Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2300 – Interference And Derivation Proceedings (1)
Filing a divisional application during an interference can serve as a strategic move to manage claims that may be affected by the interference while allowing other claims to proceed. The MPEP 2307.03 suggests this approach as a way to minimize the impact of suspension on patent term adjustment:
“The applicant may then file a divisional application with the interfering claims, which may be suspended.”
The purpose of filing a divisional application in this context includes:
- Separating interfering claims from non-interfering claims
- Allowing non-interfering claims to proceed to issuance
- Preserving patent term for non-interfering claims
- Maintaining the option to pursue interfering claims later
This strategy aligns with the MPEP’s guidance on using restriction requirements:
“For instance, the examiner could require restriction in accordance with 35 U.S.C. 121, of the application to only the claims that do not interfere so that they can be issued.”
By filing a divisional application, applicants can effectively manage their patent portfolio while navigating the complexities of an interference proceeding.
To learn more:
Patent Law (6)
What are the requirements for submitting an IDS in a continuation, divisional, or continuation-in-part application?
For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:
- If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
- If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.
The MPEP further states:
“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”
When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.
Filing a divisional application during an interference can serve as a strategic move to manage claims that may be affected by the interference while allowing other claims to proceed. The MPEP 2307.03 suggests this approach as a way to minimize the impact of suspension on patent term adjustment:
“The applicant may then file a divisional application with the interfering claims, which may be suspended.”
The purpose of filing a divisional application in this context includes:
- Separating interfering claims from non-interfering claims
- Allowing non-interfering claims to proceed to issuance
- Preserving patent term for non-interfering claims
- Maintaining the option to pursue interfering claims later
This strategy aligns with the MPEP’s guidance on using restriction requirements:
“For instance, the examiner could require restriction in accordance with 35 U.S.C. 121, of the application to only the claims that do not interfere so that they can be issued.”
By filing a divisional application, applicants can effectively manage their patent portfolio while navigating the complexities of an interference proceeding.
To learn more:
Applicants can avoid the need for preliminary amendments in patent applications by following the guidance provided in MPEP 608.04(b):
Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application.
This approach involves directly including any necessary changes or additions in the original specification text when preparing the application. By doing so, applicants can ensure that all desired content is present from the initial filing, eliminating the need for separate preliminary amendments. This method is recommended for all types of applications, including continuations and divisionals, to streamline the application process and reduce potential processing delays.
To learn more:
What were the requirements for continuation or divisional applications filed under 37 CFR 1.53(d) with changes in inventorship?
For continuation or divisional applications filed under 37 CFR 1.53(d) (continued prosecution design applications) with changes in inventorship, the requirements were as follows:
“If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(d) (continued prosecution design application), the request for filing the continuation or divisional application must be accompanied by 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 continuation or divisional application (see 37 CFR 1.53(d)(4)).”
This meant that for continued prosecution design applications, a statement requesting the deletion of non-inventors had to be submitted along with the filing request when there were changes in inventorship.
What is the procedure for filing a continuation or divisional application without a new oath or declaration?
What is the procedure for filing a continuation or divisional application without a new oath or declaration?
When filing a continuation or divisional application, a new oath or declaration is not always required. According to MPEP 602.05, the following procedure can be followed:
- File a copy of the oath or declaration from the prior application.
- Include a statement requesting the filing of the continuation or divisional application without a newly executed oath or declaration.
- Pay the filing fee for the continuation or divisional application.
The MPEP states: ‘The applicant may file a continuation or divisional application by filing a copy of the oath or declaration from the prior application, accompanied by a statement requesting the filing of the continuation or divisional application without a newly executed oath or declaration and payment of the filing fee.’
This procedure simplifies the filing process for certain types of continuing applications, reducing paperwork and potentially saving time for applicants.
To learn more:
Topics:
Patent Law
Patent Procedure
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
- The prior nonprovisional application contained a proper oath or declaration
- The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
- The specification and drawings contain no new matter
- A copy of the executed oath or declaration from the prior application is submitted
However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
To learn more:
Topics:
Patent Law
Patent Procedure
Patent Procedure (6)
What are the requirements for submitting an IDS in a continuation, divisional, or continuation-in-part application?
