without requiring amendments to the specification.

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.

For more information on plant patents, visit: plant patents.

A Continued Prosecution Application (CPA) can be filed for specific types of applications. According to MPEP 201.06(d):

Effective July 14, 2003, CPA practice under 37 CFR 1.53(d) is not available for utility and plant applications.

This means that CPAs are limited to:

• Design applications: Applications for design patents can be filed as CPAs.
• Continuation applications: These must be based on an earlier application of the same type (i.e., design).
• Divisional applications: These must also be based on an earlier design application.

It’s important to note that continuation-in-part (CIP) applications cannot be filed as CPAs. Additionally, utility and plant patent applications are no longer eligible for CPA practice since July 14, 2003.

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

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For a Continued Prosecution Application (CPA), the specific reference requirement under 35 U.S.C. 120 is satisfied by the CPA request itself. According to MPEP § 201.06(d):

“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 means that when you file a CPA request, it automatically serves as the required reference to the prior application under 35 U.S.C. 120. No additional amendments or references in the specification are necessary to establish this connection.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7).

According to MPEP ¶ 2.34:

“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 means that when you file a CPA, the request itself serves as the necessary reference to the prior application, eliminating the need for additional amendments to the specification to establish continuity.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

For more information on specific reference, visit: specific reference.

The filing date of a Continued Prosecution Application (CPA) is significant for several reasons. In the context of inventorship, the MPEP ¶ 2.33 mentions:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

The filing date [2] is important because:

• It establishes the effective date for the CPA.
• It determines the timeline for filing certain documents, such as inventor oaths or declarations.
• It affects the calculation of patent term adjustment.
• It’s used as a reference point for determining whether changes to inventorship were properly requested.

Always keep the CPA filing date in mind when managing patent application procedures and deadlines.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:

“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”

The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

The purpose of MPEP ¶ 2.33 is to provide guidance to patent examiners when they encounter a situation where a new inventor is identified in a Continued Prosecution Application (CPA) for design applications. It states:

Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA.

This paragraph helps examiners address situations where applicants have named new inventors in a CPA without following the proper procedure. It reminds both examiners and applicants that a formal request under 37 CFR 1.48 is required to change inventorship, even in a CPA.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

MPEP ¶ 2.32 provides guidance for patent examiners on how to acknowledge and process requests to delete a named inventor in Continued Prosecution Applications (CPAs) for design patents. The paragraph serves several purposes:

• It offers a standardized response for examiners to use when acknowledging the receipt of a request to delete an inventor.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and procedure for inventor deletion requests in CPAs.

The paragraph states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This standardized language ensures consistency in USPTO communications and helps applicants understand that their request has been processed successfully.

For more information on CPA, visit: CPA.

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

For more information on USPTO communication, visit: USPTO communication.

MPEP ¶ 2.32 provides guidance for patent examiners on how to respond to requests for deleting a named inventor in a Continued Prosecution Application (CPA) for design patents. The paragraph serves several purposes:

• It offers a template for examiners to acknowledge receipt of a statement requesting inventor deletion.
• It confirms that the inventorship has been corrected as requested.
• It clarifies the timing and requirements for inventorship changes in CPAs.

The paragraph states: Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This standardized language ensures consistent communication between the USPTO and applicants regarding inventorship changes in CPAs.

For more information on CPA, visit: CPA.

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

For more information on USPTO communication, visit: USPTO communication.

The proper procedure for correcting inventorship in a Continued Prosecution Application (CPA) is to file a request under 37 CFR 1.48. This applies whether you’re adding or removing an inventor. The MPEP guidance states: ‘Any request to add an inventor must be in the form of a request under 37 CFR 1.48.’ This formal request ensures that the USPTO properly processes and recognizes the change in inventorship.

For more information on CPA, visit: CPA.

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

The legal basis for denying amendments to Continued Prosecution Application (CPA) specifications that attempt to reference prior applications stems from both federal regulations and patent law. Specifically:

• 37 CFR 1.53(d)(7): This regulation establishes that a CPA request itself serves as the specific reference required by 35 U.S.C. 120.
• 35 U.S.C. 120: This statute outlines the requirements for claiming the benefit of an earlier filing date in the United States.

According to MPEP ¶ 2.34:

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. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.

This means that the CPA filing itself legally establishes the necessary connection to the prior application, making any specification amendment both redundant and impermissible.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

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

What is the effect of filing a CPA on pending appeals or interferences?

Filing a Continued Prosecution Application (CPA) has significant effects on pending appeals or interferences. According to MPEP 201.06(d):

The filing of a CPA is a specific request to expressly abandon the prior application as of the filing date granted the CPA and to continue prosecution of the prior application in the CPA.

This means that when a CPA is filed:

• Any pending appeal in the prior application is automatically withdrawn.
• Any pending interference proceeding in the prior application is terminated.

It’s important to note that these actions occur automatically upon the granting of a filing date to the CPA. Applicants should carefully consider the status of any pending appeals or interferences before filing a CPA, as these proceedings cannot be continued in the CPA.

For more information on CPA, visit: CPA.

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

Filing a Continued Prosecution Application (CPA) has a significant effect on the prior application. According to MPEP 201.06(d):

‘A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA.’

This means that:

• The prior application is automatically and expressly abandoned when the CPA is filed.
• The abandonment is effective as of the CPA filing date.
• Any claims or amendments in the prior application that were not entered are not carried over to the CPA.

It’s important to note that while the prior application is abandoned, the CPA is a continuation of that application, maintaining continuity for purposes such as priority claims and patent term calculations.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

The process for deleting an inventor from a Continued Prosecution Application (CPA) differs depending on when the request is made:

• At CPA Filing: You can submit a statement requesting the deletion of an inventor when filing the CPA. This is a straightforward process that doesn’t require additional paperwork.
• After CPA Filing: If you need to delete an inventor after the CPA has been filed, you must follow a more formal procedure. The MPEP states:
  

  “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”

This means that post-filing inventor deletions require a formal request under 37 CFR 1.48, which typically involves additional documentation and potentially fees.

For more information on CPA, visit: CPA.

