Patent Law FAQ

What is the significance of the ‘original disclosure’ in a divisional application?

The ‘original disclosure’ is crucial in a divisional application because it defines the scope of what can be included in the divisional. According to MPEP 201.06:

‘The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, i.e., the original disclosure of the parent or original nonprovisional application or provisional application.’

This means that no new matter can be added to a divisional application. The divisional must rely entirely on the content disclosed in the original parent application. This ensures that the divisional application doesn’t extend beyond the scope of what was initially invented and disclosed.

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

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

What is the relationship between a continuation-in-part application and its parent application?

A continuation-in-part (CIP) application is a type of patent application that has a unique relationship with its parent application. According to MPEP 201.08:

“A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.”

This means that a CIP application:

• Contains some or all of the subject matter from the parent application
• Introduces new subject matter not present in the parent application
• Must be filed while the parent application is still pending

The relationship between a CIP and its parent is important for determining priority dates and the scope of patent protection.

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

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

New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:

‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’

This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.

To learn more:

• new matter
• benefit claims
• written description requirement
• prior-filed application

A preliminary amendment filed with a continuation or divisional application can have significant effects:

1. If present on the filing date, it is considered part of the original disclosure.
2. It must comply with the requirements of 37 CFR 1.121 for amendments.
3. The Office may require a substitute specification for extensive preliminary amendments.
4. The application will be classified and assigned based on the claims that will be before the examiner after entry of the preliminary amendment.

The MPEP states: Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

However, applicants should be cautious about introducing new matter through a preliminary amendment. The MPEP advises: Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part.

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

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

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

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that claim priority to an earlier filed application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07: “A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.”
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the prior application.

The key difference is that a continuation application does not introduce new subject matter, while a CIP application does.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that stem from an earlier application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07, ‘A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application… The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.’
• Continuation-in-part application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the parent application.

The key distinction is that a continuation-in-part introduces new subject matter, while a continuation does not.

To learn more:

• continuation application
• continuation-in-part
• CIP
• patent application types
• new matter

What is the definition of a continuation-in-part application?

A continuation-in-part (CIP) application is a type of patent application that includes a portion or all of the disclosure from a prior application and adds new matter not disclosed in the prior application. The MPEP 201.08 states:

‘A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.’

This type of application allows inventors to expand upon their original invention while maintaining the priority date for the portions disclosed in the earlier application.

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

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

A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application.

As stated in the MPEP:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

Key points about CIP applications:

• A CIP application may only be filed under 37 CFR 1.53(b).
• The CIP application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• A CIP application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
• The mere filing of a CIP application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

Introducing new matter in a divisional application is not allowed and can have serious consequences. According to MPEP 201.06:

“A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.”

This means that a divisional application must not contain any new matter beyond what was disclosed in the parent application. If new matter is introduced:

• The new matter will not be entitled to the benefit of the parent application’s filing date.
• Claims relying on the new matter may be rejected under 35 U.S.C. 112(a) for lack of written description or enablement.
• The application may lose its status as a proper divisional, potentially affecting its ability to overcome certain types of double patenting rejections.

To avoid these issues:

1. Carefully review the divisional application before filing to ensure it only contains subject matter from the parent application.
2. If new subject matter is necessary, consider filing it as a continuation-in-part (CIP) application instead of a divisional.
3. Consult with a patent attorney or agent to ensure compliance with MPEP guidelines.

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

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

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

When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:

• Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
• Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
• The new matter may affect the application’s ability to overcome prior art references.

As stated in MPEP 211.05:

“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”

This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.

To learn more:

• continuation-in-part application
• new matter
• prior art
• effective filing date
• parent application

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

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

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

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

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

The MPEP 201.06(c) outlines the requirements for filing a divisional or continuation application without an executed oath or declaration:

’37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing an oath or declaration as required by 37 CFR 1.63, provided that a copy of the executed oath or declaration filed in the prior application is submitted for the continuation or divisional application and the specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application.’

To file without a new oath or declaration:

• Submit a copy of the executed oath or declaration from the prior application
• Ensure the new application contains no new matter
• File a copy of the specification and drawings from the prior application

This procedure allows for expedited filing while maintaining the integrity of the oath or declaration requirements.

To learn more:

• divisional application
• continuation application
• oath
• declaration
• 37 CFR 1.63(d)
• new matter

To learn more:

• 37 CFR 1.63(d)

While both continuation and continuation-in-part (CIP) applications are related to a prior application, there are key differences:

• Continuation: Repeats the entire disclosure of the prior application without adding new matter.
• Continuation-in-Part (CIP): According to MPEP ¶ 2.06, a CIP “repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application.”

The main difference is that a CIP introduces new subject matter not present in the original application. This new matter receives the filing date of the CIP, while the repeated portions may claim the earlier filing date of the prior application if properly claimed under 35 U.S.C. 120.

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

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

Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.

The MPEP ¶ 2.10.01 states:

“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”

If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.

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

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

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

A continuation-in-part (CIP) application has specific filing requirements. Key points include:

• A CIP application can only be filed under 37 CFR 1.53(b).
• It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance).
• The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• For applications filed on or after September 16, 2012, the benefit claim must be in an application data sheet (ADS).
• The CIP must have at least one common inventor with the prior application.
• New matter can be added to the specification, but claims relying on this new matter will not get the benefit of the earlier filing date.

As stated in the MPEP:

A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

It’s important to note that while a CIP allows for the addition of new matter, any claims that rely on this new matter will only be entitled to the filing date of the CIP application, not the earlier filing date of the parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

How does the priority date work in a continuation-in-part application?

In a continuation-in-part (CIP) application, the priority date can vary for different parts of the application. According to MPEP 201.08:

“The disclosure presented in the continuation-in-part application may include subject matter in common with the earlier application and may include additional subject matter not disclosed in the earlier application. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the earlier nonprovisional application are entitled to the benefit of the filing date of the earlier nonprovisional application.”

This means:

• Subject matter carried over from the parent application retains the original filing date as its priority date
• New matter added in the CIP has the filing date of the CIP as its priority date
• Each claim in a CIP is evaluated individually to determine its effective filing date
• Claims fully supported by the parent application get the earlier priority date
• Claims relying on new matter get the later CIP filing date as their priority date

Understanding priority dates in CIPs is crucial for determining patentability and for defending against potential prior art references.

For more information on effective filing date, visit: effective filing date.

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

The presence of new matter in a continuation or divisional application can significantly affect its filing date. If new matter is found, the application may lose the benefit of the earlier filing date for the new subject matter.

According to MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

If the application is changed to a continuation-in-part, the new matter will have the filing date of the current application, while the previously disclosed matter retains the earlier filing date. This can have important implications for determining prior art and patent term.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

How does the filing date of new matter in a CIP application affect patent rights?

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The filing date of new matter in a continuation-in-part (CIP) application significantly affects patent rights. According to MPEP 201.08:

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“Matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application. Matter disclosed for the first time in the continuation-in-part application does not receive the benefit of the filing date of the parent application.”

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This means:

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• The new matter in a CIP is treated as having the filing date of the CIP application itself.

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• This later filing date can impact the assessment of prior art and the determination of patentability for the new matter.

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• It may affect the patent term for claims based on the new matter.

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• In some cases, it could make the new matter more vulnerable to challenges based on intervening prior art.

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Therefore, inventors and patent attorneys must carefully consider the timing and content of CIP applications to maximize patent protection.

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

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

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

The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:

• Claims that are fully supported by the parent application retain the parent’s filing date.
• Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.

The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application. This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.

For more information on effective filing date, visit: effective filing date.

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

How does new matter in a continuation-in-part application affect priority dates?

The introduction of new matter in a continuation-in-part (CIP) application has significant implications for priority dates. According to MPEP 201.08:

“The new matter in a continuation-in-part application is not entitled to the benefit of the filing date of the parent application.”

This means:

• Subject matter carried over from the parent application retains the parent’s filing date as its priority date
• New matter introduced in the CIP has the filing date of the CIP as its priority date
• Different claims within the same CIP application may have different priority dates

This distinction is crucial for determining prior art and potential patent infringement cases. Inventors and patent practitioners must carefully consider the implications of adding new matter when filing a CIP application.

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

How does new matter in a continuation-in-part affect prior art considerations?

The introduction of new matter in a continuation-in-part (CIP) application significantly affects prior art considerations. According to the MPEP 201.08:

Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application.

This means:

• Claims based on new matter have the filing date of the CIP as their effective filing date.
• Prior art that predates the CIP filing but postdates the parent application can be used against claims based on new matter.
• Claims fully supported by the parent application retain the earlier effective filing date for prior art purposes.

Patent examiners must carefully analyze each claim to determine its effective filing date and apply the appropriate prior art. Applicants should be aware that introducing new matter may expose some claims to a broader range of prior art, potentially affecting patentability.

For more information on effective filing date, visit: effective filing date.

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

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

How does new matter in a continuation-in-part affect patent rights?

New matter introduced in a continuation-in-part (CIP) application can significantly affect patent rights. According to MPEP 201.08, “Matter not disclosed in the parent nonprovisional application is entitled only to the filing date of the continuation-in-part application.”

This means:

• New matter is only entitled to the filing date of the CIP application itself.
• This later filing date can impact the assessment of prior art for the new matter.
• Patent term for claims based on new matter may be calculated from the CIP filing date.
• Different parts of the CIP application may have different priority dates, affecting patentability and enforcement.

It’s crucial for inventors and patent practitioners to carefully consider the implications of adding new matter in a CIP, as it can affect the scope and strength of patent protection.

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

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

The treatment of new matter varies depending on the type of continuing application:

• Continuation and Divisional Applications: Must not contain any new matter. The disclosure must be the same as the prior application.
• Continuation-in-Part (CIP) Applications: Can include new matter not disclosed in the parent application.
• Continued Prosecution Applications (CPAs): Cannot contain new matter.

For continuation and divisional applications, the MPEP states: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.”

For CIPs, the MPEP notes: “A continuation-in-part is an application… repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.”

If new matter is found in a continuation or divisional application, the examiner will require the applicant to delete the benefit claim or change the application to a continuation-in-part. For CPAs, any new matter introduced will be required to be canceled.

It’s important to note that claims in a CIP application that rely on new matter will only be entitled to the filing date of the CIP, not the parent application’s filing date.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on CPA, visit: CPA.

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

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

Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant.

The MPEP ¶ 2.10.01 instructs examiners:

“In bracket 1, provide an example of the matter not disclosed in the prior-filed application.”

This means the examiner must specifically point out the new matter found in the application, allowing the applicant to understand and address the issue.

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

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

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

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

How does a continuation-in-part application affect the priority date?

A continuation-in-part (CIP) application can have different priority dates for different parts of the disclosure. According to MPEP 201.08:

‘The continuation-in-part application may be entitled to the benefit of the filing date of the prior application as to the common subject matter disclosed in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.’

This means:

• Content shared with the parent application retains the earlier priority date.
• New matter added in the CIP has the filing date of the CIP as its priority date.
• Different claims in the CIP may have different priority dates based on their disclosure in the parent or CIP application.

Understanding these priority date implications is crucial for determining patentability and prior art considerations.

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

A continuation-in-part (CIP) application can have a complex effect on patent term. The MPEP 201.08 states:

‘A continuation-in-part application is entitled to the benefit of the filing date of an earlier nonprovisional application as to common subject matter.’

This has several implications for patent term:

• 20-year term: The patent term is generally 20 years from the earliest effective U.S. filing date of the first nonprovisional application in the chain.
• New matter: Claims solely supported by new matter in the CIP do not receive the benefit of the earlier filing date, potentially extending their effective term.
• Priority claims: The ability to claim priority to earlier applications can affect the starting point of the 20-year term.
• Patent term adjustment: Delays in prosecution may lead to patent term adjustments, which can extend the term beyond 20 years.

Applicants should carefully consider the impact on patent term when deciding to file a CIP, especially for rapidly evolving technologies where a longer term might be advantageous.

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

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

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

How does a continuation-in-part (CIP) application affect priority claims?

A continuation-in-part (CIP) application introduces new matter not present in the prior application, which affects priority claims as follows:

• Claims fully supported by the prior application retain the benefit of the earlier filing date.
• Claims relying on new matter only receive the filing date of the CIP application.
• As stated in MPEP 211.01(b): “Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application.”

Examiners must analyze each claim individually to determine its effective filing date. This can result in different claims within the same CIP application having different priority dates.

To learn more:

• Continuation-in-part
• CIP
• Priority claim
• New matter
• Effective filing date

While both continuation and continuation-in-part (CIP) applications are types of continuing applications, they have a key difference in terms of their disclosure. According to the MPEP:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

The main differences are:

• Continuation: Contains the same disclosure as the parent application without any new matter.
• Continuation-in-part (CIP): May include the disclosure from the parent application plus additional new matter.

