Patent Law FAQ

What types of national applications can be filed with the USPTO?

The United States Patent and Trademark Office (USPTO) accepts several types of national applications. These include:

• Utility patent applications: For new and useful processes, machines, articles of manufacture, or compositions of matter.
• Design patent applications: For new, original, and ornamental designs for articles of manufacture.
• Plant patent applications: For new varieties of asexually reproduced plants.
• Provisional patent applications: A temporary application that establishes a filing date but does not mature into an issued patent.

According to MPEP 201.01:

Applications for plant patents, design patents, and utility patents are national applications.

Each type of application has specific requirements and procedures. Utility, design, and plant patent applications can be filed as nonprovisional applications, while provisional applications are only available for utility patents.

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

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

For more information on USPTO, visit: USPTO.

The main difference between utility and design patents is in what they protect:

• Utility patents protect the way an article is used and works. They cover new and useful processes, machines, manufactures, or compositions of matter.
• Design patents protect the way an article looks. They cover new, original, and ornamental designs for an article of manufacture.

The MPEP distinguishes between these types of patents by referencing different sections of U.S. Code: utility patents are provided for by 35 U.S.C. 101, while design patents are provided for by 35 U.S.C. 171.

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

What is the difference between a utility patent and a design patent application?

Utility patents and design patents protect different aspects of an invention, and their applications are processed differently. According to MPEP 201.02:

‘A utility application is a nonprovisional application that is not a design application. A design application is an application for a design patent.’

Key differences include:

• Utility Patent Application:
  • Protects the functional aspects of an invention
  • Covers how an invention works or is used
  • Has a term of 20 years from the filing date
• Design Patent Application:
  • Protects the ornamental design of a functional item
  • Covers how an invention looks
  • Has a term of 15 years from the grant date

Inventors should carefully consider which type of patent application best suits their invention’s nature and intended protection.

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

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

For more information on USPTO, visit: USPTO.

The deadline for filing a foreign priority claim in a U.S. patent application depends on the type of application:

• For applications filed under 35 U.S.C. 111(a), the claim must be filed within the later of:
  • Four months from the actual filing date of the application, or
  • Sixteen months from the filing date of the prior foreign application
• For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set by the PCT and its Regulations
• For design patent applications, the claim can be made at any time during the pendency of the application

As stated in MPEP 214.01: “The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”

To learn more:

• foreign priority
• patent application
• filing deadline
• design patent
• PCT application

Design patent applications and utility patent applications are two distinct types of patent applications that protect different aspects of inventions. According to MPEP 201:

• Design Patent Application: “An application for a design patent filed under 35 U.S.C. 171 may be referred to as a design application.” Design patents protect the ornamental appearance of an article of manufacture.
• Utility Patent Application: These applications protect the functional aspects of an invention, including processes, machines, articles of manufacture, and compositions of matter.

The key differences are:

1. Subject Matter: Design patents cover appearance, while utility patents cover functionality.
2. Duration: Design patents last for 15 years from issuance, while utility patents last for 20 years from the filing date.
3. Examination Process: Design patent applications typically have a simpler examination process.

For more details on utility patents, refer to 35 U.S.C. 101, and for design patents, see 35 U.S.C. 171.

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

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

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

The right of priority for international design applications is governed by 35 U.S.C. 386. There are two main scenarios:

1. A U.S. national application can claim priority from a prior international design application that designated at least one country other than the United States.
2. An international design application designating the United States can claim priority from a prior foreign application, a prior PCT application designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

The MPEP states: Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a) – (d) and 172 with respect to a prior international design application that designates at least one country other than the United States.

To learn more:

• international design application
• priority claim
• design patent

The inventorship in a Continued Prosecution Application (CPA) automatically carries over from the prior application, unless specific steps are taken to change it. As stated in the MPEP:

“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. 37 CFR 1.53(d)(4).”

If an inventor needs to be added or deleted, a request under 37 CFR 1.48 must be filed, along with the required fee. The examiner will notify the applicant if there are any inventorship discrepancies in the first Office action.

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

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

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

Filing a Continued Prosecution Application (CPA) has implications for public access to the application. 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. 37 CFR 1.53(d)(6).”

This means:

• The CPA is considered a waiver of confidentiality for the entire application chain
• Members of the public who have access to one application in the chain may be given similar access to others
• This increased accessibility applies to both the prior application and any continuing applications

Applicants should be aware of this potential for increased public access when deciding to file a CPA.

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

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

Claiming priority for international design applications has some specific provisions, particularly when the application designates the United States. These provisions are outlined in the MPEP and relevant regulations.

According to MPEP 213.07: “Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

Key points about priority in international design applications include:

• The right of priority under 35 U.S.C. 386(a) or (b) applies only to applications filed on or after May 13, 2015.
• For nonprovisional international design applications, the priority claim must be presented in an application data sheet during the pendency of the application, unless made in accordance with the Hague Agreement and Regulations.
• The certified copy of the priority document must be furnished within the time period specified in 37 CFR 1.55(g).
• An international design application designating the U.S. can claim priority to a prior foreign application, PCT application, or another international design application.

The MPEP also notes: “See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.”

These provisions ensure that design patent applicants can properly claim priority to earlier filed applications in the context of the international design registration system.

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

For more information on Hague Agreement, visit: Hague Agreement.