The process for correcting inventorship in a Continued Prosecution Application (CPA) differs depending on when the correction is requested:

• At CPA filing: Inventorship can be corrected by submitting a statement requesting deletion of a named inventor along with the CPA filing. This process is straightforward and does not require additional procedures.
• After CPA filing: The MPEP states, Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48. This means additional documentation and possibly fees are required for post-filing inventorship changes.

It’s generally simpler to correct inventorship at the time of CPA filing if possible.

For more information on CPA, visit: CPA.

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

There is a significant difference in how Continued Prosecution Applications (CPAs) are treated for utility/plant applications versus design applications. According to the examiner’s note in MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This indicates that for utility or plant applications, an improper CPA request is treated as a Request for Continued Examination (RCE). However, for design applications, CPA requests are generally accepted and processed as described in MPEP ¶ 2.35. This distinction is important for applicants to understand when considering their continued prosecution options.

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.

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

Continued Prosecution Applications (CPAs) are primarily used for design patent applications. For utility or plant applications, improper CPA requests are typically treated as Requests for Continued Examination (RCE). The MPEP ¶ 2.35 notes:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This distinction is important for applicants to understand when considering their options for continuing prosecution of their patent applications.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

Form Paragraph 2.34 is a standardized response used by patent examiners when addressing improper amendments to Continued Prosecution Applications (CPAs). According to MPEP § 201.06(d), this form paragraph is specifically used to:

“inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.”

The form paragraph explains that such amendments are unnecessary because the CPA request itself serves as the specific reference required by 35 U.S.C. 120. It helps maintain consistency in examiner responses and ensures that applicants are properly informed about the treatment of these amendments in CPA applications.

For more information on CPA, visit: CPA.

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

A Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) for Design Applications is a procedure that allows for the correction of inventorship when filing a CPA. This request is specifically used to remove the name(s) of person(s) who are not inventors of the invention being claimed in the new application.

According to MPEP ¶ 2.32:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This paragraph confirms that the USPTO recognizes and processes such requests when submitted with a CPA filing.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on inventorship, visit: inventorship.

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

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a prior design application. It’s important to note that CPAs are now only available for design applications, not utility applications.

While the MPEP ¶ 2.32 doesn’t provide a direct definition of a CPA, it implies its use in the context of design applications:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

CPAs allow applicants to:

• Continue prosecution of a previously filed design application
• Make amendments or corrections, such as deleting a named inventor
• Potentially receive further examination without filing a new application

For more detailed information on CPAs, refer to MPEP § 201.06(d).

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

For more information on USPTO procedures, visit: USPTO procedures.

A Continued Prosecution Application (CPA) is a type of patent application that allows applicants to continue prosecution of a parent application. It is governed by 37 CFR 1.53(d). According to MPEP ¶ 2.30, when a CPA is accepted, the examiner will use the following language:

“The request filed on [filing date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [parent application number] is acceptable and a CPA has been established.”

This indicates that the CPA has been properly filed and prosecution will continue based on the parent application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents. It allows applicants to continue prosecution of a previously filed design application by filing a request for continued examination. CPAs are governed by 37 CFR 1.53(d) and are only available for design applications.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

A Continued Prosecution Application (CPA) is a type of patent application specifically for design patents, filed under 37 CFR 1.53(d). It allows applicants to continue prosecution of a parent design patent application by filing a request for a CPA.

According to MPEP ¶ 2.30: The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established. This means that when a CPA is properly filed and accepted, it continues the prosecution of the parent application while establishing a new application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on Patent Application Process, visit: Patent Application Process.

A Continued Prosecution Application (CPA) is a type of continuation or divisional application that can be filed for design patent applications under 37 CFR 1.53(d). It allows an applicant to continue prosecution of a prior design application. As stated in the MPEP:

A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;

CPAs can only be filed before the earliest of: payment of the issue fee, abandonment, or termination of proceedings on the prior application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

A Conditional Request for a Continued Prosecution Application (CPA) is a filing made under 37 CFR 1.53(d) for design applications. However, it’s important to note that any “conditional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA. This means that even if an applicant intends the request to be conditional, the USPTO will process it as a standard CPA request.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:

1. A clear statement requesting the deletion of the inventor(s)
2. The name(s) of the inventor(s) to be deleted
3. The filing date of the CPA

The MPEP provides a template for acknowledging such requests:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

For more information on USPTO, visit: USPTO.

The first Office action of a Continued Prosecution Application (CPA) includes important information for the applicant. According to MPEP ¶ 2.35, the examiner should:

• Advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request
• Confirm that the CPA is acceptable and has been established
• Provide notice that an action on the CPA follows

This information is crucial because, as stated in the MPEP, “applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.” Therefore, this Office action serves as an important communication regarding the status of the application.

For more information on CPA, visit: CPA.

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

For more information on USPTO communication, visit: USPTO communication.

What happens to the status of the prior application when filing a CPA?

When filing a Continued Prosecution Application (CPA), the status of the prior application changes. According to MPEP 201.06(d):

The filing of a CPA is not a filing of a new application. Rather, a CPA is a continuation of the prior application and maintains the same application number as the prior application, i.e., the application number of the prior application is used as the application number for the CPA.

This means that:

• The prior application is not abandoned
• The CPA continues the examination process of the prior application
• The same application number is retained for the CPA

It’s important to note that while the CPA continues the examination, it is treated as a new application for all other purposes under the patent statute and rules.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

What happens to continuation or divisional applications filed after a CPA in a design application?

Continuation or divisional applications filed after a Continued Prosecution Application (CPA) in a design application are treated differently than those filed after a CPA in a utility or plant application. According to MPEP 201.06(d):

Any continuation or divisional application filed under 37 CFR 1.53(b) after the filing of a CPA of a design application will be assigned a new application number and will reflect the filing date of the 37 CFR 1.53(b) application.

This means that unlike utility or plant applications, where a continuation or divisional application would get the benefit of the CPA’s filing date, in design applications, these subsequent applications are treated as new applications with their own filing dates.

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

For more information on CPA, visit: CPA.