This distinction is crucial because it affects the priority date for different claims in the application. In a continuation, all claims are entitled to the parent’s filing date. In a CIP, only claims supported by the parent application get the benefit of the earlier filing date; new matter gets the filing date of the CIP.

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

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

Continuation, divisional, and continuation-in-part (CIP) applications are all types of continuing applications, but they have key differences:

• Continuation application: Discloses and claims only subject matter disclosed in the prior application. No new matter is added.
• Divisional application: Results from a restriction requirement in the parent application. Claims an independent and distinct invention carved out of the parent application. No new matter is added.
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application and adds matter not disclosed in the prior application (i.e., new matter is added).

As stated in the MPEP regarding continuation-in-part applications:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

All three types of applications must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) and comply with other requirements set forth in 37 CFR 1.78.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

Preliminary amendments in continuation applications are subject to specific rules and considerations. The MPEP provides guidance on this topic:

Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

This means that preliminary amendments submitted with the application are treated as part of the original filing. However, there are important requirements and considerations:

1. Compliance with 37 CFR 1.121:
   

   Amendments must be filed in compliance with the requirements of 37 CFR 1.121 (e.g., the amendment must include a complete claim listing whenever a claim is added, canceled, or amended).

2. Possible Requirement for Substitute Specification:
   

   The Office may require a substitute specification for preliminary amendments.

3. Classification and Assignment:
   

   Applications should be classified and assigned to the proper Technology Center (TC) by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment.

4. New Matter Considerations: If the preliminary amendment introduces new matter, it may affect the application’s status as a continuation. The MPEP advises:
   

   Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part.

Applicants should carefully consider the content and timing of preliminary amendments in continuation applications to ensure compliance with USPTO requirements and to maintain the desired relationship with the parent application.

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

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

No, new matter cannot be added to a divisional application. The divisional application must only contain subject matter disclosed in the parent application. The MPEP clearly states:

Thus the disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

Any attempt to add new matter to a divisional application will be rejected under 35 U.S.C. 112(a) as lacking written description support in the parent application.

To learn more:

• divisional application
• new matter
• patent application content

Can new matter be added to a continuation application?

No, new matter cannot be added to a continuation application. A continuation application must disclose and claim only subject matter disclosed in the prior application.

As stated in MPEP 201.07: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.” This means that all claims in a continuation application must find support in the original disclosure of the parent application.

If an applicant wishes to add new matter, they would need to file a continuation-in-part (CIP) application instead, which allows for the addition of new subject matter while still claiming the benefit of the earlier filing date for the previously disclosed material.

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

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

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

To learn more:

• CPA
• New Matter
• Patent Application

No, you cannot add an incorporation by reference statement when submitting a benefit claim after the initial filing of your application. The MPEP clearly states:

When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application.

This rule is based on the principle that no new matter can be added to an application after its filing date, as per 35 U.S.C. 132(a). The MPEP cites the case of Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980) to support this position.

Therefore, if you wish to include an incorporation by reference statement for a prior application, it must be present in the application as originally filed. If it wasn’t included at that time, you cannot add it later when submitting a benefit claim.

To learn more:

• incorporation by reference
• benefit claim
• new matter
• patent application

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 divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:

‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’

This means:

• The divisional application must be limited to the subject matter disclosed in the parent application
• No new matter can be added to the divisional application
• The claims in the divisional must be supported by the disclosure of the parent application

If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.

To learn more:

• divisional application
• new matter
• continuation-in-part
• CIP
• patent disclosure

Can a continuation-in-part application claim priority to a provisional application?

Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.

Key points to understand:

• Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
• New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
• One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
• Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.

Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.

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

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

A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:

• Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
• New matter introduced in the CIP will have the filing date of the CIP application.
• Each claim in the CIP is evaluated independently for priority date determination.

MPEP 211.05 states:

A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.

This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.

To learn more:

• continuation-in-part
• CIP
• prior application
• filing date benefit
• new matter

No, a continuation application cannot include new matter. As stated in MPEP 201.07:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

This means that the continuation application must be based entirely on the disclosure of the prior-filed application. Any new subject matter would need to be filed as a continuation-in-part (CIP) application instead of a standard continuation application.

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

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

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

Can a continuation application add new matter to the original disclosure?

No, a continuation application cannot add new matter to the original disclosure. This is a fundamental characteristic of continuation applications.

According to MPEP 201.07:

‘A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.’

This means that the continuation must rely entirely on the disclosure of the parent application. Any attempt to introduce new matter would result in the application being treated as a continuation-in-part (CIP) rather than a true continuation. It’s crucial for inventors and patent practitioners to understand this limitation when considering filing strategy.

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

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

What is the significance of the ‘original disclosure’ in a divisional application?

The ‘original disclosure’ is crucial in a divisional application because it defines the scope of what can be included in the divisional. According to MPEP 201.06:

‘The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, i.e., the original disclosure of the parent or original nonprovisional application or provisional application.’

This means that no new matter can be added to a divisional application. The divisional must rely entirely on the content disclosed in the original parent application. This ensures that the divisional application doesn’t extend beyond the scope of what was initially invented and disclosed.

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

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

What is the relationship between a continuation-in-part application and its parent application?

A continuation-in-part (CIP) application is a type of patent application that has a unique relationship with its parent application. According to MPEP 201.08:

“A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.”

This means that a CIP application:

• Contains some or all of the subject matter from the parent application
• Introduces new subject matter not present in the parent application
• Must be filed while the parent application is still pending

The relationship between a CIP and its parent is important for determining priority dates and the scope of patent protection.

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

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

A preliminary amendment filed with a continuation or divisional application can have significant effects:

1. If present on the filing date, it is considered part of the original disclosure.
2. It must comply with the requirements of 37 CFR 1.121 for amendments.
3. The Office may require a substitute specification for extensive preliminary amendments.
4. The application will be classified and assigned based on the claims that will be before the examiner after entry of the preliminary amendment.

The MPEP states: Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

However, applicants should be cautious about introducing new matter through a preliminary amendment. The MPEP advises: Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part.

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

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

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

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that claim priority to an earlier filed application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07: “A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.”
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the prior application.

The key difference is that a continuation application does not introduce new subject matter, while a CIP application does.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

What is the definition of a continuation-in-part application?

A continuation-in-part (CIP) application is a type of patent application that includes a portion or all of the disclosure from a prior application and adds new matter not disclosed in the prior application. The MPEP 201.08 states:

‘A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.’

This type of application allows inventors to expand upon their original invention while maintaining the priority date for the portions disclosed in the earlier application.

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

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

A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application.

As stated in the MPEP:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

Key points about CIP applications:

• A CIP application may only be filed under 37 CFR 1.53(b).
• The CIP application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• A CIP application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
• The mere filing of a CIP application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

Introducing new matter in a divisional application is not allowed and can have serious consequences. According to MPEP 201.06:

“A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.”

This means that a divisional application must not contain any new matter beyond what was disclosed in the parent application. If new matter is introduced:

• The new matter will not be entitled to the benefit of the parent application’s filing date.
• Claims relying on the new matter may be rejected under 35 U.S.C. 112(a) for lack of written description or enablement.
• The application may lose its status as a proper divisional, potentially affecting its ability to overcome certain types of double patenting rejections.

To avoid these issues:

1. Carefully review the divisional application before filing to ensure it only contains subject matter from the parent application.
2. If new subject matter is necessary, consider filing it as a continuation-in-part (CIP) application instead of a divisional.
3. Consult with a patent attorney or agent to ensure compliance with MPEP guidelines.

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

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

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

While both continuation and continuation-in-part (CIP) applications are related to a prior application, there are key differences:

• Continuation: Repeats the entire disclosure of the prior application without adding new matter.
• Continuation-in-Part (CIP): According to MPEP ¶ 2.06, a CIP “repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application.”

The main difference is that a CIP introduces new subject matter not present in the original application. This new matter receives the filing date of the CIP, while the repeated portions may claim the earlier filing date of the prior application if properly claimed under 35 U.S.C. 120.

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

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

A continuation-in-part (CIP) application has specific filing requirements. Key points include:

• A CIP application can only be filed under 37 CFR 1.53(b).
• It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance).
• The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• For applications filed on or after September 16, 2012, the benefit claim must be in an application data sheet (ADS).
• The CIP must have at least one common inventor with the prior application.
• New matter can be added to the specification, but claims relying on this new matter will not get the benefit of the earlier filing date.

As stated in the MPEP:

A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

It’s important to note that while a CIP allows for the addition of new matter, any claims that rely on this new matter will only be entitled to the filing date of the CIP application, not the earlier filing date of the parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

How does the priority date work in a continuation-in-part application?

In a continuation-in-part (CIP) application, the priority date can vary for different parts of the application. According to MPEP 201.08:

“The disclosure presented in the continuation-in-part application may include subject matter in common with the earlier application and may include additional subject matter not disclosed in the earlier application. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the earlier nonprovisional application are entitled to the benefit of the filing date of the earlier nonprovisional application.”

This means:

• Subject matter carried over from the parent application retains the original filing date as its priority date
• New matter added in the CIP has the filing date of the CIP as its priority date
• Each claim in a CIP is evaluated individually to determine its effective filing date
• Claims fully supported by the parent application get the earlier priority date
• Claims relying on new matter get the later CIP filing date as their priority date

Understanding priority dates in CIPs is crucial for determining patentability and for defending against potential prior art references.

For more information on effective filing date, visit: effective filing date.

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

How does the filing date of new matter in a CIP application affect patent rights?

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The filing date of new matter in a continuation-in-part (CIP) application significantly affects patent rights. According to MPEP 201.08:

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“Matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application. Matter disclosed for the first time in the continuation-in-part application does not receive the benefit of the filing date of the parent application.”

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This means:

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• The new matter in a CIP is treated as having the filing date of the CIP application itself.

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• This later filing date can impact the assessment of prior art and the determination of patentability for the new matter.

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• It may affect the patent term for claims based on the new matter.

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• In some cases, it could make the new matter more vulnerable to challenges based on intervening prior art.

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Therefore, inventors and patent attorneys must carefully consider the timing and content of CIP applications to maximize patent protection.

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

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

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

The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:

• Claims that are fully supported by the parent application retain the parent’s filing date.
• Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.

The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application. This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.

For more information on effective filing date, visit: effective filing date.

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

How does new matter in a continuation-in-part application affect priority dates?

The introduction of new matter in a continuation-in-part (CIP) application has significant implications for priority dates. According to MPEP 201.08:

“The new matter in a continuation-in-part application is not entitled to the benefit of the filing date of the parent application.”

This means:

• Subject matter carried over from the parent application retains the parent’s filing date as its priority date
• New matter introduced in the CIP has the filing date of the CIP as its priority date
• Different claims within the same CIP application may have different priority dates

This distinction is crucial for determining prior art and potential patent infringement cases. Inventors and patent practitioners must carefully consider the implications of adding new matter when filing a CIP application.

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

How does new matter in a continuation-in-part affect prior art considerations?

The introduction of new matter in a continuation-in-part (CIP) application significantly affects prior art considerations. According to the MPEP 201.08:

Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application.

This means:

• Claims based on new matter have the filing date of the CIP as their effective filing date.
• Prior art that predates the CIP filing but postdates the parent application can be used against claims based on new matter.
• Claims fully supported by the parent application retain the earlier effective filing date for prior art purposes.

Patent examiners must carefully analyze each claim to determine its effective filing date and apply the appropriate prior art. Applicants should be aware that introducing new matter may expose some claims to a broader range of prior art, potentially affecting patentability.

For more information on effective filing date, visit: effective filing date.

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

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

How does new matter in a continuation-in-part affect patent rights?

New matter introduced in a continuation-in-part (CIP) application can significantly affect patent rights. According to MPEP 201.08, “Matter not disclosed in the parent nonprovisional application is entitled only to the filing date of the continuation-in-part application.”

This means:

• New matter is only entitled to the filing date of the CIP application itself.
• This later filing date can impact the assessment of prior art for the new matter.
• Patent term for claims based on new matter may be calculated from the CIP filing date.
• Different parts of the CIP application may have different priority dates, affecting patentability and enforcement.

It’s crucial for inventors and patent practitioners to carefully consider the implications of adding new matter in a CIP, as it can affect the scope and strength of patent protection.

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

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

The treatment of new matter varies depending on the type of continuing application:

• Continuation and Divisional Applications: Must not contain any new matter. The disclosure must be the same as the prior application.
• Continuation-in-Part (CIP) Applications: Can include new matter not disclosed in the parent application.
• Continued Prosecution Applications (CPAs): Cannot contain new matter.

For continuation and divisional applications, the MPEP states: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.”