A terminal disclaimer filed in a parent application automatically carries over to a Continued Prosecution Application (CPA). The MPEP clearly states:

“A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.”

However, if an applicant does not want the terminal disclaimer to apply to the CPA, they must take specific action:

“If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.”

It’s important to note that such a petition must be filed and granted before the patent issues to be effective.

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

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

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

Design patent applications and utility patent applications are distinct types of patent applications, each protecting different aspects of an invention. According to MPEP 201:

‘Design applications are not included in the term ‘nonprovisional’ as used in 37 CFR 1.9. […] Design applications are treated separately in 35 U.S.C. 171-173 and 37 CFR 1.151-1.155.’

Key differences include:

• Subject Matter: Utility patents protect how an invention works, while design patents protect how it looks.
• Duration: Utility patents last 20 years from filing, design patents 15 years from grant.
• Examination Process: Design applications typically have a simpler examination process.

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

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

The handling of delayed priority claims in design applications has evolved. The MPEP provides the following information:

“Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application.”

This change allows design patent applicants and holders to rectify unintentionally delayed priority claims, aligning the process more closely with that of utility patents. As with utility patents, a petition under 37 CFR 1.55(e) may be filed along with a request for a certificate of correction after the design patent has been granted.

To learn more:

• design patent
• delayed priority claim
• unintentional delay
• patent procedure

No, design patent applications cannot directly claim the benefit of a provisional application. The MPEP clearly states:

“Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e).”

This restriction is based on 35 U.S.C. 172. However, there is a potential indirect way to claim some benefit:

If a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design application cannot claim the benefit of the filing date of the provisional application.

This means that while a design application can’t directly benefit from a provisional application’s filing date, it may indirectly benefit from the disclosure in a nonprovisional utility application that claims priority to a provisional application.

To learn more:

• design patent
• provisional application
• benefit claim
• patent law

While amendments can be filed with a Continued Prosecution Application (CPA) request, there are important considerations and limitations. 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.”

Additionally:

• Preliminary amendments filed with a CPA are generally entered
• Applicants are encouraged to file any amendments at the time of filing the CPA to avoid potential delays
• Any new matter introduced will be required to be canceled
• Claims relying on new matter may be rejected under 35 U.S.C. 112(a)

The MPEP advises: “Applicants are strongly encouraged to file any preliminary amendment in a CPA at the time the CPA is filed. See 37 CFR 1.115 and MPEP § 714.03(a).”

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

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

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

No, a design patent application cannot be filed as a provisional application. The MPEP 201.01 states:

“Design applications and provisional applications for patent are considered to be distinct types of applications and are treated as separate categories.”

This means that design patent applications must be filed as nonprovisional applications. Provisional applications are only available for utility and plant patents.

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

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

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

Can a Certificate of Correction be used to add or correct a benefit claim after patent grant?

The use of a Certificate of Correction to add or correct a benefit claim after patent grant depends on the type of patent. According to MPEP 211.02(a):

“For utility and plant applications, a Certificate of Correction can be used to correct the failure to adequately claim priority under 35 U.S.C. 119(e) or 120 in the application as filed if the application was filed within the required time period. However, for design applications, an application may be amended to claim priority to or the benefit of a prior-filed application after the application issues as a patent by filing a reissue application.”

This means:

• For utility and plant patents: A Certificate of Correction can be used to add or correct a benefit claim after patent grant, provided the application was filed within the required time period.
• For design patents: A Certificate of Correction cannot be used. Instead, a reissue application must be filed to add or correct a benefit claim after patent grant.

It’s important to note that the option to use a Certificate of Correction for utility and plant patents is subject to specific conditions and time limitations. Always consult the current MPEP and seek legal advice if necessary.

To learn more:

• Certificate of Correction
• benefit claim
• utility patent
• plant patent
• design patent

Yes, design patent applications have different requirements for filing priority claims compared to utility patent applications. The main difference is in the time period for filing the claim. As stated in MPEP 214.01:

“The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”

For design applications, the MPEP further clarifies: “In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).”

This means that for design patent applications, you can file a priority claim at any time while the application is pending, which provides more flexibility compared to utility patent applications.

For more detailed information on priority claims in design applications, you can refer to MPEP § 1504.10 and MPEP § 2920.05(d).

To learn more:

• design patent
• foreign priority
• filing deadline
• patent application

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

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

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

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

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

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

What types of national applications can be filed with the USPTO?

The United States Patent and Trademark Office (USPTO) accepts several types of national applications. These include:

• Utility patent applications: For new and useful processes, machines, articles of manufacture, or compositions of matter.
• Design patent applications: For new, original, and ornamental designs for articles of manufacture.
• Plant patent applications: For new varieties of asexually reproduced plants.
• Provisional patent applications: A temporary application that establishes a filing date but does not mature into an issued patent.

According to MPEP 201.01:

Applications for plant patents, design patents, and utility patents are national applications.

Each type of application has specific requirements and procedures. Utility, design, and plant patent applications can be filed as nonprovisional applications, while provisional applications are only available for utility patents.

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

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

For more information on USPTO, visit: USPTO.

The main difference between utility and design patents is in what they protect:

• Utility patents protect the way an article is used and works. They cover new and useful processes, machines, manufactures, or compositions of matter.
• Design patents protect the way an article looks. They cover new, original, and ornamental designs for an article of manufacture.