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

If the basic filing fee is not paid when filing a Continued Prosecution Application (CPA), the USPTO will send a notice to the applicant. According to MPEP 201.06(d):

‘If the basic filing fee is not paid when the CPA is filed or within the time period set forth in a notice from the Office, the USPTO will send a Notice to File Missing Parts in the CPA.’

This notice gives the applicant a chance to pay the fee and continue the application process. However, it’s important to note that failing to respond to this notice or pay the required fee within the specified time frame could result in the CPA being abandoned. It’s always best practice to submit all required fees at the time of filing to avoid potential delays or complications in the patent application process.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on Notice to File Missing Parts, visit: Notice to File Missing Parts.

If you submit an amendment to refer to a Continued Prosecution Application (CPA) as a continuation or divisional application, it will be denied entry by the patent examiner. The MPEP ¶ 2.34 states:

“Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.”

This means that the patent examiner will not accept or incorporate such amendments into the application. The CPA itself serves as the necessary reference to the prior application, making additional amendments unnecessary and inappropriate.

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

For more information on CPA, visit: CPA.

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

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

If you identify a new inventor in a Continued Prosecution Application (CPA) without filing a request under 37 CFR 1.48, the inventorship will not be officially changed. The MPEP clearly states: ‘It is noted that [new inventor] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [filing date], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.’ In such cases, the inventorship in the CPA will remain the same as in the prior application, despite the attempt to name a new inventor.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

When an improper Continued Prosecution Application (CPA) is filed, the USPTO’s response depends on the type of application and the nature of the impropriety:

• For utility or plant applications filed on or after July 14, 2003, an improper CPA is treated as a Request for Continued Examination (RCE) if possible
• If the improper CPA doesn’t meet RCE requirements, it’s treated as an improper RCE
• For design applications, an improper CPA may be treated as a new application under 37 CFR 1.53(b) in some circumstances
• The Office will not automatically convert an improper CPA to an application under 37 CFR 1.53(b) without extenuating circumstances

The MPEP states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed.

Regarding treatment as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

If the improper CPA doesn’t meet RCE requirements: If the improper CPA does not satisfy the requirements of 37 CFR 1.114 (e.g., the request lacks a submission or the fee under 37 CFR 1.17(e), or the prosecution of the application is not closed), the Office treats the improper CPA as an improper RCE, and the time period set in the last Office action (or notice) will continue to run.

Examiners are instructed to notify supervisory staff if they discover an improper CPA has been processed: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the Technology Center (TC) who will reprocess the CPA and correct the application records as appropriate.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

If a new inventor is identified in a Continued Prosecution Application (CPA) without proper documentation, it can lead to issues with the application. The MPEP ¶ 2.33 states:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

This means that if an examiner notices a new inventor listed on a CPA without the required request under 37 CFR 1.48, they will issue a notice to the applicant. The inventorship will remain the same as in the prior application until the proper request is filed and approved.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

If a new inventor is identified in a Continued Prosecution Application (CPA) without filing a proper request, it can lead to inventorship issues. The MPEP ¶ 2.33 states:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

This means that simply naming a new inventor in the CPA filing documents is not sufficient. Without a proper request under 37 CFR 1.48, the inventorship will remain the same as in the prior application, potentially leading to complications in the patent prosecution process.

For more information on CPA, visit: CPA.

If a new inventor is identified in a Continued Prosecution Application (CPA) for a design application, specific steps must be taken to properly add them to the application.

MPEP ¶ 2.33 states: “It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.”

This means that simply naming a new inventor in the CPA filing is not sufficient. A formal request under 37 CFR 1.48 must be filed to correct the inventorship. Without this request, the inventorship will remain the same as in the prior application, regardless of any new names listed on the CPA filing.

For more information on CPA, visit: CPA.

If a Continued Prosecution Application (CPA) request is improper for a utility or plant application, the USPTO handles it differently than for design applications. According to MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the USPTO treats the improper CPA request as a Request for Continued Examination (RCE). This approach ensures that the application can continue to be prosecuted, albeit under a different procedure. Applicants should be aware of this distinction and the potential implications for their patent prosecution strategy.

For more information on CPA, visit: CPA.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

If a Continued Prosecution Application (CPA) is improperly requested for a utility or plant patent application, it is typically treated as a Request for Continued Examination (RCE). The MPEP ¶ 2.30 provides guidance on this situation:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the examiner will use a different form paragraph (7.42.15) to notify the applicant that their CPA request has been treated as an RCE. This ensures that the application can continue to be examined under the appropriate procedure for utility or plant patents.

For more information on CPA, visit: CPA.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

If a Continued Prosecution Application (CPA) is filed in a utility or plant application after July 14, 2003, it will not be treated as a proper CPA. According to MPEP 201.06(d):

‘Any CPA filed on or after July 14, 2003 in a utility or plant application will automatically be treated as a request for continued examination (RCE) under 37 CFR 1.114, see MPEP § 706.07(h), paragraph II.’

This means that instead of being processed as a CPA, the application will be treated as a Request for Continued Examination (RCE). Applicants should be aware of this automatic conversion and ensure they meet the requirements for an RCE if they inadvertently file a CPA for a utility or plant application.

For more information on CPA, visit: CPA.

For more information on RCE, visit: RCE.

If a Continued Prosecution Application (CPA) is filed after the issue fee has been paid, it will not be treated as a CPA. Instead, it will be processed as follows:

• For applications filed on or after May 29, 2000, the CPA will be treated as a request for continued examination (RCE) under 37 CFR 1.114.
• For applications filed before May 29, 2000, the CPA will be treated as an improper application and will not be processed.

As stated in MPEP 201.06(d): “If an application is filed on or after May 29, 2000, the filing of a CPA is not permitted after payment of the issue fee. In such a case, the Office will treat the improper CPA as an RCE under 37 CFR 1.114, provided that the application is a utility or plant application filed on or after June 8, 1995.”

It’s important to note that this treatment as an RCE is only possible for utility or plant applications filed on or after June 8, 1995. For other types of applications or those filed before this date, the improper CPA filing will not be processed, and the applicant may need to consider other options, such as filing a reissue application if the patent has already issued.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on issue fee, visit: issue fee.

For more information on RCE, visit: RCE.