For CIPs, the MPEP notes: “A continuation-in-part is an application… repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.”

If new matter is found in a continuation or divisional application, the examiner will require the applicant to delete the benefit claim or change the application to a continuation-in-part. For CPAs, any new matter introduced will be required to be canceled.

It’s important to note that claims in a CIP application that rely on new matter will only be entitled to the filing date of the CIP, not the parent application’s filing date.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on CPA, visit: CPA.

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

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

How does a continuation-in-part application affect the priority date?

A continuation-in-part (CIP) application can have different priority dates for different parts of the disclosure. According to MPEP 201.08:

‘The continuation-in-part application may be entitled to the benefit of the filing date of the prior application as to the common subject matter disclosed in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.’

This means:

• Content shared with the parent application retains the earlier priority date.
• New matter added in the CIP has the filing date of the CIP as its priority date.
• Different claims in the CIP may have different priority dates based on their disclosure in the parent or CIP application.

Understanding these priority date implications is crucial for determining patentability and prior art considerations.

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

A continuation-in-part (CIP) application can have a complex effect on patent term. The MPEP 201.08 states:

‘A continuation-in-part application is entitled to the benefit of the filing date of an earlier nonprovisional application as to common subject matter.’

This has several implications for patent term:

• 20-year term: The patent term is generally 20 years from the earliest effective U.S. filing date of the first nonprovisional application in the chain.
• New matter: Claims solely supported by new matter in the CIP do not receive the benefit of the earlier filing date, potentially extending their effective term.
• Priority claims: The ability to claim priority to earlier applications can affect the starting point of the 20-year term.
• Patent term adjustment: Delays in prosecution may lead to patent term adjustments, which can extend the term beyond 20 years.

Applicants should carefully consider the impact on patent term when deciding to file a CIP, especially for rapidly evolving technologies where a longer term might be advantageous.

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

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

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

While both continuation and continuation-in-part (CIP) applications are types of continuing applications, they have a key difference in terms of their disclosure. According to the MPEP:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

The main differences are:

• Continuation: Contains the same disclosure as the parent application without any new matter.
• Continuation-in-part (CIP): May include the disclosure from the parent application plus additional new matter.

This distinction is crucial because it affects the priority date for different claims in the application. In a continuation, all claims are entitled to the parent’s filing date. In a CIP, only claims supported by the parent application get the benefit of the earlier filing date; new matter gets the filing date of the CIP.

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

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

Continuation, divisional, and continuation-in-part (CIP) applications are all types of continuing applications, but they have key differences:

• Continuation application: Discloses and claims only subject matter disclosed in the prior application. No new matter is added.
• Divisional application: Results from a restriction requirement in the parent application. Claims an independent and distinct invention carved out of the parent application. No new matter is added.
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application and adds matter not disclosed in the prior application (i.e., new matter is added).

As stated in the MPEP regarding continuation-in-part applications:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

All three types of applications must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) and comply with other requirements set forth in 37 CFR 1.78.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

Preliminary amendments in continuation applications are subject to specific rules and considerations. The MPEP provides guidance on this topic:

Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

This means that preliminary amendments submitted with the application are treated as part of the original filing. However, there are important requirements and considerations:

1. Compliance with 37 CFR 1.121:
   

   Amendments must be filed in compliance with the requirements of 37 CFR 1.121 (e.g., the amendment must include a complete claim listing whenever a claim is added, canceled, or amended).

2. Possible Requirement for Substitute Specification:
   

   The Office may require a substitute specification for preliminary amendments.

3. Classification and Assignment:
   

   Applications should be classified and assigned to the proper Technology Center (TC) by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment.

4. New Matter Considerations: If the preliminary amendment introduces new matter, it may affect the application’s status as a continuation. The MPEP advises:
   

   Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part.

Applicants should carefully consider the content and timing of preliminary amendments in continuation applications to ensure compliance with USPTO requirements and to maintain the desired relationship with the parent application.

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

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

Can new matter be added to a continuation application?

No, new matter cannot be added to a continuation application. A continuation application must disclose and claim only subject matter disclosed in the prior application.

As stated in MPEP 201.07: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.” This means that all claims in a continuation application must find support in the original disclosure of the parent application.

If an applicant wishes to add new matter, they would need to file a continuation-in-part (CIP) application instead, which allows for the addition of new subject matter while still claiming the benefit of the earlier filing date for the previously disclosed material.

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

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

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.

Can a continuation-in-part application claim priority to a provisional application?

Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.

Key points to understand:

• Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
• New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
• One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
• Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.

Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.

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

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

No, a continuation application cannot include new matter. As stated in MPEP 201.07:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

This means that the continuation application must be based entirely on the disclosure of the prior-filed application. Any new subject matter would need to be filed as a continuation-in-part (CIP) application instead of a standard continuation application.

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

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

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

Can a continuation application add new matter to the original disclosure?

No, a continuation application cannot add new matter to the original disclosure. This is a fundamental characteristic of continuation applications.

According to MPEP 201.07:

‘A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.’

This means that the continuation must rely entirely on the disclosure of the parent application. Any attempt to introduce new matter would result in the application being treated as a continuation-in-part (CIP) rather than a true continuation. It’s crucial for inventors and patent practitioners to understand this limitation when considering filing strategy.

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

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

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

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

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

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

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

Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.

The MPEP ¶ 2.10.01 states:

“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”

If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.

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

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

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

The presence of new matter in a continuation or divisional application can significantly affect its filing date. If new matter is found, the application may lose the benefit of the earlier filing date for the new subject matter.

According to MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

If the application is changed to a continuation-in-part, the new matter will have the filing date of the current application, while the previously disclosed matter retains the earlier filing date. This can have important implications for determining prior art and patent term.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant.

The MPEP ¶ 2.10.01 instructs examiners:

“In bracket 1, provide an example of the matter not disclosed in the prior-filed application.”

This means the examiner must specifically point out the new matter found in the application, allowing the applicant to understand and address the issue.

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

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

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

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

The USPTO treats applications with omitted drawings similarly to those with missing specification pages. According to MPEP 506:

In the event that a page of the specification, or a portion thereof, or a page of the drawings, or a portion thereof, is inadvertently omitted from an application as filed, the application will be not be considered complete and the applicant will be notified to file the omitted portion.

If drawings are omitted, the applicant will be notified and given a time period to submit the missing drawings. However, adding new drawings after the filing date may affect the application’s effective filing date if they introduce new matter. It’s crucial to include all necessary drawings with the initial application to avoid potential issues.

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

The USPTO treats applications with omitted drawings similarly to those with missing specification pages. According to MPEP 506:

In the event that a page of the specification, or a portion thereof, or a page of the drawings, or a portion thereof, is inadvertently omitted from an application as filed, the application will be not be considered complete and the applicant will be notified to file the omitted portion.

If drawings are omitted, the applicant will be notified and given a time period to submit the missing drawings. However, adding new drawings after the filing date may affect the application’s effective filing date if they introduce new matter. It’s crucial to include all necessary drawings with the initial application to avoid potential issues.

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

When is a new oath or declaration required for a continuation-in-part application?

For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:

‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’

This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.

To learn more:

• continuation-in-part application
• CIP
• oath
• declaration
• new matter

An applicant can voluntarily submit a substitute specification at any point up to the payment of the issue fee, subject to certain conditions. 37 CFR 1.125(b) states:

Subject to § 1.312, a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter.

It’s important to note that the substitute specification must not introduce new matter and must be accompanied by a statement confirming this fact. Additionally, the claims are excluded from this voluntary submission process.

To learn more:

• substitute specification
• voluntary submission
• patent application
• new matter

If new matter is objected to in a patent application, the applicant must take specific actions to address the objection. According to the MPEP, the examiner will use Form Paragraph 7.28, which states:

Applicant is required to cancel the new matter in the reply to this Office action.

To respond, the applicant should:

1. Review the identified new matter carefully.
2. If the applicant agrees it’s new matter, cancel the objected content in their response.
3. If the applicant disagrees, provide a detailed explanation demonstrating how the original disclosure supports the contested material.
4. Consider amending the application to use language more closely aligned with the original disclosure.

It’s crucial to address all new matter objections promptly to avoid potential rejections under 35 U.S.C. 112(a).

To learn more:

• new matter
• objection
• patent application
• applicant response

What is the significance of the application filing date in patent law?

The application filing date is crucial in patent law for several reasons:

• Priority: It establishes the priority date for the claimed invention, which is used to determine novelty and non-obviousness.
• Disclosure requirement: The specification must fully support the claimed invention as of the filing date.
• New matter prohibition: Any material added after the filing date may be considered new matter and rejected.

As stated in MPEP 608.04(a): Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is usually new matter. This underscores the importance of having a complete and comprehensive disclosure at the time of filing.

To learn more:

• application filing date
• priority date
• new matter
• disclosure requirement

What is the significance of the application filing date for new matter in patent applications?

The application filing date is crucial when determining whether content in a patent application constitutes new matter. MPEP 608.04(a) states:

‘Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.’

This means that any information added to the application after the filing date, which was not present in the original specification, claims, or drawings, is considered new matter. This is important because new matter cannot be added to an application without filing a continuation-in-part application.

The filing date serves as a cutoff point for the content that can be included in the application without being considered new matter. Inventors and patent practitioners must ensure that all necessary information is included in the application on or before the filing date to avoid issues with new matter.

To learn more:

• application filing date
• new matter
• patent applications
• MPEP 608.04(a)

To learn more:

• MPEP 608.04(a)

What is the significance of the ‘original disclosure’ in a divisional application?

The ‘original disclosure’ is crucial in a divisional application because it defines the scope of what can be included in the divisional. According to MPEP 201.06:

‘The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, i.e., the original disclosure of the parent or original nonprovisional application or provisional application.’

This means that no new matter can be added to a divisional application. The divisional must rely entirely on the content disclosed in the original parent application. This ensures that the divisional application doesn’t extend beyond the scope of what was initially invented and disclosed.

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

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

What is the relationship between a continuation-in-part application and its parent application?

A continuation-in-part (CIP) application is a type of patent application that has a unique relationship with its parent application. According to MPEP 201.08:

“A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.”

This means that a CIP application:

• Contains some or all of the subject matter from the parent application
• Introduces new subject matter not present in the parent application
• Must be filed while the parent application is still pending

The relationship between a CIP and its parent is important for determining priority dates and the scope of patent protection.

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

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

When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal.

According to MPEP 608.04(c):

“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition.”

To challenge the examiner’s holding of new matter in the specification:

1. Prepare a detailed petition explaining why the amendment does not introduce new matter.
2. Submit the petition to the USPTO, following the guidelines for petition submission.
3. The petition will be reviewed by the appropriate office, typically the Technology Center Director or their designee.
4. A decision will be issued either granting or denying the petition.

It’s important to note that this process is separate from the appeal process used for claim rejections.

To learn more:

• new matter
• specification amendments
• petition process
• patent examination

New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:

‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’

This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.

To learn more:

• new matter
• benefit claims
• written description requirement
• prior-filed application

A preliminary amendment filed with a continuation or divisional application can have significant effects:

1. If present on the filing date, it is considered part of the original disclosure.
2. It must comply with the requirements of 37 CFR 1.121 for amendments.
3. The Office may require a substitute specification for extensive preliminary amendments.
4. The application will be classified and assigned based on the claims that will be before the examiner after entry of the preliminary amendment.

The MPEP states: Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

However, applicants should be cautious about introducing new matter through a preliminary amendment. The MPEP advises: Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part.

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

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

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

The distinction between petitioning and appealing a new matter rejection is crucial in patent prosecution:

• Petition: Used when new matter is confined to amendments in the specification.
• Appeal: Required when new matter affects the claims, leading to their rejection.

According to MPEP 608.04(c):

“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one…”

This means that even if new matter is introduced in both the specification and claims, the claim-related issues must be addressed through the appeal process, not by petition.

To learn more:

• new matter
• patent examination
• petition
• appeal
• specification amendments
• claim amendments

What is the difference between new matter and new or amended claims in patent applications?

New matter and new or amended claims are distinct concepts in patent law:

• New matter refers to content not present in the original disclosure of the application. As stated in MPEP 608.04: ‘New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure…’
• New or amended claims, on the other hand, are permissible as long as they are supported by the original disclosure. The MPEP clarifies: ‘An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed.’

In essence, while new or amended claims can be added to an application, they must not introduce new matter that wasn’t originally disclosed.

To learn more:

• new matter
• new claims
• amended claims
• patent application
• original disclosure

What is the difference between new matter and inherent disclosure in patent applications?