The MPEP distinguishes between these types of patents by referencing different sections of U.S. Code: utility patents are provided for by 35 U.S.C. 101, while design patents are provided for by 35 U.S.C. 171.

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

What is the difference between a utility patent and a design patent application?

Utility patents and design patents protect different aspects of an invention, and their applications are processed differently. According to MPEP 201.02:

‘A utility application is a nonprovisional application that is not a design application. A design application is an application for a design patent.’

Key differences include:

• Utility Patent Application:
  • Protects the functional aspects of an invention
  • Covers how an invention works or is used
  • Has a term of 20 years from the filing date
• Design Patent Application:
  • Protects the ornamental design of a functional item
  • Covers how an invention looks
  • Has a term of 15 years from the grant date

Inventors should carefully consider which type of patent application best suits their invention’s nature and intended protection.

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

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

For more information on USPTO, visit: USPTO.

Design patent applications and utility patent applications are two distinct types of patent applications that protect different aspects of inventions. According to MPEP 201:

• Design Patent Application: “An application for a design patent filed under 35 U.S.C. 171 may be referred to as a design application.” Design patents protect the ornamental appearance of an article of manufacture.
• Utility Patent Application: These applications protect the functional aspects of an invention, including processes, machines, articles of manufacture, and compositions of matter.

The key differences are:

1. Subject Matter: Design patents cover appearance, while utility patents cover functionality.
2. Duration: Design patents last for 15 years from issuance, while utility patents last for 20 years from the filing date.
3. Examination Process: Design patent applications typically have a simpler examination process.

For more details on utility patents, refer to 35 U.S.C. 101, and for design patents, see 35 U.S.C. 171.

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

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

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.

The inventorship in a Continued Prosecution Application (CPA) automatically carries over from the prior application, unless specific steps are taken to change it. As stated in the MPEP:

“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. 37 CFR 1.53(d)(4).”

If an inventor needs to be added or deleted, a request under 37 CFR 1.48 must be filed, along with the required fee. The examiner will notify the applicant if there are any inventorship discrepancies in the first Office action.

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

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

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

Filing a Continued Prosecution Application (CPA) has implications for public access to the application. 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. 37 CFR 1.53(d)(6).”

This means:

• The CPA is considered a waiver of confidentiality for the entire application chain
• Members of the public who have access to one application in the chain may be given similar access to others
• This increased accessibility applies to both the prior application and any continuing applications

Applicants should be aware of this potential for increased public access when deciding to file a CPA.

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

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

A terminal disclaimer filed in a parent application automatically carries over to a Continued Prosecution Application (CPA). The MPEP clearly states:

“A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.”

However, if an applicant does not want the terminal disclaimer to apply to the CPA, they must take specific action:

“If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.”

It’s important to note that such a petition must be filed and granted before the patent issues to be effective.

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

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

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

Design patent applications and utility patent applications are distinct types of patent applications, each protecting different aspects of an invention. According to MPEP 201:

‘Design applications are not included in the term ‘nonprovisional’ as used in 37 CFR 1.9. […] Design applications are treated separately in 35 U.S.C. 171-173 and 37 CFR 1.151-1.155.’

Key differences include:

• Subject Matter: Utility patents protect how an invention works, while design patents protect how it looks.
• Duration: Utility patents last 20 years from filing, design patents 15 years from grant.
• Examination Process: Design applications typically have a simpler examination process.

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

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

While amendments can be filed with a Continued Prosecution Application (CPA) request, there are important considerations and limitations. 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.”

Additionally:

• Preliminary amendments filed with a CPA are generally entered
• Applicants are encouraged to file any amendments at the time of filing the CPA to avoid potential delays
• Any new matter introduced will be required to be canceled
• Claims relying on new matter may be rejected under 35 U.S.C. 112(a)

The MPEP advises: “Applicants are strongly encouraged to file any preliminary amendment in a CPA at the time the CPA is filed. See 37 CFR 1.115 and MPEP § 714.03(a).”

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

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

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

No, a design patent application cannot be filed as a provisional application. The MPEP 201.01 states:

“Design applications and provisional applications for patent are considered to be distinct types of applications and are treated as separate categories.”

This means that design patent applications must be filed as nonprovisional applications. Provisional applications are only available for utility and plant patents.

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

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

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

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

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

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

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

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

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

Claiming priority for international design applications has some specific provisions, particularly when the application designates the United States. These provisions are outlined in the MPEP and relevant regulations.

According to MPEP 213.07: “Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

Key points about priority in international design applications include:

• The right of priority under 35 U.S.C. 386(a) or (b) applies only to applications filed on or after May 13, 2015.
• For nonprovisional international design applications, the priority claim must be presented in an application data sheet during the pendency of the application, unless made in accordance with the Hague Agreement and Regulations.
• The certified copy of the priority document must be furnished within the time period specified in 37 CFR 1.55(g).
• An international design application designating the U.S. can claim priority to a prior foreign application, PCT application, or another international design application.

The MPEP also notes: “See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.”

These provisions ensure that design patent applicants can properly claim priority to earlier filed applications in the context of the international design registration system.

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

For more information on Hague Agreement, visit: Hague Agreement.

What types of national applications can be filed with the USPTO?