After a Continued Prosecution Application (CPA) is established, the USPTO proceeds with examination. According to MPEP ¶ 2.35:

Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.

This means that once the CPA is established, the examiner will review the application and issue an Office action. It’s important to note that applicants are not separately notified of the abandonment of the parent application, nor is a filing receipt normally sent for a CPA.

For more information on CPA, visit: CPA.

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

For more information on USPTO procedures, visit: USPTO procedures.

Once a Continued Prosecution Application (CPA) is established from a Conditional Request, the USPTO proceeds with the examination process as it would for any other CPA. According to MPEP ¶ 2.35: “An action on the CPA follows.”

This means that after the CPA is established:

• The parent application is considered abandoned
• The examiner will review the CPA and issue an Office action
• The applicant should be aware that they may not receive a filing receipt for the CPA, as noted in the MPEP: “This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.”

For more information on CPA, visit: CPA.

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

The signature requirements for filing a Continued Prosecution Application (CPA) are specific and important. According to MPEP 201.06(d):

A Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) must be signed by a person authorized to prosecute the application, except as provided in 37 CFR 1.33(b).

This means that:

• The CPA must be signed by someone authorized to prosecute the application.
• Typically, this would be the applicant or the applicant’s patent attorney or agent.
• There are exceptions outlined in 37 CFR 1.33(b), which allow for certain communications to be signed by other parties in specific circumstances.

It’s crucial to ensure that the proper signature is provided when filing a CPA to avoid potential issues with the application’s acceptance or processing.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

The signature requirements for a Continued Prosecution Application (CPA) request are specific and important to ensure proper filing. According to MPEP 201.06(d):

• The request for a CPA must be signed by a person authorized to prosecute the prior application.
• This includes:
  • A registered patent practitioner
  • The applicant (inventor or assignee of the entire interest)
• The signature can be provided through any of the approved signature methods outlined in 37 CFR 1.4(d).

The MPEP states: ‘A request for a CPA may only be signed by a person authorized to prosecute the application as set forth in 37 CFR 1.33(b).’ This ensures that only authorized individuals can initiate the CPA process, maintaining the integrity of the application.

It’s crucial to note that if the CPA request is not properly signed, it may not be granted a filing date, potentially affecting the continuity of the application.

For more information on CPA, visit: CPA.

To file a Continued Prosecution Application (CPA) in a design application, the following requirements must be met:

• The application must be a design application.
• The prior application must be a nonprovisional application.
• The application must be filed before the earliest of:
  • Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
  • Abandonment of the prior application; or
  • Termination of proceedings on the prior application.

As stated in the MPEP 201.06(d): “A continuation or divisional application that is a nonprovisional application may be filed as a CPA under 37 CFR 1.53(d) if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).”

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

For more information on CPA, visit: CPA.

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

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

There are two primary methods for requesting the deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications:

• Letter to the examiner: You can submit a letter directly to the patent examiner handling your application.
• Request for corrected filing receipt: You can file a formal request for a corrected filing receipt with the USPTO.

These methods are outlined in MPEP § 201, ¶ 2.32, which states:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt.

It’s important to note that this procedure is specific to design applications and is not applicable to utility patents.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

For more information on USPTO procedures, visit: USPTO procedures.

The filing requirements for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) are as follows:

• The CPA must be filed before the earliest of:
  • Payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted;
  • Abandonment of the prior application; or
  • Termination of proceedings on the prior application.
• The CPA must include a request to initiate proceedings under 37 CFR 1.53(d).
• The prior application must be a design application eligible for CPA practice.

As stated in the MPEP 201.06(d): ‘A continuation or divisional application may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b).’

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

What are the filing date requirements for a CPA?

The filing date requirements for a Continued Prosecution Application (CPA) are specific and must be adhered to. According to MPEP 201.06(d):

The filing date of a CPA is the date on which a request on a separate paper for an application under 37 CFR 1.53(d) is filed. A request for a CPA is a paper filing, even though it may be submitted via EFS-Web.

Key points about CPA filing date requirements include:

• The CPA must be filed before the payment of the issue fee for the prior application
• It must be filed before abandonment of the prior application
• The request for a CPA must be made on a separate paper
• The filing date is based on when the CPA request is received, not when other application documents are submitted

It’s crucial to meet these requirements to ensure the CPA is properly filed and receives the correct filing date.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

To receive a filing date for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d), the following requirements must be met:

• The application must be for a design patent;
• The prior application must be a design application that is complete as defined by 37 CFR 1.51(b);
• The application must be submitted before the payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application;
• The application must be filed within the period set forth in 37 CFR 1.53(d)(1)(ii); and
• The application must be filed with a request for a CPA.

As stated in the MPEP: ‘A CPA may be filed under 37 CFR 1.53(d) only if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).’

For more information on CPA, visit: CPA.

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

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

Failing to file a 37 CFR 1.48 request when adding a new inventor to a Continued Prosecution Application (CPA) can have significant consequences.

MPEP ¶ 2.33 states: “Otherwise, the inventorship in the CPA shall be the same as in the prior application.” This means that without a proper 37 CFR 1.48 request:

• The new inventor will not be officially recognized on the application.
• The inventorship will remain unchanged from the prior application.
• This discrepancy could potentially affect the validity of the patent if granted.
• It may lead to complications in future patent proceedings or enforcement efforts.

It’s crucial to follow proper procedures to ensure all inventors are correctly listed and legally recognized on the patent application.

For more information on CPA, visit: CPA.

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

When filing a Continued Prosecution Application (CPA), there are specific conditions under which the prior application may be automatically abandoned. According to MPEP 201.06(d):

A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA. See 37 CFR 1.53(d)(2)(v).

However, it’s important to note that:

• The prior application is only expressly abandoned if the CPA is properly filed.
• If the CPA is improper (e.g., filed in a utility application), the express abandonment of the prior application will not be effective.
• The abandonment of the prior application is automatic upon the filing date of the properly filed CPA.

This automatic abandonment provision ensures a clear transition from the prior application to the CPA, which is particularly relevant for design applications where CPAs are permitted.

For more information on CPA, visit: CPA.