New matter and inherent disclosure are distinct concepts in patent law:

• New matter refers to information added to a patent application after its filing date that goes beyond the original disclosure. This is generally not allowed and can result in rejection.
• Inherent disclosure refers to information that, while not explicitly stated in the original application, is necessarily present or implied by the content that was disclosed.

According to MPEP 608.04: “New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method.” However, inherent properties or characteristics that are necessarily present in the disclosed invention do not constitute new matter.

It’s important for patent applicants to carefully consider what information is truly inherent to their original disclosure to avoid introducing new matter while still fully describing their invention.

To learn more:

• new matter
• inherent disclosure
• patent application
• MPEP 608.04

To learn more:

• MPEP 608.04

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that claim priority to an earlier filed application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07: “A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.”
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the prior application.

The key difference is that a continuation application does not introduce new subject matter, while a CIP application does.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that stem from an earlier application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07, ‘A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application… The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.’
• Continuation-in-part application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the parent application.

The key distinction is that a continuation-in-part introduces new subject matter, while a continuation does not.

To learn more:

• continuation application
• continuation-in-part
• CIP
• patent application types
• new matter

What is the definition of a continuation-in-part application?

A continuation-in-part (CIP) application is a type of patent application that includes a portion or all of the disclosure from a prior application and adds new matter not disclosed in the prior application. The MPEP 201.08 states:

‘A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.’

This type of application allows inventors to expand upon their original invention while maintaining the priority date for the portions disclosed in the earlier application.

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

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

When submitting replacement drawings after allowance, the applicant has a crucial responsibility:

It is applicant’s responsibility to see that no new matter is added when submitting replacement drawings after allowance because they will not normally be reviewed by an examiner.

This means that applicants must ensure that any changes made to the drawings do not introduce new subject matter that wasn’t present in the original application. This responsibility is particularly important because examiners typically do not review these late-submitted drawings, placing the onus on the applicant to maintain the integrity of the application’s content.

To learn more:

• replacement drawings
• new matter
• patent allowance
• applicant responsibility

‘New matter’ refers to any subject matter that is added to a patent application after its filing date, which was not present in the original specification, claims, or drawings. The MPEP states: Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter. (MPEP 608.04(a))

New matter can include:

• Addition of wholly unsupported subject matter
• Adding specific percentages or compounds after a broader original disclosure
• Omission of a step from a method

It’s important to note that new matter is not allowed in patent applications, as per 35 U.S.C. 132(a), which states: No amendment shall introduce new matter into the disclosure of the invention.

To learn more:

• new matter
• patent application
• amendments
• specification
• claims
• drawings

A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application.

As stated in the MPEP:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

Key points about CIP applications:

• A CIP application may only be filed under 37 CFR 1.53(b).
• The CIP application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• A CIP application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
• The mere filing of a CIP application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:

1. The examiner will notify the applicant in the next Office action.
2. The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).

According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.

It’s important to note that:

• Continuations and divisionals should not contain new matter relative to the prior application.
• If new matter is present, the application is more appropriately designated as a continuation-in-part.
• The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.

Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.

To learn more:

• new matter
• continuation
• divisional
• continuation-in-part
• CIP
• patent examination

Introducing new matter in a divisional application is not allowed and can have serious consequences. According to MPEP 201.06:

“A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.”

This means that a divisional application must not contain any new matter beyond what was disclosed in the parent application. If new matter is introduced:

• The new matter will not be entitled to the benefit of the parent application’s filing date.
• Claims relying on the new matter may be rejected under 35 U.S.C. 112(a) for lack of written description or enablement.
• The application may lose its status as a proper divisional, potentially affecting its ability to overcome certain types of double patenting rejections.

To avoid these issues:

1. Carefully review the divisional application before filing to ensure it only contains subject matter from the parent application.
2. If new subject matter is necessary, consider filing it as a continuation-in-part (CIP) application instead of a divisional.
3. Consult with a patent attorney or agent to ensure compliance with MPEP guidelines.

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

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

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

When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:

• Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
• Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
• The new matter may affect the application’s ability to overcome prior art references.

As stated in MPEP 211.05:

“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”

This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.

To learn more:

• continuation-in-part application
• new matter
• prior art
• effective filing date
• parent application

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

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

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

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

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

What constitutes inherent characteristics in patent applications?

Inherent characteristics in patent applications refer to properties or features that are necessarily present in the invention but may not be explicitly stated in the original disclosure. MPEP 608.04(a) provides guidance on this:

‘Inherent characteristics of materials and properties of processes are not considered to be new matter.’

This means that certain aspects of an invention that are inherently present, even if not explicitly described, are not considered new matter when later disclosed or claimed. Examples of inherent characteristics might include:

• Physical properties of materials
• Chemical reactions that naturally occur under specified conditions
• Known scientific principles underlying the invention

However, it’s important to note that claiming inherent characteristics requires careful consideration. The written description requirement must still be satisfied, and the inherency must be clearly and unambiguously supported by the original disclosure.

To learn more:

• inherent characteristics
• patent applications
• new matter
• MPEP 608.04(a)

To learn more:

• MPEP 608.04(a)

‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a):

Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.

This can include adding specific percentages, compounds, or even omitting steps from a method that were present in the original disclosure.

To learn more:

• new matter
• patent application
• specification
• claims
• drawings

The MPEP 201.06(c) outlines the requirements for filing a divisional or continuation application without an executed oath or declaration:

’37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing an oath or declaration as required by 37 CFR 1.63, provided that a copy of the executed oath or declaration filed in the prior application is submitted for the continuation or divisional application and the specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application.’

To file without a new oath or declaration:

• Submit a copy of the executed oath or declaration from the prior application
• Ensure the new application contains no new matter
• File a copy of the specification and drawings from the prior application

This procedure allows for expedited filing while maintaining the integrity of the oath or declaration requirements.

To learn more:

• divisional application
• continuation application
• oath
• declaration
• 37 CFR 1.63(d)
• new matter

To learn more:

• 37 CFR 1.63(d)

While both continuation and continuation-in-part (CIP) applications are related to a prior application, there are key differences:

• Continuation: Repeats the entire disclosure of the prior application without adding new matter.
• Continuation-in-Part (CIP): According to MPEP ¶ 2.06, a CIP “repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application.”

The main difference is that a CIP introduces new subject matter not present in the original application. This new matter receives the filing date of the CIP, while the repeated portions may claim the earlier filing date of the prior application if properly claimed under 35 U.S.C. 120.

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

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

Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.

The MPEP ¶ 2.10.01 states:

“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”

If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.

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

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

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

A continuation-in-part (CIP) application has specific filing requirements. Key points include:

• A CIP application can only be filed under 37 CFR 1.53(b).
• It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance).
• The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• For applications filed on or after September 16, 2012, the benefit claim must be in an application data sheet (ADS).
• The CIP must have at least one common inventor with the prior application.
• New matter can be added to the specification, but claims relying on this new matter will not get the benefit of the earlier filing date.

As stated in the MPEP:

A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

It’s important to note that while a CIP allows for the addition of new matter, any claims that rely on this new matter will only be entitled to the filing date of the CIP application, not the earlier filing date of the parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

What are the consequences of adding new matter to a patent application?

Adding new matter to a patent application can have serious consequences:

• Rejection or objection: The USPTO will issue a rejection or objection to the new matter. As stated in MPEP 608.04, ‘If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.’
• Loss of priority date: New matter may result in a later effective filing date for the affected claims.
• Inability to claim benefit: As per the MPEP, ‘New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method.’
• Need for continuation-in-part: To properly include the new matter, a continuation-in-part application may be necessary.

It’s crucial to ensure all subject matter is fully supported by the original disclosure to avoid these issues.

To learn more:

• new matter
• patent application
• rejection
• priority date
• continuation-in-part

To learn more:

• consequences
• filing date

For non-design patent applications filed on or after December 18, 2013, the drawing requirements have been relaxed. The MPEP states: Applications, which are not design applications, filed under 35 U.S.C. 111(a) or (b) on or after December 18, 2013 are entitled to a filing date even if the application does not contain drawings. However, it’s important to note that while drawings are not required for a filing date, they should still be submitted if necessary for understanding the invention, as no amendment may introduce new matter into the disclosure of an application after its filing date.

To learn more:

• patent drawings
• filing date
• USPTO requirements
• new matter

How does the USPTO handle new matter introduced in continuation-in-part applications?

Continuation-in-part (CIP) applications are a special case when it comes to new matter. The MPEP 608.04 states:

‘In the case of a continuation-in-part application, any claim directed to matter which was not described in the parent nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112 is treated as entitled only to the filing date of the continuation-in-part application.’

This means:

• New matter can be introduced in a CIP application.
• Claims based on the new matter will only receive the filing date of the CIP application.
• Claims fully supported by the parent application can retain the earlier filing date.

Examiners will carefully review CIP applications to determine which claims are entitled to which filing dates, affecting prior art considerations and potentially the validity of the claims.

To learn more:

• continuation-in-part
• CIP
• new matter
• filing date
• patent application

How does the USPTO handle new matter in continuation applications?

The United States Patent and Trademark Office (USPTO) treats new matter in continuation applications similarly to how it handles new matter in original applications. According to MPEP 608.04:

“A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation application) to continuation-in-part (CIP) if the application contains subject matter that would have been new matter in the prior-filed application.”

This means that:

• Continuation applications must be based entirely on the disclosure of the parent application
• Any new subject matter introduced in a continuation application will be rejected as new matter
• If new matter is present, the applicant must either remove it or change the application type to a continuation-in-part (CIP)

CIP applications allow for the introduction of new matter, but the new subject matter will only receive the benefit of the CIP filing date, not the earlier parent application date. It’s crucial for applicants to carefully review their continuation applications to ensure they don’t inadvertently introduce new matter, which could jeopardize their priority claim to the parent application.

To learn more:

• continuation applications
• new matter
• USPTO
• MPEP 608.04

To learn more:

• MPEP 608.04

The USPTO treats applications with omitted drawings similarly to those with missing specification pages. According to MPEP 506:

In the event that a page of the specification, or a portion thereof, or a page of the drawings, or a portion thereof, is inadvertently omitted from an application as filed, the application will be not be considered complete and the applicant will be notified to file the omitted portion.

If drawings are omitted, the applicant will be notified and given a time period to submit the missing drawings. However, adding new drawings after the filing date may affect the application’s effective filing date if they introduce new matter. It’s crucial to include all necessary drawings with the initial application to avoid potential issues.

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

How does the USPTO determine if material is ‘new matter’ in a patent application?

The USPTO determines if material is ‘new matter’ by comparing the content of the application as originally filed with any subsequent amendments or additions. According to MPEP 608.04(a):

In establishing new matter, the examiner must find that the subject matter is unequivocally described in the application as filed.

The process typically involves:

• Reviewing the original specification, claims, and drawings
• Comparing any amendments or new submissions to the original disclosure
• Determining if the new material goes beyond what was explicitly or inherently disclosed
• Considering whether a person skilled in the art would recognize the added material as being inherently present in the original disclosure

If the examiner finds that the added material is not supported by the original disclosure, it will be rejected as new matter under 35 U.S.C. 132(a) and 37 CFR 1.121(f).

To learn more:

• new matter
• USPTO examination
• patent amendments

How does the USPTO define ‘new matter’ in patent applications?

The United States Patent and Trademark Office (USPTO) defines ‘new matter’ as any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. According to MPEP 608.04(a):

“Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.”

This definition is strict and encompasses any additions or modifications that introduce information not explicitly or inherently supported by the original disclosure. New matter can include:

• Additional text in the specification
• New or modified claim elements
• Changes to drawings or the addition of new figures
• Incorporation of external references not properly incorporated on the filing date

It’s important to note that new matter is prohibited under 35 U.S.C. 132(a), which states that “No amendment shall introduce new matter into the disclosure of the invention.”

To learn more:

• new matter
• patent application
• USPTO
• original disclosure

How does the priority date work in a continuation-in-part application?

In a continuation-in-part (CIP) application, the priority date can vary for different parts of the application. According to MPEP 201.08:

“The disclosure presented in the continuation-in-part application may include subject matter in common with the earlier application and may include additional subject matter not disclosed in the earlier application. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the earlier nonprovisional application are entitled to the benefit of the filing date of the earlier nonprovisional application.”

This means:

• Subject matter carried over from the parent application retains the original filing date as its priority date
• New matter added in the CIP has the filing date of the CIP as its priority date
• Each claim in a CIP is evaluated individually to determine its effective filing date
• Claims fully supported by the parent application get the earlier priority date
• Claims relying on new matter get the later CIP filing date as their priority date

Understanding priority dates in CIPs is crucial for determining patentability and for defending against potential prior art references.

For more information on effective filing date, visit: effective filing date.

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

The presence of new matter in a continuation or divisional application can significantly affect its filing date. If new matter is found, the application may lose the benefit of the earlier filing date for the new subject matter.