The United States Patent and Trademark Office (USPTO) accepts several types of national applications. These include:

• Utility patent applications: For new and useful processes, machines, articles of manufacture, or compositions of matter.
• Design patent applications: For new, original, and ornamental designs for articles of manufacture.
• Plant patent applications: For new varieties of asexually reproduced plants.
• Provisional patent applications: A temporary application that establishes a filing date but does not mature into an issued patent.

According to MPEP 201.01:

Applications for plant patents, design patents, and utility patents are national applications.

Each type of application has specific requirements and procedures. Utility, design, and plant patent applications can be filed as nonprovisional applications, while provisional applications are only available for utility patents.

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

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

For more information on USPTO, visit: USPTO.

The main difference between utility and design patents is in what they protect:

• Utility patents protect the way an article is used and works. They cover new and useful processes, machines, manufactures, or compositions of matter.
• Design patents protect the way an article looks. They cover new, original, and ornamental designs for an article of manufacture.

The MPEP distinguishes between these types of patents by referencing different sections of U.S. Code: utility patents are provided for by 35 U.S.C. 101, while design patents are provided for by 35 U.S.C. 171.

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

What is the difference between a utility patent and a design patent application?

Utility patents and design patents protect different aspects of an invention, and their applications are processed differently. According to MPEP 201.02:

‘A utility application is a nonprovisional application that is not a design application. A design application is an application for a design patent.’

Key differences include:

• Utility Patent Application:
  • Protects the functional aspects of an invention
  • Covers how an invention works or is used
  • Has a term of 20 years from the filing date
• Design Patent Application:
  • Protects the ornamental design of a functional item
  • Covers how an invention looks
  • Has a term of 15 years from the grant date

Inventors should carefully consider which type of patent application best suits their invention’s nature and intended protection.

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

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

For more information on USPTO, visit: USPTO.

The deadline for filing a foreign priority claim in a U.S. patent application depends on the type of application:

• For applications filed under 35 U.S.C. 111(a), the claim must be filed within the later of:
  • Four months from the actual filing date of the application, or
  • Sixteen months from the filing date of the prior foreign application
• For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set by the PCT and its Regulations
• For design patent applications, the claim can be made at any time during the pendency of the application

As stated in MPEP 214.01: “The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”

To learn more:

• foreign priority
• patent application
• filing deadline
• design patent
• PCT application

Design patent applications and utility patent applications are two distinct types of patent applications that protect different aspects of inventions. According to MPEP 201:

• Design Patent Application: “An application for a design patent filed under 35 U.S.C. 171 may be referred to as a design application.” Design patents protect the ornamental appearance of an article of manufacture.
• Utility Patent Application: These applications protect the functional aspects of an invention, including processes, machines, articles of manufacture, and compositions of matter.

The key differences are:

1. Subject Matter: Design patents cover appearance, while utility patents cover functionality.
2. Duration: Design patents last for 15 years from issuance, while utility patents last for 20 years from the filing date.
3. Examination Process: Design patent applications typically have a simpler examination process.

For more details on utility patents, refer to 35 U.S.C. 101, and for design patents, see 35 U.S.C. 171.

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

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

Design patent applications have some special considerations compared to other types of patent applications:

• Filing Date: For design applications (except CPAs), the filing date is when the USPTO receives the specification (including at least one claim) and any required drawings.
• Continued Prosecution Application (CPA): Design applications can be filed as CPAs under 37 CFR 1.53(d), but this option is not available for utility or plant applications.
• Claims: Unlike utility applications, design applications must include at least one claim at the time of filing to receive a filing date.
• Drawings: Drawings are crucial in design applications and must be filed with the initial application to secure a filing date.

The MPEP states: The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office.

It’s important to note that while utility and plant applications filed on or after December 18, 2013, can receive a filing date without claims or drawings, this flexibility does not extend to design applications.

To learn more:

• design patent
• patent application
• USPTO
• filing requirements

What are the rules for submitting color drawings in a patent application?

Submitting color drawings in a patent application requires special considerations and procedures. According to MPEP 608.02:

“Color drawings are not ordinarily permitted in utility patent applications. The Office will accept color drawings in utility patent applications only after granting a petition filed under this paragraph explaining why the color drawings are necessary.”

To submit color drawings:

• File a petition explaining why color drawings are necessary
• Pay the required petition fee
• Include three sets of color drawings or color photographs
• Amend the specification to include the reference to color drawings

The MPEP further states: “Color photographs will be accepted in utility patent applications if the conditions for accepting color drawings have been satisfied.” It’s important to note that even if the petition is granted, the patent will be printed in black and white unless color printing fees are paid.

For design patent applications, color drawings are generally acceptable without a petition, but specific requirements still apply regarding the quality and format of the drawings.

To learn more:

• patent drawings
• color drawings
• utility patent
• design patent

What are the requirements for submitting photographs as drawings in a patent application?

Photographs are generally not permitted as drawings in patent applications unless they are the only practicable medium for illustrating the claimed invention. According to MPEP 608.02, “The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention.” The MPEP further states:

“The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.”

To submit photographs as drawings:

• Ensure they are the only practicable medium for illustrating the invention
• Provide high-quality photographs that clearly show all details
• Submit them on paper that complies with drawing sheet requirements
• Include any necessary mounting on bristol board or equivalent

It’s important to note that color photographs are not ordinarily permitted in utility patent applications.