For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance:
- If the information was considered in the parent application, it need not be resubmitted unless the applicant wants it printed on the patent.
- If the information was not considered in the parent application, it must be resubmitted in compliance with 37 CFR 1.97 and 37 CFR 1.98.
The MPEP further states:
“Pursuant to 37 CFR 1.98(d), if the IDS submitted in the parent application complies with 37 CFR 1.98(a) to (c), copies of the patents, publications, pending U.S. applications, or other information submitted in the parent application need not be resubmitted in the continuing application.”
When resubmitting information, applicants should use a new listing that complies with the format requirements in 37 CFR 1.98(a)(1) and avoid submitting copies of PTO/SB/08 or PTO-892 forms from other applications to prevent confusion in the record.
Filing a divisional application during an interference can serve as a strategic move to manage claims that may be affected by the interference while allowing other claims to proceed. The MPEP 2307.03 suggests this approach as a way to minimize the impact of suspension on patent term adjustment:
“The applicant may then file a divisional application with the interfering claims, which may be suspended.”
The purpose of filing a divisional application in this context includes:
- Separating interfering claims from non-interfering claims
- Allowing non-interfering claims to proceed to issuance
- Preserving patent term for non-interfering claims
- Maintaining the option to pursue interfering claims later
This strategy aligns with the MPEP’s guidance on using restriction requirements:
“For instance, the examiner could require restriction in accordance with 35 U.S.C. 121, of the application to only the claims that do not interfere so that they can be issued.”
By filing a divisional application, applicants can effectively manage their patent portfolio while navigating the complexities of an interference proceeding.
To learn more:
Applicants can avoid the need for preliminary amendments in patent applications by following the guidance provided in MPEP 608.04(b):
Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application.
This approach involves directly including any necessary changes or additions in the original specification text when preparing the application. By doing so, applicants can ensure that all desired content is present from the initial filing, eliminating the need for separate preliminary amendments. This method is recommended for all types of applications, including continuations and divisionals, to streamline the application process and reduce potential processing delays.
To learn more:
What were the requirements for continuation or divisional applications filed under 37 CFR 1.53(d) with changes in inventorship?
For continuation or divisional applications filed under 37 CFR 1.53(d) (continued prosecution design applications) with changes in inventorship, the requirements were as follows:
“If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(d) (continued prosecution design application), the request for filing the continuation or divisional application must be accompanied by 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 continuation or divisional application (see 37 CFR 1.53(d)(4)).”
This meant that for continued prosecution design applications, a statement requesting the deletion of non-inventors had to be submitted along with the filing request when there were changes in inventorship.
What is the procedure for filing a continuation or divisional application without a new oath or declaration?
What is the procedure for filing a continuation or divisional application without a new oath or declaration?
When filing a continuation or divisional application, a new oath or declaration is not always required. According to MPEP 602.05, the following procedure can be followed:
- File a copy of the oath or declaration from the prior application.
- Include a statement requesting the filing of the continuation or divisional application without a newly executed oath or declaration.
- Pay the filing fee for the continuation or divisional application.
The MPEP states: ‘The applicant may file a continuation or divisional application by filing a copy of the oath or declaration from the prior application, accompanied by a statement requesting the filing of the continuation or divisional application without a newly executed oath or declaration and payment of the filing fee.’
This procedure simplifies the filing process for certain types of continuing applications, reducing paperwork and potentially saving time for applicants.
To learn more:
Topics:
Patent Law
Patent Procedure
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d):
A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
- The prior nonprovisional application contained a proper oath or declaration
- The continuation or divisional application was filed by all or fewer than all inventors named in the prior application
- The specification and drawings contain no new matter
- A copy of the executed oath or declaration from the prior application is submitted
However, a new oath or declaration is required if naming an inventor not named in the prior application. The MPEP states: A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
To learn more:
Topics:
Patent Law
Patent Procedure