According to MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

If the application is changed to a continuation-in-part, the new matter will have the filing date of the current application, while the previously disclosed matter retains the earlier filing date. This can have important implications for determining prior art and patent term.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

How does the filing date of new matter in a CIP application affect patent rights?

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The filing date of new matter in a continuation-in-part (CIP) application significantly affects patent rights. According to MPEP 201.08:

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“Matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application. Matter disclosed for the first time in the continuation-in-part application does not receive the benefit of the filing date of the parent application.”

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This means:

n

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• The new matter in a CIP is treated as having the filing date of the CIP application itself.

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• This later filing date can impact the assessment of prior art and the determination of patentability for the new matter.

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• It may affect the patent term for claims based on the new matter.

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• In some cases, it could make the new matter more vulnerable to challenges based on intervening prior art.

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Therefore, inventors and patent attorneys must carefully consider the timing and content of CIP applications to maximize patent protection.

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

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

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

The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:

• Claims that are fully supported by the parent application retain the parent’s filing date.
• Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.

The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application. This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.

For more information on effective filing date, visit: effective filing date.

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

How does new matter in a continuation-in-part application affect priority dates?

The introduction of new matter in a continuation-in-part (CIP) application has significant implications for priority dates. According to MPEP 201.08:

“The new matter in a continuation-in-part application is not entitled to the benefit of the filing date of the parent application.”

This means:

• Subject matter carried over from the parent application retains the parent’s filing date as its priority date
• New matter introduced in the CIP has the filing date of the CIP as its priority date
• Different claims within the same CIP application may have different priority dates

This distinction is crucial for determining prior art and potential patent infringement cases. Inventors and patent practitioners must carefully consider the implications of adding new matter when filing a CIP application.

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

How does new matter in a continuation-in-part affect prior art considerations?

The introduction of new matter in a continuation-in-part (CIP) application significantly affects prior art considerations. According to the MPEP 201.08:

Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application.

This means:

• Claims based on new matter have the filing date of the CIP as their effective filing date.
• Prior art that predates the CIP filing but postdates the parent application can be used against claims based on new matter.
• Claims fully supported by the parent application retain the earlier effective filing date for prior art purposes.

Patent examiners must carefully analyze each claim to determine its effective filing date and apply the appropriate prior art. Applicants should be aware that introducing new matter may expose some claims to a broader range of prior art, potentially affecting patentability.

For more information on effective filing date, visit: effective filing date.

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

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

How does new matter in a continuation-in-part affect patent rights?

New matter introduced in a continuation-in-part (CIP) application can significantly affect patent rights. According to MPEP 201.08, “Matter not disclosed in the parent nonprovisional application is entitled only to the filing date of the continuation-in-part application.”

This means:

• New matter is only entitled to the filing date of the CIP application itself.
• This later filing date can impact the assessment of prior art for the new matter.
• Patent term for claims based on new matter may be calculated from the CIP filing date.
• Different parts of the CIP application may have different priority dates, affecting patentability and enforcement.

It’s crucial for inventors and patent practitioners to carefully consider the implications of adding new matter in a CIP, as it can affect the scope and strength of patent protection.

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

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

The treatment of new matter varies depending on the type of continuing application:

• Continuation and Divisional Applications: Must not contain any new matter. The disclosure must be the same as the prior application.
• Continuation-in-Part (CIP) Applications: Can include new matter not disclosed in the parent application.
• Continued Prosecution Applications (CPAs): Cannot contain new matter.

For continuation and divisional applications, the MPEP states: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.”

For CIPs, the MPEP notes: “A continuation-in-part is an application… repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.”

If new matter is found in a continuation or divisional application, the examiner will require the applicant to delete the benefit claim or change the application to a continuation-in-part. For CPAs, any new matter introduced will be required to be canceled.

It’s important to note that claims in a CIP application that rely on new matter will only be entitled to the filing date of the CIP, not the parent application’s filing date.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on CPA, visit: CPA.

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

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

How does MPEP 608.04(a) define ‘new matter’ in patent applications?

MPEP 608.04(a) defines new matter as any content added to the specification, claims, or drawings after the application filing date that was not present on the original filing date. Specifically, the MPEP states: “Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.” This definition is crucial for patent applicants and examiners to understand what constitutes acceptable additions or amendments to a patent application after it has been filed.

To learn more:

• new matter
• MPEP 608.04(a)
• patent application
• specification
• claims
• drawings

To learn more:

• MPEP 608.04(a)

When an examiner detects new matter in a patent application, they must take specific actions:

1. Object to amendments introducing new matter using 35 U.S.C. 132(a).
2. Use Form Paragraph 7.28 to object to new matter added to the specification.
3. If new matter affects the claims, reject the claims under 35 U.S.C. 112(a).

The MPEP states:

If new matter is added to the claims, or affects the scope of the claims, the claims affected should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, on the ground that it recites elements without support in the original disclosure.

To learn more:

• new matter
• patent examiner
• objection
• rejection
• 35 U.S.C. 132(a)
• 35 U.S.C. 112(a)

To learn more:

• 35 U.S.C. 132(a)
• 35 U.S.C. 112(a)

Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant.

The MPEP ¶ 2.10.01 instructs examiners:

“In bracket 1, provide an example of the matter not disclosed in the prior-filed application.”

This means the examiner must specifically point out the new matter found in the application, allowing the applicant to understand and address the issue.

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

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

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

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

How does a continuation-in-part application affect the priority date?

A continuation-in-part (CIP) application can have different priority dates for different parts of the disclosure. According to MPEP 201.08:

‘The continuation-in-part application may be entitled to the benefit of the filing date of the prior application as to the common subject matter disclosed in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.’

This means:

• Content shared with the parent application retains the earlier priority date.
• New matter added in the CIP has the filing date of the CIP as its priority date.
• Different claims in the CIP may have different priority dates based on their disclosure in the parent or CIP application.

Understanding these priority date implications is crucial for determining patentability and prior art considerations.

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

A continuation-in-part (CIP) application can have a complex effect on patent term. The MPEP 201.08 states:

‘A continuation-in-part application is entitled to the benefit of the filing date of an earlier nonprovisional application as to common subject matter.’

This has several implications for patent term:

• 20-year term: The patent term is generally 20 years from the earliest effective U.S. filing date of the first nonprovisional application in the chain.
• New matter: Claims solely supported by new matter in the CIP do not receive the benefit of the earlier filing date, potentially extending their effective term.
• Priority claims: The ability to claim priority to earlier applications can affect the starting point of the 20-year term.
• Patent term adjustment: Delays in prosecution may lead to patent term adjustments, which can extend the term beyond 20 years.

Applicants should carefully consider the impact on patent term when deciding to file a CIP, especially for rapidly evolving technologies where a longer term might be advantageous.

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

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

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

How does a continuation-in-part (CIP) application affect priority claims?

A continuation-in-part (CIP) application introduces new matter not present in the prior application, which affects priority claims as follows:

• Claims fully supported by the prior application retain the benefit of the earlier filing date.
• Claims relying on new matter only receive the filing date of the CIP application.
• As stated in MPEP 211.01(b): “Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application.”

Examiners must analyze each claim individually to determine its effective filing date. This can result in different claims within the same CIP application having different priority dates.

To learn more:

• Continuation-in-part
• CIP
• Priority claim
• New matter
• Effective filing date

While both continuation and continuation-in-part (CIP) applications are types of continuing applications, they have a key difference in terms of their disclosure. According to the MPEP:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

The main differences are:

• Continuation: Contains the same disclosure as the parent application without any new matter.
• Continuation-in-part (CIP): May include the disclosure from the parent application plus additional new matter.

This distinction is crucial because it affects the priority date for different claims in the application. In a continuation, all claims are entitled to the parent’s filing date. In a CIP, only claims supported by the parent application get the benefit of the earlier filing date; new matter gets the filing date of the CIP.

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

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

Continuation, divisional, and continuation-in-part (CIP) applications are all types of continuing applications, but they have key differences:

• Continuation application: Discloses and claims only subject matter disclosed in the prior application. No new matter is added.
• Divisional application: Results from a restriction requirement in the parent application. Claims an independent and distinct invention carved out of the parent application. No new matter is added.
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application and adds matter not disclosed in the prior application (i.e., new matter is added).

As stated in the MPEP regarding continuation-in-part applications:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

All three types of applications must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) and comply with other requirements set forth in 37 CFR 1.78.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

To correct an improper incorporation by reference in a patent application:

1. File an amendment to include the material that was improperly incorporated.
2. Submit a statement that the amendment contains no new matter.
3. Ensure the correction is made within the time period set by the Office, or no later than the close of prosecution as defined by 37 CFR 1.114(b).

According to 37 CFR 1.57(g): ‘Any insertion of material incorporated by reference into the specification or drawings of an application must be by way of an amendment to the specification or drawings. Such an amendment must be accompanied by a statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter.’

Note that corrections after abandonment require a petition to revive under 37 CFR 1.137, and corrections after patent issuance require a reissue application.

To learn more:

• incorporation by reference
• patent application
• correction
• amendment
• new matter

The process for challenging an examiner’s new matter rejection depends on where the alleged new matter appears:

• For amendments to the specification: If the new matter is confined to amendments in the specification, you can file a petition to review the examiner’s requirement for cancellation.
• For new matter in claims: If the alleged new matter affects the claims, leading to their rejection, the issue becomes appealable and should not be considered on petition.

As stated in MPEP 608.04(c):

“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also.”

This distinction is important because it determines the appropriate procedure for challenging the examiner’s decision.

To learn more:

• new matter
• patent examination
• specification amendments
• claim amendments
• petition
• appeal

Preliminary amendments in continuation applications are subject to specific rules and considerations. The MPEP provides guidance on this topic:

Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

This means that preliminary amendments submitted with the application are treated as part of the original filing. However, there are important requirements and considerations:

1. Compliance with 37 CFR 1.121:
   

   Amendments must be filed in compliance with the requirements of 37 CFR 1.121 (e.g., the amendment must include a complete claim listing whenever a claim is added, canceled, or amended).

2. Possible Requirement for Substitute Specification:
   

   The Office may require a substitute specification for preliminary amendments.

3. Classification and Assignment:
   

   Applications should be classified and assigned to the proper Technology Center (TC) by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment.

4. New Matter Considerations: If the preliminary amendment introduces new matter, it may affect the application’s status as a continuation. The MPEP advises:
   

   Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part.

Applicants should carefully consider the content and timing of preliminary amendments in continuation applications to ensure compliance with USPTO requirements and to maintain the desired relationship with the parent application.

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

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

Yes, replacement drawings can be rejected if they contain new matter. The MPEP 608.02(h) states that when reviewing replacement drawings, examiners should not overlook “such factors as new matter, the necessity for the replacement sheets and consistency with other sheets.”

If an examiner identifies new matter in the replacement drawings, they may decide not to enter the sheets into the application. In such cases, the examiner must provide a complete and explicit reasoning for the denial of entry. The MPEP instructs examiners to:

“Identify any drawing(s) not entered because they contain new matter and explain the correction(s) necessary to obtain entry upon resubmission.”

Applicants should ensure that replacement drawings only contain information that was supported in the original disclosure to avoid rejection based on new matter.

To learn more:

• Replacement Drawings
• New Matter
• Patent Examination
• Drawing Rejection

Yes, in some cases, omitting information from a patent application can be considered new matter. This might seem counterintuitive, but the removal of certain information can change the scope or meaning of the invention in a way that wasn’t supported by the original disclosure.

The MPEP provides an example: New matter includes not only the addition of wholly unsupported subject matter, but may also include […] even the omission of a step from a method. (MPEP 608.04(a))

This concept is particularly important in the context of:

• Changing the scope of the invention
• Altering the nature of the invention
• Removing essential features or steps

Applicants should be cautious when making any changes to their application, including deletions, to ensure they don’t inadvertently introduce new matter by omission. If in doubt, it’s advisable to consult with a patent attorney or agent.

To learn more:

• new matter
• patent application
• omission
• USPTO
• MPEP

No, new matter cannot be introduced into a nonprovisional application through a supplemental oath or declaration. This is explicitly stated in MPEP 603:

37 CFR 1.67(d) contains the provision of former 37 CFR 1.67(b) that no new matter may be introduced into a nonprovisional application after its filing date even if an inventor’s oath or declaration is filed to correct deficiencies or inaccuracies present in the earlier-filed oath or declaration.

This rule is consistent with the general principle in patent law that new matter cannot be added to an application after its filing date. The purpose of a supplemental oath or declaration is to correct deficiencies or inaccuracies in the original filing, not to introduce new subject matter.