To learn more:

• patent drawings
• photographs
• utility patent
• design patent

For a design patent application to receive a filing date, it must include:

• A specification as prescribed by 35 U.S.C. 112
• At least one claim
• Any required drawings

These requirements apply to design applications regardless of filing date. The USPTO states: The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as prescribed by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office.

It’s important to note that unlike utility applications filed on or after December 18, 2013, design applications still require at least one claim to receive a filing date.

To learn more:

• design patent
• filing date requirements
• specification
• claim
• drawings

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

The right of priority for international design applications is governed by 35 U.S.C. 386. There are two main scenarios:

1. A U.S. national application can claim priority from a prior international design application that designated at least one country other than the United States.
2. An international design application designating the United States can claim priority from a prior foreign application, a prior PCT application designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

The MPEP states: Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a) – (d) and 172 with respect to a prior international design application that designates at least one country other than the United States.

To learn more:

• international design application
• priority claim
• design patent

The inventorship in a Continued Prosecution Application (CPA) automatically carries over from the prior application, unless specific steps are taken to change it. As stated in the MPEP:

“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. 37 CFR 1.53(d)(4).”

If an inventor needs to be added or deleted, a request under 37 CFR 1.48 must be filed, along with the required fee. The examiner will notify the applicant if there are any inventorship discrepancies in the first Office action.

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

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

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

Filing a Continued Prosecution Application (CPA) has implications for public access to the application. 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. 37 CFR 1.53(d)(6).”

This means:

• The CPA is considered a waiver of confidentiality for the entire application chain
• Members of the public who have access to one application in the chain may be given similar access to others
• This increased accessibility applies to both the prior application and any continuing applications

Applicants should be aware of this potential for increased public access when deciding to file a CPA.

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

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

Claiming priority for international design applications has some specific provisions, particularly when the application designates the United States. These provisions are outlined in the MPEP and relevant regulations.

According to MPEP 213.07: “Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

Key points about priority in international design applications include:

• The right of priority under 35 U.S.C. 386(a) or (b) applies only to applications filed on or after May 13, 2015.
• For nonprovisional international design applications, the priority claim must be presented in an application data sheet during the pendency of the application, unless made in accordance with the Hague Agreement and Regulations.
• The certified copy of the priority document must be furnished within the time period specified in 37 CFR 1.55(g).
• An international design application designating the U.S. can claim priority to a prior foreign application, PCT application, or another international design application.

The MPEP also notes: “See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.”

These provisions ensure that design patent applicants can properly claim priority to earlier filed applications in the context of the international design registration system.

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

For more information on Hague Agreement, visit: Hague Agreement.

A terminal disclaimer filed in a parent application automatically carries over to a Continued Prosecution Application (CPA). The MPEP clearly states:

“A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.”

However, if an applicant does not want the terminal disclaimer to apply to the CPA, they must take specific action:

“If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.”

It’s important to note that such a petition must be filed and granted before the patent issues to be effective.

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

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

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

Design patent applications and utility patent applications are distinct types of patent applications, each protecting different aspects of an invention. According to MPEP 201:

‘Design applications are not included in the term ‘nonprovisional’ as used in 37 CFR 1.9. […] Design applications are treated separately in 35 U.S.C. 171-173 and 37 CFR 1.151-1.155.’

Key differences include:

• Subject Matter: Utility patents protect how an invention works, while design patents protect how it looks.
• Duration: Utility patents last 20 years from filing, design patents 15 years from grant.
• Examination Process: Design applications typically have a simpler examination process.

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

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

The handling of delayed priority claims in design applications has evolved. The MPEP provides the following information:

“Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application.”

This change allows design patent applicants and holders to rectify unintentionally delayed priority claims, aligning the process more closely with that of utility patents. As with utility patents, a petition under 37 CFR 1.55(e) may be filed along with a request for a certificate of correction after the design patent has been granted.

To learn more:

• design patent
• delayed priority claim
• unintentional delay
• patent procedure

No, design patent applications cannot directly claim the benefit of a provisional application. The MPEP clearly states:

“Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e).”

This restriction is based on 35 U.S.C. 172. However, there is a potential indirect way to claim some benefit:

If a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design application cannot claim the benefit of the filing date of the provisional application.

This means that while a design application can’t directly benefit from a provisional application’s filing date, it may indirectly benefit from the disclosure in a nonprovisional utility application that claims priority to a provisional application.

To learn more:

• design patent
• provisional application
• benefit claim
• patent law

While amendments can be filed with a Continued Prosecution Application (CPA) request, there are important considerations and limitations. 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.”

Additionally:

• Preliminary amendments filed with a CPA are generally entered
• Applicants are encouraged to file any amendments at the time of filing the CPA to avoid potential delays
• Any new matter introduced will be required to be canceled
• Claims relying on new matter may be rejected under 35 U.S.C. 112(a)

The MPEP advises: “Applicants are strongly encouraged to file any preliminary amendment in a CPA at the time the CPA is filed. See 37 CFR 1.115 and MPEP § 714.03(a).”

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

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

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

No, a design patent application cannot be filed as a provisional application. The MPEP 201.01 states:

“Design applications and provisional applications for patent are considered to be distinct types of applications and are treated as separate categories.”

This means that design patent applications must be filed as nonprovisional applications. Provisional applications are only available for utility and plant patents.