All relevant information from MPEP ¶ 2.33 New Inventor Identified in CPA (for Design Applications) has been covered in the previous FAQs. No additional meaningful questions can be generated without redundancy.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on inventorship, visit: inventorship.

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

Inventorship in a Continued Prosecution Application (CPA) is generally maintained from the prior application. However, if there’s a need to add or change inventors, specific procedures must be followed.

According to MPEP ¶ 2.33: “Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inventorship in the CPA shall be the same as in the prior application.”

This means that if you want to add or change inventors in a CPA, you must file a formal request under 37 CFR 1.48, which outlines the procedure for correction of inventorship in patent applications.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

According to MPEP ¶ 2.35, the USPTO treats ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. The MPEP explicitly states:

Any ‘conditional’ request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.

This means that even if an applicant submits a CPA request with conditions attached, the USPTO will process it as a standard, unconditional CPA request. This policy ensures clarity and consistency in the application process.

For more information on CPA, visit: CPA.

For more information on USPTO procedures, visit: USPTO procedures.

The USPTO treats all ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. According to MPEP ¶ 2.35:

Any “conditional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.

This means that once a conditional CPA request is submitted, it will be processed as a standard CPA, regardless of the applicant’s original intent.

For more information on CPA, visit: CPA.

The United States Patent and Trademark Office (USPTO) treats all ‘conditional’ requests for Continued Prosecution Applications (CPAs) as unconditional requests. This is clearly stated in MPEP ¶ 2.35:

“Any ‘conditional’ request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA.”

This means that once a CPA request is filed, even if the applicant intended it to be conditional, the USPTO will process it as a regular CPA. The conditions specified by the applicant are essentially disregarded, and the CPA is established based on the filing of the request alone.

For more information on CPA, visit: CPA.

For more information on Patent Application Process, visit: Patent Application Process.

The United States Patent and Trademark Office (USPTO) formally acknowledges a Request to Delete a Named Inventor in a Continued Prosecution Application (CPA) through an official response. This acknowledgment serves as confirmation that the request has been received and processed.

The MPEP ¶ 2.32 provides the standard language used by examiners to acknowledge such requests:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

In this acknowledgment:

• [1] refers to the name(s) of the inventor(s) requested to be deleted
• [2] indicates the filing date of the CPA

This official response confirms that the USPTO has processed the request and updated the inventorship accordingly.

For more information on CPA, visit: CPA.

For more information on USPTO acknowledgment, visit: USPTO acknowledgment.

The inventorship in a Continued Prosecution Application (CPA) is directly related to the parent application. As stated in MPEP 201.06(d):

‘The inventorship in a CPA filed under 37 CFR 1.53(d) is the same as in the prior application.’

This means that when you file a CPA, you are essentially continuing the same application with the same inventors. However, it’s important to note that if there are any changes to inventorship required, they must be made through the appropriate procedures, such as filing a request under 37 CFR 1.48. Any such changes should be made promptly to ensure the accuracy of the patent application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

The filing date of a Continued Prosecution Application (CPA) has important implications for its priority claim. According to MPEP 201.06(d):

The filing date of a CPA is the date on which a request on a separate paper for an application under 37 CFR 1.53(d) is filed. A request for a CPA is not entitled to the benefit of a Certificate of Mailing or Transmission under 37 CFR 1.8.

This means that:

• The CPA’s filing date is the actual date the USPTO receives the CPA request.
• This date cannot be backdated using a Certificate of Mailing or Transmission.
• The CPA automatically receives the benefit of the filing date of the prior application.
• Any foreign priority or domestic benefit claims made in the prior application are automatically carried forward to the CPA.

It’s crucial to understand that while the CPA maintains the priority claims of the prior application, its actual filing date is the date of receipt by the USPTO, which can affect certain statutory deadlines and prior art considerations.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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.

Inventorship in a Continued Prosecution Application (CPA) generally carries over from the prior application, but there are some important considerations:

• The inventive entity of the CPA is automatically the same as the prior application unless a statement is filed requesting deletion of inventors
• A statement requesting deletion of inventors must be filed with the CPA request and signed by a person authorized under 37 CFR 1.33(b)
• New inventors cannot be added simply by naming them in the CPA transmittal letter or a new oath/declaration
• To add new inventors, a request under 37 CFR 1.48 must be filed, including the required fee

The MPEP states: The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

If an inventor is named in the CPA who was not in the prior application, the examiner will notify the applicant using form paragraph 2.33:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

In a Continued Prosecution Application (CPA), the inventorship is typically the same as in the prior application. However, if a new inventor needs to be added, a specific process must be followed. According to MPEP ¶ 2.33:

Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inventorship in the CPA shall be the same as in the prior application.

This means that if you want to add a new inventor to a CPA, you must file a formal request under 37 CFR 1.48, which outlines the procedures for correcting or changing inventorship in patent applications.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

Continued Prosecution Application (CPA) practice differs significantly for utility and plant applications compared to design applications. The key difference is:

CPA practice is not available for utility and plant applications filed on or after May 29, 2000.

As stated in the MPEP 201.06(d): “Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications in view of the eighteen-month publication of applications under 35 U.S.C. 122(b). A request for a CPA filed on or after July 14, 2003 in a utility or plant application is improper and will not be treated as a CPA.”

For utility and plant applications, applicants should instead consider filing:

• A request for continued examination (RCE) under 37 CFR 1.114
• A continuation or divisional application under 37 CFR 1.53(b)

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

For more information on CPA, visit: CPA.

For more information on RCE, visit: RCE.

Confidentiality in Continued Prosecution Applications (CPAs) is handled differently from standard applications. Filing a CPA includes a waiver of confidentiality to some extent:

• The CPA is construed to include a waiver of confidentiality under 35 U.S.C. 122
• This waiver allows public access to both the prior application and any continuing applications filed under 37 CFR 1.53(d)
• Access is limited to those entitled under 37 CFR 1.14 to obtain information about the applications

The MPEP states: A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

This means that if someone is entitled to access information about either the prior application or the CPA, they may be given similar access to information about both applications. This is different from the standard confidentiality provisions for pending applications.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

According to MPEP § 201, specifically paragraph 2.30, an examiner notifies an applicant about a Continued Prosecution Application’s (CPA) acceptance in the first Office action of the CPA. The MPEP states:

Use this form paragraph in the first Office action of a CPA to advise the applicant that a request for a CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

This notification is crucial because it confirms the establishment of the CPA and provides important information to the applicant about the status of their application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

When a patent examiner encounters an amendment attempting to reference a prior application in a Continued Prosecution Application (CPA), they should not enter the amendment and inform the applicant of this decision.

