Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (1)
What happens if a divisional application is filed after the parent application is patented or abandoned?
If a divisional application is filed after the parent application has been patented or abandoned, it will not be entitled to the benefit of the parent application’s filing date. The MPEP states:
Filing a divisional application after the parent application has been patented or abandoned means:
- The application will not be considered a proper divisional application
- It will not receive the benefit of the parent application’s filing date
- It may be treated as a new, independent application
- Prior art that was not applicable to the parent application may now be applicable
- The application may face potential statutory bars under 35 U.S.C. 102
To avoid these issues, it’s crucial to file divisional applications before the patenting, abandonment, or termination of proceedings on the parent application.
For more information on Divisional application, visit: Divisional application.
For more information on late filing, visit: late filing.
For more information on patent procedure, visit: patent procedure.
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)
Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.
37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”
To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional
The USPTO may require additional information to determine if the delay was truly unintentional.
MPEP 201 - Types of Applications (1)
What happens if a divisional application is filed after the parent application is patented or abandoned?
If a divisional application is filed after the parent application has been patented or abandoned, it will not be entitled to the benefit of the parent application’s filing date. The MPEP states:
Filing a divisional application after the parent application has been patented or abandoned means:
- The application will not be considered a proper divisional application
- It will not receive the benefit of the parent application’s filing date
- It may be treated as a new, independent application
- Prior art that was not applicable to the parent application may now be applicable
- The application may face potential statutory bars under 35 U.S.C. 102
To avoid these issues, it’s crucial to file divisional applications before the patenting, abandonment, or termination of proceedings on the parent application.
For more information on Divisional application, visit: Divisional application.
For more information on late filing, visit: late filing.
For more information on patent procedure, visit: patent procedure.
MPEP 213-Right of Priority of Foreign Application (1)
Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.
37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”
To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional
The USPTO may require additional information to determine if the delay was truly unintentional.
Patent Law (5)
For an Information Disclosure Statement (IDS) filed after the initial three-month period or first Office action, but before the mailing of a final action, Notice of Allowance, or an Ex parte Quayle action, the following is required:
- Either a statement under 37 CFR 1.97(e), or
- The fee set forth in 37 CFR 1.17(p)
As stated in MPEP 609.04(b): An information disclosure statement will be considered by the examiner if filed after the period specified in subsection I. above, but prior to the date the prosecution of the application closes, i.e., before (not on the same day as the mailing date of any of the following): a final action under 37 CFR 1.113, e.g., final rejection; a notice of allowance under 37 CFR 1.311; or an action that closes prosecution in the application, e.g., an Ex parte Quayle action, whichever occurs first, provided the information disclosure statement is accompanied by either (1) a statement as specified in 37 CFR 1.97(e) (see the discussion in subsection V below); or (2) the fee set forth in 37 CFR 1.17(p).
To learn more:
According to MPEP 602.08(c), when a specification is filed attached to an oath or declaration after the initial application filing date, the USPTO follows a specific procedure:
Any specification that is filed attached to an oath or declaration on a date later than the application filing date will not be compared with the specification submitted on filing.
Furthermore, the MPEP states: Absent any statement(s) to the contrary, the ‘attached’ specification will be presumed to be a copy of the specification and any amendments thereto, which were filed in the USPTO in order to obtain a filing date for the application.
This means that the USPTO will not verify if the later-submitted specification matches the original filing. Instead, they assume it’s a copy of the original specification plus any amendments, unless explicitly stated otherwise. This practice helps streamline the application process and avoid confusion between different versions of the specification.
To learn more:
What happens if a divisional application is filed after the parent application is patented or abandoned?
If a divisional application is filed after the parent application has been patented or abandoned, it will not be entitled to the benefit of the parent application’s filing date. The MPEP states:
Filing a divisional application after the parent application has been patented or abandoned means:
- The application will not be considered a proper divisional application
- It will not receive the benefit of the parent application’s filing date
- It may be treated as a new, independent application
- Prior art that was not applicable to the parent application may now be applicable
- The application may face potential statutory bars under 35 U.S.C. 102
To avoid these issues, it’s crucial to file divisional applications before the patenting, abandonment, or termination of proceedings on the parent application.
For more information on Divisional application, visit: Divisional application.
For more information on late filing, visit: late filing.
For more information on patent procedure, visit: patent procedure.