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

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

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

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

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

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

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

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

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

Can a design application be considered complete without drawings?

No, a design application cannot be considered complete without drawings. The MPEP 601.01 states: “A design application is not entitled to a filing date under 35 U.S.C. 171 unless the application contains a drawing in compliance with 37 CFR 1.152.” This requirement is specific to design applications due to their visual nature. Drawings are essential for depicting the ornamental design for which protection is sought. Without compliant drawings, the application will not be granted a filing date and will not be processed further.

To learn more:

• design application
• patent drawings
• filing requirements
• design patent

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

Can a Certificate of Correction be used to add or correct a benefit claim after patent grant?

The use of a Certificate of Correction to add or correct a benefit claim after patent grant depends on the type of patent. According to MPEP 211.02(a):

“For utility and plant applications, a Certificate of Correction can be used to correct the failure to adequately claim priority under 35 U.S.C. 119(e) or 120 in the application as filed if the application was filed within the required time period. However, for design applications, an application may be amended to claim priority to or the benefit of a prior-filed application after the application issues as a patent by filing a reissue application.”

This means:

• For utility and plant patents: A Certificate of Correction can be used to add or correct a benefit claim after patent grant, provided the application was filed within the required time period.
• For design patents: A Certificate of Correction cannot be used. Instead, a reissue application must be filed to add or correct a benefit claim after patent grant.

It’s important to note that the option to use a Certificate of Correction for utility and plant patents is subject to specific conditions and time limitations. Always consult the current MPEP and seek legal advice if necessary.

To learn more:

• Certificate of Correction
• benefit claim
• utility patent
• plant patent
• design patent

Yes, design patent applications have different requirements for filing priority claims compared to utility patent applications. The main difference is in the time period for filing the claim. As stated in MPEP 214.01:

“The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”

For design applications, the MPEP further clarifies: “In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).”

This means that for design patent applications, you can file a priority claim at any time while the application is pending, which provides more flexibility compared to utility patent applications.

For more detailed information on priority claims in design applications, you can refer to MPEP § 1504.10 and MPEP § 2920.05(d).

To learn more:

• design patent
• foreign priority
• filing deadline
• patent application

What types of national applications can be filed with the USPTO?

The United States Patent and Trademark Office (USPTO) accepts several types of national applications. These include:

• Utility patent applications: For new and useful processes, machines, articles of manufacture, or compositions of matter.
• Design patent applications: For new, original, and ornamental designs for articles of manufacture.
• Plant patent applications: For new varieties of asexually reproduced plants.
• Provisional patent applications: A temporary application that establishes a filing date but does not mature into an issued patent.

According to MPEP 201.01:

Applications for plant patents, design patents, and utility patents are national applications.

Each type of application has specific requirements and procedures. Utility, design, and plant patent applications can be filed as nonprovisional applications, while provisional applications are only available for utility patents.

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

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

For more information on USPTO, visit: USPTO.

The main difference between utility and design patents is in what they protect:

• Utility patents protect the way an article is used and works. They cover new and useful processes, machines, manufactures, or compositions of matter.
• Design patents protect the way an article looks. They cover new, original, and ornamental designs for an article of manufacture.

The MPEP distinguishes between these types of patents by referencing different sections of U.S. Code: utility patents are provided for by 35 U.S.C. 101, while design patents are provided for by 35 U.S.C. 171.

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

What is the difference between a utility patent and a design patent application?

Utility patents and design patents protect different aspects of an invention, and their applications are processed differently. According to MPEP 201.02:

‘A utility application is a nonprovisional application that is not a design application. A design application is an application for a design patent.’

Key differences include:

• Utility Patent Application:
  • Protects the functional aspects of an invention
  • Covers how an invention works or is used
  • Has a term of 20 years from the filing date
• Design Patent Application:
  • Protects the ornamental design of a functional item
  • Covers how an invention looks
  • Has a term of 15 years from the grant date

Inventors should carefully consider which type of patent application best suits their invention’s nature and intended protection.

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

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

For more information on USPTO, visit: USPTO.

The deadline for filing a foreign priority claim in a U.S. patent application depends on the type of application:

• For applications filed under 35 U.S.C. 111(a), the claim must be filed within the later of:
  • Four months from the actual filing date of the application, or
  • Sixteen months from the filing date of the prior foreign application
• For international applications entering the national stage under 35 U.S.C. 371, the claim must be made within the time limit set by the PCT and its Regulations
• For design patent applications, the claim can be made at any time during the pendency of the application

As stated in MPEP 214.01: “The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”

To learn more:

• foreign priority
• patent application
• filing deadline
• design patent
• PCT application

Design patent applications and utility patent applications are two distinct types of patent applications that protect different aspects of inventions. According to MPEP 201:

• Design Patent Application: “An application for a design patent filed under 35 U.S.C. 171 may be referred to as a design application.” Design patents protect the ornamental appearance of an article of manufacture.
• Utility Patent Application: These applications protect the functional aspects of an invention, including processes, machines, articles of manufacture, and compositions of matter.

The key differences are:

1. Subject Matter: Design patents cover appearance, while utility patents cover functionality.
2. Duration: Design patents last for 15 years from issuance, while utility patents last for 20 years from the filing date.
3. Examination Process: Design patent applications typically have a simpler examination process.