According to MPEP ¶ 2.34, examiners should use the following language:

“The amendment filed [1] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [2] application of Application No. [3] has not been entered. 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. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.”

Examiners should fill in the brackets with: [1] the filing date of the amendment, [2] either “continuation” or “divisional”, and [3] the Application Number of the prior nonprovisional application.

For more information on CPA, visit: CPA.

When a patent examiner encounters an amendment attempting to refer to a Continued Prosecution Application (CPA) as a continuation or divisional application, they should not enter the amendment. According to MPEP § 201.06(d), examiners are instructed to use Form Paragraph 2.34 to inform the applicant that such amendments will not be entered:

“Use this form paragraph to inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.”

The examiner will provide the reason for non-entry, explaining that the CPA request itself serves as the specific reference required by 35 U.S.C. 120, and there is no need to amend the specification to refer back to the prior application.

For more information on CPA, visit: CPA.

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 § 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) and a continuation application are both ways to continue prosecution of a patent application, but they have key differences:

• CPA: Only available for design applications filed before May 29, 2000, and for plant applications. It continues examination of the same application.
• Continuation: Available for all types of applications and creates a new application that claims priority to the parent application.

The MPEP ¶ 2.34 highlights a crucial distinction in how they reference prior applications:

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 means that for a CPA, the mere act of filing establishes the reference to the prior application. In contrast, a continuation application typically requires an explicit reference to the parent application in the specification.

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

For more information on CPA, visit: CPA.

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

Filing a Continued Prosecution Application (CPA) has specific effects on the status of the prior application:

• The prior application is abandoned by operation of law upon filing of the CPA.
• Any appeal in the prior application is dismissed automatically.
• Any amendment filed with the CPA request is not entered unless it is specifically requested by the applicant.

As stated in the MPEP 201.06(d): ‘The filing of a CPA is not a filing of a new application. Rather, it is a continuation of the pending prior application.’ This means that while the prior application is technically abandoned, its substance continues in the CPA.

It’s important to note that any amendment accompanying the CPA request will be placed in the file but not entered unless the applicant specifically requests it. This allows applicants to submit potential amendments without automatically changing the application’s content.

For more information on CPA, visit: CPA.

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.

To request deletion of a named inventor in a Continued Prosecution Application (CPA) for design applications, you need to file a proper request with the USPTO. According to MPEP § 201, specifically paragraph 2.32:

In a continued prosecution application (CPA) for a design application (37 CFR 1.53(d)), a request to delete a named inventor from the prior application may be submitted by way of a letter to the examiner or a request for corrected filing receipt. However, it should be noted that this is only available for design applications.

This process is specific to design applications and allows for the correction of inventorship in CPAs.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

For more information on USPTO procedures, visit: USPTO procedures.

To correctly add a new inventor to a Continued Prosecution Application (CPA), you must follow the procedures outlined in 37 CFR 1.48. The MPEP ¶ 2.33 states:

Any request to add an inventor must be in the form of a request under 37 CFR 1.48.

To add a new inventor:

1. File a request under 37 CFR 1.48 to correct the inventorship.
2. Include a statement from the new inventor agreeing to the addition.
3. Pay any required fees.
4. Provide an oath or declaration from the new inventor.

Failure to follow these steps may result in the inventorship remaining the same as in the prior application.

For more information on CPA, visit: CPA.

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: A request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

For more information on benefit claims, visit: benefit claims.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

Inventorship in a Continued Prosecution Application (CPA) for design patents can be corrected by filing a statement requesting the deletion of a named inventor along with the CPA filing. The MPEP states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This process allows for immediate correction of inventorship when filing a CPA. However, it’s important to note that any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

For more information on inventorship, visit: inventorship.

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

To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

An inventor can be deleted from a Continued Prosecution Application (CPA) for design patents by submitting a statement requesting the deletion at the time of filing the CPA. The MPEP states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This process allows for the correction of inventorship at the time of filing the CPA. However, it’s important to note that if you need to delete an inventor after the CPA has been filed, you must follow a different procedure, as stated in the MPEP: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”

For more information on CPA, visit: CPA.

Continued Prosecution Applications (CPAs) and Requests for Continued Examination (RCEs) are both methods to continue prosecution of an application, but they have significant differences:

• CPAs are only available for design patent applications, while RCEs can be used for utility, plant, and design applications
• CPAs result in a new application with the same application number, while RCEs continue examination of the same application
• CPAs can only be filed before payment of the issue fee, abandonment, or termination of proceedings; RCEs can be filed after payment of the issue fee with a petition
• CPAs automatically abandon the prior application, while RCEs do not

The MPEP states: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. Henceforth, applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE) under 37 CFR 1.114.

It’s important to note that if an improper CPA is filed for a utility or plant application on or after July 14, 2003, it may be treated as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

Can you file a CPA in a provisional application?

No, you cannot file a Continued Prosecution Application (CPA) in a provisional application. The MPEP 201.06(d) clearly states:

A CPA may not be filed in a provisional application.

CPAs are only available for certain types of nonprovisional applications. Specifically, they can be filed in design applications, and in utility and plant applications that were filed before May 29, 2000. Provisional applications have a different purpose and process, and do not allow for the filing of CPAs.

For more information on CPA, visit: CPA.

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

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

Yes, the inventorship in a Continued Prosecution Application (CPA) can differ from the original application, but only if a proper request is filed and approved.

According to MPEP ¶ 2.33: Otherwise, the inventorship in the CPA shall be the same as in the prior application. This implies that changes to inventorship are possible, but they require specific action.