To learn more:

• new matter
• supplemental oath
• declaration
• patent application

No, new matter cannot be added to a divisional application. The divisional application must only contain subject matter disclosed in the parent application. The MPEP clearly states:

Thus the disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

Any attempt to add new matter to a divisional application will be rejected under 35 U.S.C. 112(a) as lacking written description support in the parent application.

To learn more:

• divisional application
• new matter
• patent application content

Can new matter be added to a continuation application?

No, new matter cannot be added to a continuation application. A continuation application must disclose and claim only subject matter disclosed in the prior application.

As stated in MPEP 201.07: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.” This means that all claims in a continuation application must find support in the original disclosure of the parent application.

If an applicant wishes to add new matter, they would need to file a continuation-in-part (CIP) application instead, which allows for the addition of new subject matter while still claiming the benefit of the earlier filing date for the previously disclosed material.

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

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

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

To learn more:

• CPA
• New Matter
• Patent Application

No, you cannot petition against a new matter rejection in claims. When new matter affects the claims, leading to their rejection, the issue must be addressed through the appeal process, not by petition.

The MPEP 608.04(c) clearly states:

“But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also.”

This means that even if the new matter appears in both the specification and the claims, the claim-related issues must be addressed through an appeal to the Patent Trial and Appeal Board (PTAB), not through the petition process.

To learn more:

• new matter
• patent claims
• petition
• appeal
• PTAB

Can I add working examples to my patent application after filing?

Adding working examples to a patent application after filing is generally not permitted if they constitute new matter. According to MPEP 608.04:

“An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed. In re Wright, 866 F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989).”

This means that any working examples added after filing must be fully supported by the original disclosure. If the examples contain information not inherently or implicitly present in the original filing, they will be considered new matter and may be rejected.

However, you may be able to add working examples if:

• They only elaborate on principles already described in the original application
• They demonstrate results that are inherent to the invention as originally disclosed
• They do not introduce any new characteristics or properties not previously mentioned

It’s always best to include comprehensive working examples in the initial filing to avoid potential new matter issues later in the prosecution process.

To learn more:

• working examples
• patent application
• new matter
• MPEP 608.04

To learn more:

• MPEP 608.04

When submitting omitted drawings to a patent application, it’s crucial to understand that you cannot add new matter. The MPEP 601.01(f) states:

“If omitted drawing(s) are filed, the application will be given a filing date as of the date of such filing, provided the submitted drawing(s) do not add new matter to the originally filed application.”

This means that the drawings you submit must only illustrate what was already described in the original application’s specification. Adding new features or details not previously disclosed would be considered new matter and could result in the loss of your original filing date or rejection of the added material.

To learn more:

• patent application
• omitted drawings
• new matter
• MPEP 601.01(f)

To learn more:

• MPEP 601.01(f)

No, you cannot add an incorporation by reference statement when submitting a benefit claim after the initial filing of your application. The MPEP clearly states:

When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application unless an incorporation by reference statement specifying of the prior application was presented upon filing of the application.

This rule is based on the principle that no new matter can be added to an application after its filing date, as per 35 U.S.C. 132(a). The MPEP cites the case of Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980) to support this position.

Therefore, if you wish to include an incorporation by reference statement for a prior application, it must be present in the application as originally filed. If it wasn’t included at that time, you cannot add it later when submitting a benefit claim.

To learn more:

• incorporation by reference
• benefit claim
• new matter
• patent application

Can drawings or figures in a patent application introduce new matter?

Yes, drawings or figures can introduce new matter in a patent application. The MPEP 608.04 addresses this issue:

‘In establishing a disclosure, applicant may rely not only on the description and drawing as filed but also on the original claims if their content justifies it.’

This implies that:

• Original drawings are part of the disclosure and can support claims.
• However, new or amended drawings can potentially introduce new matter.
• Changes to drawings that go beyond what was originally disclosed may be rejected as new matter.

For example, adding specific structural details to a figure that weren’t originally disclosed, or introducing new relationships between components, could be considered new matter. Applicants should be cautious when modifying drawings and ensure any changes are fully supported by the original disclosure.

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• drawings
• figures
• new matter
• patent application
• disclosure

Can drawings be amended after the application filing date without introducing new matter?

Amending drawings after the application filing date without introducing new matter is possible, but it requires careful consideration. According to MPEP 608.04(a):

‘An amendment to the drawings, however, which adds a feature not disclosed in the original drawings or specification involves new matter.’

This means that while you can make amendments to drawings, any new features or elements not disclosed in the original application will be considered new matter. Acceptable amendments typically include:

• Correcting minor errors or inconsistencies
• Improving clarity or resolution of existing features
• Adding reference numbers or labels to existing elements

It’s crucial to ensure that any changes to drawings are fully supported by the original disclosure. If significant changes are needed that would introduce new matter, filing a continuation-in-part application may be necessary.

To learn more:

• patent drawings
• amendments
• new matter
• MPEP 608.04(a)

To learn more:

• MPEP 608.04(a)

Can drawings be added to a patent application after the filing date?

According to MPEP 608.04(a), adding drawings to a patent application after the filing date is generally considered new matter. The MPEP states: “Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.” This includes new drawings. However, there are exceptions:

• If the drawings merely depict what was already described in the original written description, they might be allowable.
• Drawings may be accepted if they are clearly supported by the original disclosure and do not introduce new information.

It’s crucial to include all necessary drawings with the initial application to avoid potential new matter issues.

To learn more:

• patent drawings
• new matter
• filing date
• MPEP 608.04(a)

To learn more:

• MPEP 608.04(a)

Can an applicant add examples or expand on the disclosure after filing a patent application?

Generally, applicants are not permitted to add new examples or expand on the disclosure after filing a patent application without risking a new matter rejection. The MPEP 608.04(a) states:

Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is usually new matter.

However, there are some limited circumstances where additions might be allowed:

• Inherent characteristics: Information that is inherently present in the original disclosure may be added.
• Well-known equivalents: Describing well-known equivalents of elements already disclosed might be acceptable.
• Correction of obvious errors: Clear mistakes that would be apparent to one skilled in the art can sometimes be corrected.

It’s important to note that any additions must be carefully scrutinized and should not introduce new concepts or expand the scope of the invention beyond what was originally disclosed. Applicants should strive to include all necessary examples and details in the original filing to avoid potential new matter issues later in the prosecution process.

To learn more:

• patent application amendments
• new matter
• disclosure expansion

Adding drawings to a patent application after the filing date is possible but subject to certain restrictions. The MPEP states: no amendment may introduce new matter into the disclosure of an application after its filing date. However, there are some provisions for adding drawings in specific circumstances:

• For applications filed on or after September 21, 2004, if drawings were inadvertently omitted and the application claims priority to a prior-filed application containing the drawings, the applicant may submit the omitted drawings by amendment under 37 CFR 1.57(b).
• For applications filed before December 18, 2013, applicants may submit drawings and potentially accept a later filing date.
• For applications filed on or after December 18, 2013, drawings can be added without changing the filing date, but they must not introduce new matter.

In all cases, adding drawings after the filing date requires careful consideration to ensure compliance with USPTO rules and avoid introducing new matter.

To learn more:

• patent drawings
• new matter
• USPTO procedure

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.

Yes, adding specific percentages to a broader original disclosure can be considered new matter. The MPEP section 608.04(a) states:

New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method.

For guidance on determining whether such additions constitute new matter, the MPEP refers to MPEP § 2163.05. It’s important for applicants to ensure that any specific percentages added are inherently supported by the original disclosure.

To learn more:

• new matter
• percentages
• original disclosure
• patent application

No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:

‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’

This means:

• The divisional application must be limited to the subject matter disclosed in the parent application
• No new matter can be added to the divisional application
• The claims in the divisional must be supported by the disclosure of the parent application

If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.

To learn more:

• divisional application
• new matter
• continuation-in-part
• CIP
• patent disclosure

Can a continuation-in-part application claim priority to a provisional application?

Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.

Key points to understand:

• Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
• New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
• One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
• Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.

Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.

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

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

A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:

• Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
• New matter introduced in the CIP will have the filing date of the CIP application.
• Each claim in the CIP is evaluated independently for priority date determination.

MPEP 211.05 states:

A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.

This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.

To learn more:

• continuation-in-part
• CIP
• prior application
• filing date benefit
• new matter

No, a continuation application cannot include new matter. As stated in MPEP 201.07:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

This means that the continuation application must be based entirely on the disclosure of the prior-filed application. Any new subject matter would need to be filed as a continuation-in-part (CIP) application instead of a standard continuation application.

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

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

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

Can a continuation application add new matter to the original disclosure?

No, a continuation application cannot add new matter to the original disclosure. This is a fundamental characteristic of continuation applications.

According to MPEP 201.07:

‘A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.’

This means that the continuation must rely entirely on the disclosure of the parent application. Any attempt to introduce new matter would result in the application being treated as a continuation-in-part (CIP) rather than a true continuation. It’s crucial for inventors and patent practitioners to understand this limitation when considering filing strategy.

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

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

No, a best mode defect cannot be cured by a later amendment to the patent application. The MPEP 608.01(h) clearly states: If the best mode contemplated by the inventor at the time of filing the application is not disclosed, such defect cannot be cured by submitting an amendment seeking to put into the specification something required to be there when the application was originally filed.

This guidance is based on the case In re Hay, 534 F.2d 917, 189 USPQ 790 (CCPA 1976). The MPEP further advises: Any proposed amendment of this type should be treated as new matter. This means that the best mode must be disclosed at the time of filing, and attempts to add it later will be rejected as new matter.

To learn more:

• best mode
• patent application
• amendment
• new matter

The treatment of preliminary amendments as new matter depends on when they are filed:

1. Filing date amendments: Preliminary amendments present on the filing date of the application are considered part of the original disclosure and not new matter.
2. Post-filing amendments: Preliminary amendments filed after the application’s filing date are not part of the original disclosure and may be considered new matter.

The MPEP states: A preliminary amendment present on the filing date of the application (e.g., filed along with the filing of the application) is considered a part of the original disclosure. (MPEP 608.04(b))

For applications filed on or after September 21, 2004, the USPTO automatically treats any preliminary amendment under 37 CFR 1.115(a)(1) present on the filing date as part of the original disclosure.

To avoid potential new matter issues, applicants are encouraged to incorporate desired amendments into the text of the specification rather than submitting separate preliminary amendments.

To learn more:

• preliminary amendments
• new matter
• patent application
• filing date

When is a new oath or declaration required for a continuation-in-part application?

For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:

‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’

This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.

To learn more:

• continuation-in-part application
• CIP
• oath
• declaration
• new matter

An applicant can voluntarily submit a substitute specification at any point up to the payment of the issue fee, subject to certain conditions. 37 CFR 1.125(b) states:

Subject to § 1.312, a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter.

It’s important to note that the substitute specification must not introduce new matter and must be accompanied by a statement confirming this fact. Additionally, the claims are excluded from this voluntary submission process.

To learn more:

• substitute specification
• voluntary submission
• patent application
• new matter

If new matter is objected to in a patent application, the applicant must take specific actions to address the objection. According to the MPEP, the examiner will use Form Paragraph 7.28, which states:

Applicant is required to cancel the new matter in the reply to this Office action.

To respond, the applicant should:

1. Review the identified new matter carefully.
2. If the applicant agrees it’s new matter, cancel the objected content in their response.
3. If the applicant disagrees, provide a detailed explanation demonstrating how the original disclosure supports the contested material.
4. Consider amending the application to use language more closely aligned with the original disclosure.

It’s crucial to address all new matter objections promptly to avoid potential rejections under 35 U.S.C. 112(a).

To learn more:

• new matter
• objection
• patent application
• applicant response

What is the significance of the application filing date in patent law?

The application filing date is crucial in patent law for several reasons:

• Priority: It establishes the priority date for the claimed invention, which is used to determine novelty and non-obviousness.
• Disclosure requirement: The specification must fully support the claimed invention as of the filing date.
• New matter prohibition: Any material added after the filing date may be considered new matter and rejected.

As stated in MPEP 608.04(a): Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is usually new matter. This underscores the importance of having a complete and comprehensive disclosure at the time of filing.

To learn more:

• application filing date
• priority date
• new matter
• disclosure requirement

What is the significance of the application filing date for new matter in patent applications?

The application filing date is crucial when determining whether content in a patent application constitutes new matter. MPEP 608.04(a) states:

‘Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.’

This means that any information added to the application after the filing date, which was not present in the original specification, claims, or drawings, is considered new matter. This is important because new matter cannot be added to an application without filing a continuation-in-part application.

The filing date serves as a cutoff point for the content that can be included in the application without being considered new matter. Inventors and patent practitioners must ensure that all necessary information is included in the application on or before the filing date to avoid issues with new matter.