For more details on utility patents, refer to 35 U.S.C. 101, and for design patents, see 35 U.S.C. 171.

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

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

Design patent applications have some special considerations compared to other types of patent applications:

• Filing Date: For design applications (except CPAs), the filing date is when the USPTO receives the specification (including at least one claim) and any required drawings.
• Continued Prosecution Application (CPA): Design applications can be filed as CPAs under 37 CFR 1.53(d), but this option is not available for utility or plant applications.
• Claims: Unlike utility applications, design applications must include at least one claim at the time of filing to receive a filing date.
• Drawings: Drawings are crucial in design applications and must be filed with the initial application to secure a filing date.

The MPEP states: The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as required by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office.

It’s important to note that while utility and plant applications filed on or after December 18, 2013, can receive a filing date without claims or drawings, this flexibility does not extend to design applications.

To learn more:

• design patent
• patent application
• USPTO
• filing requirements

What are the rules for submitting color drawings in a patent application?

Submitting color drawings in a patent application requires special considerations and procedures. According to MPEP 608.02:

“Color drawings are not ordinarily permitted in utility patent applications. The Office will accept color drawings in utility patent applications only after granting a petition filed under this paragraph explaining why the color drawings are necessary.”

To submit color drawings:

• File a petition explaining why color drawings are necessary
• Pay the required petition fee
• Include three sets of color drawings or color photographs
• Amend the specification to include the reference to color drawings

The MPEP further states: “Color photographs will be accepted in utility patent applications if the conditions for accepting color drawings have been satisfied.” It’s important to note that even if the petition is granted, the patent will be printed in black and white unless color printing fees are paid.

For design patent applications, color drawings are generally acceptable without a petition, but specific requirements still apply regarding the quality and format of the drawings.

To learn more:

• patent drawings
• color drawings
• utility patent
• design patent

What are the requirements for submitting photographs as drawings in a patent application?

Photographs are generally not permitted as drawings in patent applications unless they are the only practicable medium for illustrating the claimed invention. According to MPEP 608.02, “The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention.” The MPEP further states:

“The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.”

To submit photographs as drawings:

• Ensure they are the only practicable medium for illustrating the invention
• Provide high-quality photographs that clearly show all details
• Submit them on paper that complies with drawing sheet requirements
• Include any necessary mounting on bristol board or equivalent

It’s important to note that color photographs are not ordinarily permitted in utility patent applications.

To learn more:

• patent drawings
• photographs
• utility patent
• design patent

For a design patent application to receive a filing date, it must include:

• A specification as prescribed by 35 U.S.C. 112
• At least one claim
• Any required drawings

These requirements apply to design applications regardless of filing date. The USPTO states: The filing date for a design application, except for a continued prosecution application (CPA) under 37 CFR 1.53(d), is the date on which the specification as prescribed by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office.

It’s important to note that unlike utility applications filed on or after December 18, 2013, design applications still require at least one claim to receive a filing date.

To learn more:

• design patent
• filing date requirements
• specification
• claim
• drawings

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

The right of priority for international design applications is governed by 35 U.S.C. 386. There are two main scenarios:

1. A U.S. national application can claim priority from a prior international design application that designated at least one country other than the United States.
2. An international design application designating the United States can claim priority from a prior foreign application, a prior PCT application designating at least one country other than the United States, or a prior international design application designating at least one country other than the United States.

The MPEP states: Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a) – (d) and 172 with respect to a prior international design application that designates at least one country other than the United States.

To learn more:

• international design application
• priority claim
• design patent

The inventorship in a Continued Prosecution Application (CPA) automatically carries over from the prior application, unless specific steps are taken to change it. As stated in the MPEP:

“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. 37 CFR 1.53(d)(4).”

If an inventor needs to be added or deleted, a request under 37 CFR 1.48 must be filed, along with the required fee. The examiner will notify the applicant if there are any inventorship discrepancies in the first Office action.

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

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

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

Filing a Continued Prosecution Application (CPA) has implications for public access to the application. 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. 37 CFR 1.53(d)(6).”

This means:

• The CPA is considered a waiver of confidentiality for the entire application chain
• Members of the public who have access to one application in the chain may be given similar access to others
• This increased accessibility applies to both the prior application and any continuing applications

Applicants should be aware of this potential for increased public access when deciding to file a CPA.

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

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

Claiming priority for international design applications has some specific provisions, particularly when the application designates the United States. These provisions are outlined in the MPEP and relevant regulations.

According to MPEP 213.07: “Pursuant to 35 U.S.C. 386(a) and 37 CFR 1.55, a nonprovisional application may make a claim of foreign priority in accordance with the conditions and requirements of 35 U.S.C. 119(a)-(d) and 172 with respect to a prior international design application that designates at least one country other than the United States.”

Key points about priority in international design applications include:

• The right of priority under 35 U.S.C. 386(a) or (b) applies only to applications filed on or after May 13, 2015.
• For nonprovisional international design applications, the priority claim must be presented in an application data sheet during the pendency of the application, unless made in accordance with the Hague Agreement and Regulations.
• The certified copy of the priority document must be furnished within the time period specified in 37 CFR 1.55(g).
• An international design application designating the U.S. can claim priority to a prior foreign application, PCT application, or another international design application.