To change the inventorship, you must file a request under 37 CFR 1.48. This applies whether you’re adding, removing, or changing the order of inventors. Without this formal request, the inventorship will remain the same as in the original application, even if new inventors are listed on the CPA filing documents.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

Yes, multiple inventors can be deleted from a Continued Prosecution Application (CPA) at once. The language in MPEP ¶ 2.32 supports this:

In bracket 1 insert the name or names of the inventor(s) requested to be deleted.

This indicates that the process allows for the deletion of one or more inventors simultaneously. When filing a CPA, applicants can submit a statement requesting the deletion of multiple named inventors who are not inventors of the invention being claimed in the new application.

However, it’s crucial to ensure that all remaining inventors are correctly named and that the inventorship accurately reflects those who contributed to the claimed invention. If the CPA has already been filed, remember that any subsequent inventorship changes must follow the procedures outlined in 37 CFR 1.48.

For more information on CPA, visit: CPA.

No, you cannot amend the specification to refer to a Continued Prosecution Application (CPA) as a continuation of a prior application. The USPTO explicitly denies such amendments. As stated in MPEP ¶ 2.34:

The amendment filed [date] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [continuation/divisional] application of Application No. [X] has not been entered. 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. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.

This means that the act of filing a CPA automatically establishes the necessary reference to the prior application, making any specification amendment unnecessary and prohibited.

For more information on CPA, visit: CPA.

No, you cannot amend the specification of a Continued Prosecution Application (CPA) to refer to it as a continuation or divisional application. According to MPEP § 201.06(d):

“The amendment filed [date] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [continuation/divisional] application of Application No. [X] has not been entered. 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. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.”

This means that the CPA request itself serves as the required reference to the prior application, and no additional amendment to the specification is necessary or allowed.

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

For more information on CPA, visit: CPA.

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

The MPEP ¶ 2.32 specifically addresses the process of deleting named inventors when filing a Continued Prosecution Application (CPA) for design patents. However, it does not explicitly mention adding or substituting inventors at the time of CPA filing.

If you need to add or substitute inventors, rather than just delete them, you should follow the general procedures for correction of inventorship outlined in 37 CFR 1.48. This regulation provides the requirements for adding, deleting, or substituting inventors in patent applications.

It’s advisable to consult with a patent attorney or contact the USPTO directly for guidance on the proper procedure for adding or substituting inventors when filing a CPA, as this may require additional documentation or fees beyond a simple deletion request.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

Amendments can be made when filing a Continued Prosecution Application (CPA), but there are important restrictions and considerations:

• Any changes must be made as an amendment to the prior application as it existed before filing the CPA
• No new matter can be introduced in a CPA
• Preliminary amendments filed with a CPA are generally entered, but could be denied entry if they unduly interfere with examination
• New specifications filed with a CPA request are treated as substitute specifications and must comply with 37 CFR 1.125

The MPEP states: Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application.

Regarding preliminary amendments, the MPEP advises: Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.

If more time is needed to prepare amendments, applicants can request a three-month suspension of action under 37 CFR 1.103(b) at the time of filing the CPA.

For more information on amendments, visit: amendments.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

Can a CPA be filed as a continuation-in-part application?

No, a Continued Prosecution Application (CPA) cannot be filed as a continuation-in-part application. According to MPEP 201.06(d):

‘A continuation or divisional application (but not a continuation-in-part) may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b).’

This means that while you can file a CPA as a continuation or divisional application of a prior design application, you cannot file it as a continuation-in-part. Continuation-in-part applications typically contain new matter not present in the prior application, which is not allowed in a CPA filing.

For more information on CPA, visit: CPA.

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

Can a Continued Prosecution Application (CPA) be filed in a provisional application?

No, a Continued Prosecution Application (CPA) cannot be filed in a provisional application. According to MPEP 201.06(d):

“A continuation or divisional application may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b).”

This explicitly limits CPA practice to design applications. Provisional applications are not eligible for CPA filings. If an applicant wishes to continue prosecution based on a provisional application, they must file a non-provisional application claiming priority to the provisional application within the appropriate time frame.

For more information on CPA, visit: CPA.

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

Yes, a Continued Prosecution Application (CPA) can be filed for design applications. In fact, as of September 8, 2000, CPAs are only available for design applications. According to MPEP 201.06(d):

‘Effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications. CPAs can only be filed for design applications.’

This means that for utility and plant patent applications, other forms of continuing applications such as RCEs (Request for Continued Examination) or continuation applications under 37 CFR 1.53(b) must be used instead of CPAs.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”

Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.

Yes, a continuation application can be filed after the parent application is granted or abandoned, but there are timing restrictions. The MPEP states:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

However, it’s important to note:

• For standard continuation applications under 37 CFR 1.53(b), they must be filed before the patenting, abandonment, or termination of proceedings on the earlier application.
• For Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), they must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

Always consult with a patent attorney to ensure proper timing and procedures are followed.

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

For more information on CPA, visit: CPA.

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

No, applicants are not separately notified when their parent application is abandoned due to the filing of a Continued Prosecution Application (CPA). This is implied in the examiner’s note in MPEP ¶ 2.35:

This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

The establishment of a CPA automatically results in the abandonment of the parent application. Applicants should be aware that by filing a CPA, they are effectively abandoning the parent application in favor of continuing prosecution through the CPA.

For more information on CPA, visit: CPA.

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

The front page of a patent issuing from a continued prosecution application (CPA) filed under 37 CFR 1.53(d) contains specific information about prior applications.

As stated in the MPEP: The front page of a printed patent issuing on a continued prosecution application (CPA) filed under37 CFR 1.53(d)will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application. (MPEP 202)

This means that for a CPA:

• The application number and filing date of the most recent non-CPA application are shown
• The CPA’s own filing date is not displayed
• All prior applications claimed as benefit in the most recent non-CPA application are listed

This information helps establish the continuity and priority of the patent application.

For more information on benefit claims, visit: benefit claims.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on patent front page, visit: patent front page.

For more information on prior applications, visit: prior applications.