For oaths or declarations filed after the application filing date, MPEP 602.08(c) provides several acceptable methods for identifying the application:
- Application number (series code and serial number, e.g., 08/123,456)
- Serial number and filing date
- International application number
- International registration number for design applications
- Attorney docket number on the original specification
- Title of the invention from the original specification, with reference to an attached specification
- Title of the invention from the original specification, with a cover letter identifying the application
The MPEP emphasizes that Absent any statement(s) to the contrary, it will be presumed that the application filed in the USPTO is the application which the inventor(s) executed by signing the oath or declaration.
This presumption helps ensure proper association of documents with the correct application.
To learn more:
Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.
37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”
To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional
The USPTO may require additional information to determine if the delay was truly unintentional.
Patent Procedure (5)
For an Information Disclosure Statement (IDS) filed after the initial three-month period or first Office action, but before the mailing of a final action, Notice of Allowance, or an Ex parte Quayle action, the following is required:
- Either a statement under 37 CFR 1.97(e), or
- The fee set forth in 37 CFR 1.17(p)
As stated in MPEP 609.04(b): An information disclosure statement will be considered by the examiner if filed after the period specified in subsection I. above, but prior to the date the prosecution of the application closes, i.e., before (not on the same day as the mailing date of any of the following): a final action under 37 CFR 1.113, e.g., final rejection; a notice of allowance under 37 CFR 1.311; or an action that closes prosecution in the application, e.g., an Ex parte Quayle action, whichever occurs first, provided the information disclosure statement is accompanied by either (1) a statement as specified in 37 CFR 1.97(e) (see the discussion in subsection V below); or (2) the fee set forth in 37 CFR 1.17(p).
To learn more:
According to MPEP 602.08(c), when a specification is filed attached to an oath or declaration after the initial application filing date, the USPTO follows a specific procedure:
Any specification that is filed attached to an oath or declaration on a date later than the application filing date will not be compared with the specification submitted on filing.
Furthermore, the MPEP states: Absent any statement(s) to the contrary, the ‘attached’ specification will be presumed to be a copy of the specification and any amendments thereto, which were filed in the USPTO in order to obtain a filing date for the application.
This means that the USPTO will not verify if the later-submitted specification matches the original filing. Instead, they assume it’s a copy of the original specification plus any amendments, unless explicitly stated otherwise. This practice helps streamline the application process and avoid confusion between different versions of the specification.
To learn more:
What happens if a divisional application is filed after the parent application is patented or abandoned?
If a divisional application is filed after the parent application has been patented or abandoned, it will not be entitled to the benefit of the parent application’s filing date. The MPEP states:
Filing a divisional application after the parent application has been patented or abandoned means:
- The application will not be considered a proper divisional application
- It will not receive the benefit of the parent application’s filing date
- It may be treated as a new, independent application
- Prior art that was not applicable to the parent application may now be applicable
- The application may face potential statutory bars under 35 U.S.C. 102
To avoid these issues, it’s crucial to file divisional applications before the patenting, abandonment, or termination of proceedings on the parent application.
For more information on Divisional application, visit: Divisional application.
For more information on late filing, visit: late filing.
For more information on patent procedure, visit: patent procedure.
For oaths or declarations filed after the application filing date, MPEP 602.08(c) provides several acceptable methods for identifying the application:
- Application number (series code and serial number, e.g., 08/123,456)
- Serial number and filing date
- International application number
- International registration number for design applications
- Attorney docket number on the original specification
- Title of the invention from the original specification, with reference to an attached specification
- Title of the invention from the original specification, with a cover letter identifying the application
The MPEP emphasizes that Absent any statement(s) to the contrary, it will be presumed that the application filed in the USPTO is the application which the inventor(s) executed by signing the oath or declaration.
This presumption helps ensure proper association of documents with the correct application.
To learn more:
Yes, the right of priority can be restored if the U.S. application is filed after the 12-month priority period (or 6-month period for design applications), but within 2 months of the expiration of the priority period, if the delay was unintentional.
37 CFR 1.55(c) states: “If the subsequent application has a filing date which is after the expiration of the period set forth in paragraph (b)(1) of this section, but within two months from the expiration of the period set forth in paragraph (b)(1) of this section, the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent application within the period set forth in paragraph (b)(1) of this section was unintentional.”
To restore the right of priority, the applicant must file a petition including:
1. The priority claim
2. The petition fee
3. A statement that the delay was unintentional
The USPTO may require additional information to determine if the delay was truly unintentional.