The MPEP also notes: “See MPEP § 2920.05(d) for additional information pertaining to the right of priority based upon an international design application.”

These provisions ensure that design patent applicants can properly claim priority to earlier filed applications in the context of the international design registration system.

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

For more information on Hague Agreement, visit: Hague Agreement.

A terminal disclaimer filed in a parent application automatically carries over to a Continued Prosecution Application (CPA). The MPEP clearly states:

“A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed.”

However, if an applicant does not want the terminal disclaimer to apply to the CPA, they must take specific action:

“If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the parent application not be carried over to the CPA.”

It’s important to note that such a petition must be filed and granted before the patent issues to be effective.

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

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

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

Design patent applications and utility patent applications are distinct types of patent applications, each protecting different aspects of an invention. According to MPEP 201:

‘Design applications are not included in the term ‘nonprovisional’ as used in 37 CFR 1.9. […] Design applications are treated separately in 35 U.S.C. 171-173 and 37 CFR 1.151-1.155.’

Key differences include:

• Subject Matter: Utility patents protect how an invention works, while design patents protect how it looks.
• Duration: Utility patents last 20 years from filing, design patents 15 years from grant.
• Examination Process: Design applications typically have a simpler examination process.

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

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

The handling of delayed priority claims in design applications has evolved. The MPEP provides the following information:

“Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application.”

This change allows design patent applicants and holders to rectify unintentionally delayed priority claims, aligning the process more closely with that of utility patents. As with utility patents, a petition under 37 CFR 1.55(e) may be filed along with a request for a certificate of correction after the design patent has been granted.

To learn more:

• design patent
• delayed priority claim
• unintentional delay
• patent procedure

No, design patent applications cannot directly claim the benefit of a provisional application. The MPEP clearly states:

“Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e).”

This restriction is based on 35 U.S.C. 172. However, there is a potential indirect way to claim some benefit:

If a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design application cannot claim the benefit of the filing date of the provisional application.

This means that while a design application can’t directly benefit from a provisional application’s filing date, it may indirectly benefit from the disclosure in a nonprovisional utility application that claims priority to a provisional application.

To learn more:

• design patent
• provisional application
• benefit claim
• patent law

While amendments can be filed with a Continued Prosecution Application (CPA) request, there are important considerations and limitations. 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.”

Additionally:

• Preliminary amendments filed with a CPA are generally entered
• Applicants are encouraged to file any amendments at the time of filing the CPA to avoid potential delays
• Any new matter introduced will be required to be canceled
• Claims relying on new matter may be rejected under 35 U.S.C. 112(a)

The MPEP advises: “Applicants are strongly encouraged to file any preliminary amendment in a CPA at the time the CPA is filed. See 37 CFR 1.115 and MPEP § 714.03(a).”

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

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

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

No, a design patent application cannot be filed as a provisional application. The MPEP 201.01 states:

“Design applications and provisional applications for patent are considered to be distinct types of applications and are treated as separate categories.”

This means that design patent applications must be filed as nonprovisional applications. Provisional applications are only available for utility and plant patents.

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

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

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

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

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

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

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

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

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

Can a design application be considered complete without drawings?

No, a design application cannot be considered complete without drawings. The MPEP 601.01 states: “A design application is not entitled to a filing date under 35 U.S.C. 171 unless the application contains a drawing in compliance with 37 CFR 1.152.” This requirement is specific to design applications due to their visual nature. Drawings are essential for depicting the ornamental design for which protection is sought. Without compliant drawings, the application will not be granted a filing date and will not be processed further.

To learn more:

• design application
• patent drawings
• filing requirements
• design patent

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

Can a Certificate of Correction be used to add or correct a benefit claim after patent grant?

The use of a Certificate of Correction to add or correct a benefit claim after patent grant depends on the type of patent. According to MPEP 211.02(a):

“For utility and plant applications, a Certificate of Correction can be used to correct the failure to adequately claim priority under 35 U.S.C. 119(e) or 120 in the application as filed if the application was filed within the required time period. However, for design applications, an application may be amended to claim priority to or the benefit of a prior-filed application after the application issues as a patent by filing a reissue application.”

This means:

• For utility and plant patents: A Certificate of Correction can be used to add or correct a benefit claim after patent grant, provided the application was filed within the required time period.
• For design patents: A Certificate of Correction cannot be used. Instead, a reissue application must be filed to add or correct a benefit claim after patent grant.

It’s important to note that the option to use a Certificate of Correction for utility and plant patents is subject to specific conditions and time limitations. Always consult the current MPEP and seek legal advice if necessary.

To learn more:

• Certificate of Correction
• benefit claim
• utility patent
• plant patent
• design patent

Yes, design patent applications have different requirements for filing priority claims compared to utility patent applications. The main difference is in the time period for filing the claim. As stated in MPEP 214.01:

“The time periods set forth in 37 CFR 1.55(d) do not apply to design applications.”

For design applications, the MPEP further clarifies: “In a design application, a claim for priority may be made at any time during the pendency of the application. See 37 CFR 1.55(g).”

This means that for design patent applications, you can file a priority claim at any time while the application is pending, which provides more flexibility compared to utility patent applications.

For more detailed information on priority claims in design applications, you can refer to MPEP § 1504.10 and MPEP § 2920.05(d).

To learn more:

• design patent
• foreign priority
• filing deadline
• patent application