For continued prosecution applications (CPAs) filed under 37 CFR 1.53(d), the front page of a printed patent will include:

• The application number and filing date of the most recent noncontinued prosecution application
• All prior applications from which benefit was claimed in the most recent noncontinued prosecution application

Notably, the filing date of the CPA itself is not included. As stated in the MPEP: “The front page of a printed patent issuing on a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will identify the application number and filing date of the most recent noncontinued prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application.” (MPEP 202)

Yes, you can delete a benefit claim, but it’s important to understand the process and potential implications:

1. For applications filed on or after September 16, 2012, you can delete a benefit claim by filing a corrected Application Data Sheet (ADS) that removes the reference to the prior-filed application.
2. For applications filed before September 16, 2012, you can delete a benefit claim by amending the specification (if the claim is in the specification) or by submitting a supplemental ADS to delete references to prior applications.

According to MPEP 211.02(a): The examiner should consider whether any new prior art may now be available if a benefit claim is deleted.

Important considerations:

• Deleting a benefit claim may expose your application to additional prior art, potentially affecting its patentability.
• If you delete a benefit claim after final rejection or allowance, the amendment will be treated under special rules (37 CFR 1.116 or 1.312, respectively).
• Deleting a benefit claim may be seen as intentionally waiving the benefit claim. If you later try to reinstate it, the USPTO may not accept it as unintentionally delayed.
• In a Continued Prosecution Application (CPA), you cannot delete the reference to the prior application with the same application number.

Always carefully consider the implications before deleting a benefit claim, and consult with a patent attorney if you’re unsure about the consequences.

For more information on ADS, visit: ADS.

For more information on CPA, visit: CPA.

For more information on prior art, visit: prior art.

Filing a Continued Prosecution Application (CPA) by facsimile requires specific procedures, as outlined in MPEP 502.01:

1. CPAs are only available for design applications.
2. The CPA must be sent to the central facsimile number: (571) 273-8300.
3. An authorization to charge the basic filing fee to a deposit account or credit card must be included, or the application will be treated as filed without the basic filing fee.
4. There is a special receipt procedure for CPA filings by fax:

There is a special receipt procedure for filing a CPA by fax, whereby the Office will fax back a receipt of the CPA filing if applicant submits the Office receipt form along with the CPA filing.

It’s important to note that if the USPTO has no evidence of receiving a CPA transmitted by fax, the applicant may need to file a petition under 37 CFR 1.6(f) to request a filing date. This petition must include:

• Information about the previous transmission
• An additional copy of the CPA
• A statement attesting to the previous transmission
• Evidence of the transmission, such as a sending unit’s report or other evidence created within one business day of the transmission

Always ensure that you follow these procedures carefully when filing a CPA by facsimile to avoid any issues with the filing date or processing of your application.

To learn more:

• Continued Prosecution Application
• CPA
• facsimile filing
• USPTO procedures
• design applications

Amendments to refer to Continued Prosecution Applications (CPAs) as continuation or divisional applications are not allowed because they are unnecessary and can potentially cause confusion. The MPEP ¶ 2.34 explains:

“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 means that the CPA itself already serves as the legally required reference to the prior application. Adding additional references through amendments is redundant and could potentially lead to inconsistencies or misinterpretations in the patent record.

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

For more information on CPA, visit: CPA.

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

You should file a 37 CFR 1.48 request to correct inventorship in a Continued Prosecution Application (CPA) as soon as you realize there’s a need to add or remove an inventor. This should be done concurrently with or shortly after filing the CPA.

The MPEP ¶ 2.33 indicates:

Any request to add an inventor must be in the form of a request under 37 CFR 1.48.

It’s important to file this request promptly to ensure that the correct inventorship is recorded for your application. Failure to do so may result in the inventorship remaining the same as in the prior application, which could potentially affect the validity of your patent if granted.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

You should file a 37 CFR 1.48 request for a Continued Prosecution Application (CPA) whenever you need to add, remove, or change the order of inventors from the original application.

The MPEP ¶ 2.33 indicates: Any request to add an inventor must be in the form of a request under 37 CFR 1.48. This applies even if you’ve identified the new inventor in the CPA filing documents.

It’s best to file the 37 CFR 1.48 request as soon as you realize there’s a need to correct the inventorship. This ensures that the correct inventors are associated with the application throughout the examination process.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

Form Paragraph 2.35 should be used in specific circumstances during the patent examination process. According to the MPEP ¶ 2.35, this form paragraph is to be used:

in the first Office action of a CPA to advise the applicant that a ‘conditional’ request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established.

However, it’s important to note that this form paragraph should not be used in all situations. Specifically:

• It should only be used for design applications, as CPAs are only available for design applications.
• If the request for a CPA in a utility or plant application is improper and has been treated as an RCE (Request for Continued Examination), examiners should use form paragraph 7.42.15 instead.

Examiners should refer to MPEP § 706.07(h) for more information on handling improper CPA requests in utility or plant applications.

For more information on CPA, visit: CPA.

For more information on design applications, visit: design applications.

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

A Continued Prosecution Application (CPA) is acceptable when it meets the requirements set forth in 37 CFR 1.53(d). According to MPEP § 201, the examiner will use specific language to indicate acceptance:

The request filed on [date] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [number] is acceptable and a CPA has been established.

It’s important to note that CPAs are now only available for design patent applications. For utility and plant applications, a Request for Continued Examination (RCE) would be used instead.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

A continuation application can be filed at various stages during the patent application process, as long as the parent application is still pending. The MPEP provides guidance on the timing:

“At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.”

It’s important to note that there are some exceptions for specific types of applications, such as continued prosecution applications (CPAs) for design applications, which have additional timing requirements.

To learn more:

• continuation application timing
• patent application process
• CPA
• design applications

Continued Prosecution Applications (CPAs) are limited to specific types of patent applications:

• Design Applications: CPAs are available for design applications filed before May 29, 2000.
• Plant Applications: CPAs can be used for plant patent applications.

It’s important to note that CPAs are not available for utility patent applications filed on or after May 29, 2000. For these applications, applicants should use a Request for Continued Examination (RCE) instead.

The MPEP ¶ 2.34 provides guidance on how CPAs reference prior applications:

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 means that for eligible applications, the CPA automatically establishes the necessary reference to the prior application without requiring amendments to the specification.

For more information on CPA, visit: CPA.