To learn more:

• application filing date
• new matter
• patent applications
• MPEP 608.04(a)

To learn more:

• MPEP 608.04(a)

What is the significance of the ‘original disclosure’ in a divisional application?

The ‘original disclosure’ is crucial in a divisional application because it defines the scope of what can be included in the divisional. According to MPEP 201.06:

‘The disclosure of a divisional application must be the same as the disclosure of the prior-filed application, i.e., the original disclosure of the parent or original nonprovisional application or provisional application.’

This means that no new matter can be added to a divisional application. The divisional must rely entirely on the content disclosed in the original parent application. This ensures that the divisional application doesn’t extend beyond the scope of what was initially invented and disclosed.

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

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

What is the relationship between a continuation-in-part application and its parent application?

A continuation-in-part (CIP) application is a type of patent application that has a unique relationship with its parent application. According to MPEP 201.08:

“A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.”

This means that a CIP application:

• Contains some or all of the subject matter from the parent application
• Introduces new subject matter not present in the parent application
• Must be filed while the parent application is still pending

The relationship between a CIP and its parent is important for determining priority dates and the scope of patent protection.

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

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

When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal.

According to MPEP 608.04(c):

“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition.”

To challenge the examiner’s holding of new matter in the specification:

1. Prepare a detailed petition explaining why the amendment does not introduce new matter.
2. Submit the petition to the USPTO, following the guidelines for petition submission.
3. The petition will be reviewed by the appropriate office, typically the Technology Center Director or their designee.
4. A decision will be issued either granting or denying the petition.

It’s important to note that this process is separate from the appeal process used for claim rejections.

To learn more:

• new matter
• specification amendments
• petition process
• patent examination

New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:

‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’

This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.

To learn more:

• new matter
• benefit claims
• written description requirement
• prior-filed application

A preliminary amendment filed with a continuation or divisional application can have significant effects:

1. If present on the filing date, it is considered part of the original disclosure.
2. It must comply with the requirements of 37 CFR 1.121 for amendments.
3. The Office may require a substitute specification for extensive preliminary amendments.
4. The application will be classified and assigned based on the claims that will be before the examiner after entry of the preliminary amendment.

The MPEP states: Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

However, applicants should be cautious about introducing new matter through a preliminary amendment. The MPEP advises: Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part.

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

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

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

The distinction between petitioning and appealing a new matter rejection is crucial in patent prosecution:

• Petition: Used when new matter is confined to amendments in the specification.
• Appeal: Required when new matter affects the claims, leading to their rejection.

According to MPEP 608.04(c):

“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one…”

This means that even if new matter is introduced in both the specification and claims, the claim-related issues must be addressed through the appeal process, not by petition.

To learn more:

• new matter
• patent examination
• petition
• appeal
• specification amendments
• claim amendments

What is the difference between new matter and new or amended claims in patent applications?

New matter and new or amended claims are distinct concepts in patent law:

• New matter refers to content not present in the original disclosure of the application. As stated in MPEP 608.04: ‘New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure…’
• New or amended claims, on the other hand, are permissible as long as they are supported by the original disclosure. The MPEP clarifies: ‘An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed.’

In essence, while new or amended claims can be added to an application, they must not introduce new matter that wasn’t originally disclosed.

To learn more:

• new matter
• new claims
• amended claims
• patent application
• original disclosure

What is the difference between new matter and inherent disclosure in patent applications?

New matter and inherent disclosure are distinct concepts in patent law:

• New matter refers to information added to a patent application after its filing date that goes beyond the original disclosure. This is generally not allowed and can result in rejection.
• Inherent disclosure refers to information that, while not explicitly stated in the original application, is necessarily present or implied by the content that was disclosed.

According to MPEP 608.04: “New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method.” However, inherent properties or characteristics that are necessarily present in the disclosed invention do not constitute new matter.

It’s important for patent applicants to carefully consider what information is truly inherent to their original disclosure to avoid introducing new matter while still fully describing their invention.

To learn more:

• new matter
• inherent disclosure
• patent application
• MPEP 608.04

To learn more:

• MPEP 608.04

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that claim priority to an earlier filed application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07: “A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.”
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the prior application.

The key difference is that a continuation application does not introduce new subject matter, while a CIP application does.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

A continuation application and a continuation-in-part (CIP) application are both types of patent applications that stem from an earlier application, but they differ in their content:

• Continuation application: Contains the same disclosure as the prior application without adding any new matter. As stated in MPEP 201.07, ‘A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application… The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.’
• Continuation-in-part application: Repeats a substantial portion of the prior application but also adds new matter not disclosed in the parent application.

The key distinction is that a continuation-in-part introduces new subject matter, while a continuation does not.

To learn more:

• continuation application
• continuation-in-part
• CIP
• patent application types
• new matter

What is the definition of a continuation-in-part application?

A continuation-in-part (CIP) application is a type of patent application that includes a portion or all of the disclosure from a prior application and adds new matter not disclosed in the prior application. The MPEP 201.08 states:

‘A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.’

This type of application allows inventors to expand upon their original invention while maintaining the priority date for the portions disclosed in the earlier application.

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

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

When submitting replacement drawings after allowance, the applicant has a crucial responsibility:

It is applicant’s responsibility to see that no new matter is added when submitting replacement drawings after allowance because they will not normally be reviewed by an examiner.

This means that applicants must ensure that any changes made to the drawings do not introduce new subject matter that wasn’t present in the original application. This responsibility is particularly important because examiners typically do not review these late-submitted drawings, placing the onus on the applicant to maintain the integrity of the application’s content.

To learn more:

• replacement drawings
• new matter
• patent allowance
• applicant responsibility

‘New matter’ refers to any subject matter that is added to a patent application after its filing date, which was not present in the original specification, claims, or drawings. The MPEP states: Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter. (MPEP 608.04(a))

New matter can include:

• Addition of wholly unsupported subject matter
• Adding specific percentages or compounds after a broader original disclosure
• Omission of a step from a method

It’s important to note that new matter is not allowed in patent applications, as per 35 U.S.C. 132(a), which states: No amendment shall introduce new matter into the disclosure of the invention.

To learn more:

• new matter
• patent application
• amendments
• specification
• claims
• drawings

A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application.

As stated in the MPEP:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

Key points about CIP applications:

• A CIP application may only be filed under 37 CFR 1.53(b).
• The CIP application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• A CIP application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
• The mere filing of a CIP application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:

1. The examiner will notify the applicant in the next Office action.
2. The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).

According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.

It’s important to note that:

• Continuations and divisionals should not contain new matter relative to the prior application.
• If new matter is present, the application is more appropriately designated as a continuation-in-part.
• The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.

Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.

To learn more:

• new matter
• continuation
• divisional
• continuation-in-part
• CIP
• patent examination

Introducing new matter in a divisional application is not allowed and can have serious consequences. According to MPEP 201.06:

“A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.”

This means that a divisional application must not contain any new matter beyond what was disclosed in the parent application. If new matter is introduced:

• The new matter will not be entitled to the benefit of the parent application’s filing date.
• Claims relying on the new matter may be rejected under 35 U.S.C. 112(a) for lack of written description or enablement.
• The application may lose its status as a proper divisional, potentially affecting its ability to overcome certain types of double patenting rejections.

To avoid these issues:

1. Carefully review the divisional application before filing to ensure it only contains subject matter from the parent application.
2. If new subject matter is necessary, consider filing it as a continuation-in-part (CIP) application instead of a divisional.
3. Consult with a patent attorney or agent to ensure compliance with MPEP guidelines.

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

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

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

When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:

• Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
• Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
• The new matter may affect the application’s ability to overcome prior art references.

As stated in MPEP 211.05:

“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”

This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.

To learn more:

• continuation-in-part application
• new matter
• prior art
• effective filing date
• parent application

If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter.

As stated in MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

This form paragraph is used by examiners when they identify new matter in an application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c).

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

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

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

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

What constitutes inherent characteristics in patent applications?

Inherent characteristics in patent applications refer to properties or features that are necessarily present in the invention but may not be explicitly stated in the original disclosure. MPEP 608.04(a) provides guidance on this:

‘Inherent characteristics of materials and properties of processes are not considered to be new matter.’

This means that certain aspects of an invention that are inherently present, even if not explicitly described, are not considered new matter when later disclosed or claimed. Examples of inherent characteristics might include:

• Physical properties of materials
• Chemical reactions that naturally occur under specified conditions
• Known scientific principles underlying the invention

However, it’s important to note that claiming inherent characteristics requires careful consideration. The written description requirement must still be satisfied, and the inherency must be clearly and unambiguously supported by the original disclosure.

To learn more:

• inherent characteristics
• patent applications
• new matter
• MPEP 608.04(a)

To learn more:

• MPEP 608.04(a)

‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a):

Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.

This can include adding specific percentages, compounds, or even omitting steps from a method that were present in the original disclosure.

To learn more:

• new matter
• patent application
• specification
• claims
• drawings

The MPEP 201.06(c) outlines the requirements for filing a divisional or continuation application without an executed oath or declaration:

’37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing an oath or declaration as required by 37 CFR 1.63, provided that a copy of the executed oath or declaration filed in the prior application is submitted for the continuation or divisional application and the specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application.’

To file without a new oath or declaration:

• Submit a copy of the executed oath or declaration from the prior application
• Ensure the new application contains no new matter
• File a copy of the specification and drawings from the prior application

This procedure allows for expedited filing while maintaining the integrity of the oath or declaration requirements.

To learn more:

• divisional application
• continuation application
• oath
• declaration
• 37 CFR 1.63(d)
• new matter

To learn more:

• 37 CFR 1.63(d)

While both continuation and continuation-in-part (CIP) applications are related to a prior application, there are key differences:

• Continuation: Repeats the entire disclosure of the prior application without adding new matter.
• Continuation-in-Part (CIP): According to MPEP ¶ 2.06, a CIP “repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application.”

The main difference is that a CIP introduces new subject matter not present in the original application. This new matter receives the filing date of the CIP, while the repeated portions may claim the earlier filing date of the prior application if properly claimed under 35 U.S.C. 120.

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

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

Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.

The MPEP ¶ 2.10.01 states:

“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”

If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.

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

For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).

For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).

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

A continuation-in-part (CIP) application has specific filing requirements. Key points include:

• A CIP application can only be filed under 37 CFR 1.53(b).
• It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance).
• The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c).
• For applications filed on or after September 16, 2012, the benefit claim must be in an application data sheet (ADS).
• The CIP must have at least one common inventor with the prior application.
• New matter can be added to the specification, but claims relying on this new matter will not get the benefit of the earlier filing date.

As stated in the MPEP:

A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

It’s important to note that while a CIP allows for the addition of new matter, any claims that rely on this new matter will only be entitled to the filing date of the CIP application, not the earlier filing date of the parent application.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

What are the consequences of adding new matter to a patent application?

Adding new matter to a patent application can have serious consequences:

• Rejection or objection: The USPTO will issue a rejection or objection to the new matter. As stated in MPEP 608.04, ‘If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.’
• Loss of priority date: New matter may result in a later effective filing date for the affected claims.
• Inability to claim benefit: As per the MPEP, ‘New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method.’
• Need for continuation-in-part: To properly include the new matter, a continuation-in-part application may be necessary.

It’s crucial to ensure all subject matter is fully supported by the original disclosure to avoid these issues.

To learn more:

• new matter
• patent application
• rejection
• priority date
• continuation-in-part

To learn more:

• consequences
• filing date

For non-design patent applications filed on or after December 18, 2013, the drawing requirements have been relaxed. The MPEP states: Applications, which are not design applications, filed under 35 U.S.C. 111(a) or (b) on or after December 18, 2013 are entitled to a filing date even if the application does not contain drawings. However, it’s important to note that while drawings are not required for a filing date, they should still be submitted if necessary for understanding the invention, as no amendment may introduce new matter into the disclosure of an application after its filing date.

To learn more:

• patent drawings
• filing date
• USPTO requirements
• new matter

How does the USPTO handle new matter introduced in continuation-in-part applications?

Continuation-in-part (CIP) applications are a special case when it comes to new matter. The MPEP 608.04 states:

‘In the case of a continuation-in-part application, any claim directed to matter which was not described in the parent nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112 is treated as entitled only to the filing date of the continuation-in-part application.’

This means:

• New matter can be introduced in a CIP application.
• Claims based on the new matter will only receive the filing date of the CIP application.
• Claims fully supported by the parent application can retain the earlier filing date.

Examiners will carefully review CIP applications to determine which claims are entitled to which filing dates, affecting prior art considerations and potentially the validity of the claims.

To learn more:

• continuation-in-part
• CIP
• new matter
• filing date
• patent application

How does the USPTO handle new matter in continuation applications?

The United States Patent and Trademark Office (USPTO) treats new matter in continuation applications similarly to how it handles new matter in original applications. According to MPEP 608.04:

“A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation application) to continuation-in-part (CIP) if the application contains subject matter that would have been new matter in the prior-filed application.”

This means that:

• Continuation applications must be based entirely on the disclosure of the parent application
• Any new subject matter introduced in a continuation application will be rejected as new matter
• If new matter is present, the applicant must either remove it or change the application type to a continuation-in-part (CIP)

CIP applications allow for the introduction of new matter, but the new subject matter will only receive the benefit of the CIP filing date, not the earlier parent application date. It’s crucial for applicants to carefully review their continuation applications to ensure they don’t inadvertently introduce new matter, which could jeopardize their priority claim to the parent application.

To learn more:

• continuation applications
• new matter
• USPTO
• MPEP 608.04

To learn more:

• MPEP 608.04

The USPTO treats applications with omitted drawings similarly to those with missing specification pages. According to MPEP 506:

In the event that a page of the specification, or a portion thereof, or a page of the drawings, or a portion thereof, is inadvertently omitted from an application as filed, the application will be not be considered complete and the applicant will be notified to file the omitted portion.

If drawings are omitted, the applicant will be notified and given a time period to submit the missing drawings. However, adding new drawings after the filing date may affect the application’s effective filing date if they introduce new matter. It’s crucial to include all necessary drawings with the initial application to avoid potential issues.

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

How does the USPTO determine if material is ‘new matter’ in a patent application?

The USPTO determines if material is ‘new matter’ by comparing the content of the application as originally filed with any subsequent amendments or additions. According to MPEP 608.04(a):

In establishing new matter, the examiner must find that the subject matter is unequivocally described in the application as filed.

The process typically involves:

• Reviewing the original specification, claims, and drawings
• Comparing any amendments or new submissions to the original disclosure
• Determining if the new material goes beyond what was explicitly or inherently disclosed
• Considering whether a person skilled in the art would recognize the added material as being inherently present in the original disclosure

If the examiner finds that the added material is not supported by the original disclosure, it will be rejected as new matter under 35 U.S.C. 132(a) and 37 CFR 1.121(f).

To learn more:

• new matter
• USPTO examination
• patent amendments

How does the USPTO define ‘new matter’ in patent applications?

The United States Patent and Trademark Office (USPTO) defines ‘new matter’ as any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. According to MPEP 608.04(a):

“Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.”

This definition is strict and encompasses any additions or modifications that introduce information not explicitly or inherently supported by the original disclosure. New matter can include:

• Additional text in the specification
• New or modified claim elements
• Changes to drawings or the addition of new figures
• Incorporation of external references not properly incorporated on the filing date

It’s important to note that new matter is prohibited under 35 U.S.C. 132(a), which states that “No amendment shall introduce new matter into the disclosure of the invention.”

To learn more:

• new matter
• patent application
• USPTO
• original disclosure

How does the priority date work in a continuation-in-part application?

In a continuation-in-part (CIP) application, the priority date can vary for different parts of the application. According to MPEP 201.08:

“The disclosure presented in the continuation-in-part application may include subject matter in common with the earlier application and may include additional subject matter not disclosed in the earlier application. Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the earlier nonprovisional application are entitled to the benefit of the filing date of the earlier nonprovisional application.”

This means:

• Subject matter carried over from the parent application retains the original filing date as its priority date
• New matter added in the CIP has the filing date of the CIP as its priority date
• Each claim in a CIP is evaluated individually to determine its effective filing date
• Claims fully supported by the parent application get the earlier priority date
• Claims relying on new matter get the later CIP filing date as their priority date

Understanding priority dates in CIPs is crucial for determining patentability and for defending against potential prior art references.

For more information on effective filing date, visit: effective filing date.

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

The presence of new matter in a continuation or divisional application can significantly affect its filing date. If new matter is found, the application may lose the benefit of the earlier filing date for the new subject matter.

According to MPEP ¶ 2.10.01:

“Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:”

If the application is changed to a continuation-in-part, the new matter will have the filing date of the current application, while the previously disclosed matter retains the earlier filing date. This can have important implications for determining prior art and patent term.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

How does the filing date of new matter in a CIP application affect patent rights?

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The filing date of new matter in a continuation-in-part (CIP) application significantly affects patent rights. According to MPEP 201.08:

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“Matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application. Matter disclosed for the first time in the continuation-in-part application does not receive the benefit of the filing date of the parent application.”

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This means:

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• The new matter in a CIP is treated as having the filing date of the CIP application itself.

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• This later filing date can impact the assessment of prior art and the determination of patentability for the new matter.

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• It may affect the patent term for claims based on the new matter.

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• In some cases, it could make the new matter more vulnerable to challenges based on intervening prior art.

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Therefore, inventors and patent attorneys must carefully consider the timing and content of CIP applications to maximize patent protection.

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

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

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

The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:

• Claims that are fully supported by the parent application retain the parent’s filing date.
• Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.

The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application. This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.

For more information on effective filing date, visit: effective filing date.

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

How does new matter in a continuation-in-part application affect priority dates?

The introduction of new matter in a continuation-in-part (CIP) application has significant implications for priority dates. According to MPEP 201.08:

“The new matter in a continuation-in-part application is not entitled to the benefit of the filing date of the parent application.”

This means:

• Subject matter carried over from the parent application retains the parent’s filing date as its priority date
• New matter introduced in the CIP has the filing date of the CIP as its priority date
• Different claims within the same CIP application may have different priority dates

This distinction is crucial for determining prior art and potential patent infringement cases. Inventors and patent practitioners must carefully consider the implications of adding new matter when filing a CIP application.

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

How does new matter in a continuation-in-part affect prior art considerations?

The introduction of new matter in a continuation-in-part (CIP) application significantly affects prior art considerations. According to the MPEP 201.08:

Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application.

This means:

• Claims based on new matter have the filing date of the CIP as their effective filing date.
• Prior art that predates the CIP filing but postdates the parent application can be used against claims based on new matter.
• Claims fully supported by the parent application retain the earlier effective filing date for prior art purposes.

Patent examiners must carefully analyze each claim to determine its effective filing date and apply the appropriate prior art. Applicants should be aware that introducing new matter may expose some claims to a broader range of prior art, potentially affecting patentability.

For more information on effective filing date, visit: effective filing date.

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

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

How does new matter in a continuation-in-part affect patent rights?

New matter introduced in a continuation-in-part (CIP) application can significantly affect patent rights. According to MPEP 201.08, “Matter not disclosed in the parent nonprovisional application is entitled only to the filing date of the continuation-in-part application.”

This means:

• New matter is only entitled to the filing date of the CIP application itself.
• This later filing date can impact the assessment of prior art for the new matter.
• Patent term for claims based on new matter may be calculated from the CIP filing date.
• Different parts of the CIP application may have different priority dates, affecting patentability and enforcement.

It’s crucial for inventors and patent practitioners to carefully consider the implications of adding new matter in a CIP, as it can affect the scope and strength of patent protection.

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

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

The treatment of new matter varies depending on the type of continuing application:

• Continuation and Divisional Applications: Must not contain any new matter. The disclosure must be the same as the prior application.
• Continuation-in-Part (CIP) Applications: Can include new matter not disclosed in the parent application.
• Continued Prosecution Applications (CPAs): Cannot contain new matter.

For continuation and divisional applications, the MPEP states: “The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.”

For CIPs, the MPEP notes: “A continuation-in-part is an application… repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.”

If new matter is found in a continuation or divisional application, the examiner will require the applicant to delete the benefit claim or change the application to a continuation-in-part. For CPAs, any new matter introduced will be required to be canceled.

It’s important to note that claims in a CIP application that rely on new matter will only be entitled to the filing date of the CIP, not the parent application’s filing date.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

For more information on CPA, visit: CPA.

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

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

How does MPEP 608.04(a) define ‘new matter’ in patent applications?

MPEP 608.04(a) defines new matter as any content added to the specification, claims, or drawings after the application filing date that was not present on the original filing date. Specifically, the MPEP states: “Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.” This definition is crucial for patent applicants and examiners to understand what constitutes acceptable additions or amendments to a patent application after it has been filed.

To learn more:

• new matter
• MPEP 608.04(a)
• patent application
• specification
• claims
• drawings

To learn more:

• MPEP 608.04(a)

When an examiner detects new matter in a patent application, they must take specific actions:

1. Object to amendments introducing new matter using 35 U.S.C. 132(a).
2. Use Form Paragraph 7.28 to object to new matter added to the specification.
3. If new matter affects the claims, reject the claims under 35 U.S.C. 112(a).

The MPEP states:

If new matter is added to the claims, or affects the scope of the claims, the claims affected should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, on the ground that it recites elements without support in the original disclosure.

To learn more:

• new matter
• patent examiner
• objection
• rejection
• 35 U.S.C. 132(a)
• 35 U.S.C. 112(a)

To learn more:

• 35 U.S.C. 132(a)
• 35 U.S.C. 112(a)

Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant.

The MPEP ¶ 2.10.01 instructs examiners:

“In bracket 1, provide an example of the matter not disclosed in the prior-filed application.”

This means the examiner must specifically point out the new matter found in the application, allowing the applicant to understand and address the issue.

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

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

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

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

How does a continuation-in-part application affect the priority date?

A continuation-in-part (CIP) application can have different priority dates for different parts of the disclosure. According to MPEP 201.08:

‘The continuation-in-part application may be entitled to the benefit of the filing date of the prior application as to the common subject matter disclosed in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.’

This means:

• Content shared with the parent application retains the earlier priority date.
• New matter added in the CIP has the filing date of the CIP as its priority date.
• Different claims in the CIP may have different priority dates based on their disclosure in the parent or CIP application.

Understanding these priority date implications is crucial for determining patentability and prior art considerations.

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

A continuation-in-part (CIP) application can have a complex effect on patent term. The MPEP 201.08 states:

‘A continuation-in-part application is entitled to the benefit of the filing date of an earlier nonprovisional application as to common subject matter.’

This has several implications for patent term:

• 20-year term: The patent term is generally 20 years from the earliest effective U.S. filing date of the first nonprovisional application in the chain.
• New matter: Claims solely supported by new matter in the CIP do not receive the benefit of the earlier filing date, potentially extending their effective term.
• Priority claims: The ability to claim priority to earlier applications can affect the starting point of the 20-year term.
• Patent term adjustment: Delays in prosecution may lead to patent term adjustments, which can extend the term beyond 20 years.

Applicants should carefully consider the impact on patent term when deciding to file a CIP, especially for rapidly evolving technologies where a longer term might be advantageous.

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

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

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

How does a continuation-in-part (CIP) application affect priority claims?

A continuation-in-part (CIP) application introduces new matter not present in the prior application, which affects priority claims as follows:

• Claims fully supported by the prior application retain the benefit of the earlier filing date.
• Claims relying on new matter only receive the filing date of the CIP application.
• As stated in MPEP 211.01(b): “Only the claims of the continuation-in-part application that are disclosed in the manner provided by 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application.”

Examiners must analyze each claim individually to determine its effective filing date. This can result in different claims within the same CIP application having different priority dates.

To learn more:

• Continuation-in-part
• CIP
• Priority claim
• New matter
• Effective filing date

While both continuation and continuation-in-part (CIP) applications are types of continuing applications, they have a key difference in terms of their disclosure. According to the MPEP:

The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.

The main differences are:

• Continuation: Contains the same disclosure as the parent application without any new matter.
• Continuation-in-part (CIP): May include the disclosure from the parent application plus additional new matter.

This distinction is crucial because it affects the priority date for different claims in the application. In a continuation, all claims are entitled to the parent’s filing date. In a CIP, only claims supported by the parent application get the benefit of the earlier filing date; new matter gets the filing date of the CIP.

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

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

Continuation, divisional, and continuation-in-part (CIP) applications are all types of continuing applications, but they have key differences:

• Continuation application: Discloses and claims only subject matter disclosed in the prior application. No new matter is added.
• Divisional application: Results from a restriction requirement in the parent application. Claims an independent and distinct invention carved out of the parent application. No new matter is added.
• Continuation-in-part (CIP) application: Repeats a substantial portion of the prior application and adds matter not disclosed in the prior application (i.e., new matter is added).

As stated in the MPEP regarding continuation-in-part applications:

A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States repeating some substantial portion or all of the prior-filed application and adding matter not disclosed in the prior-filed application.

All three types of applications must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) and comply with other requirements set forth in 37 CFR 1.78.

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

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

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

To correct an improper incorporation by reference in a patent application:

1. File an amendment to include the material that was improperly incorporated.
2. Submit a statement that the amendment contains no new matter.
3. Ensure the correction is made within the time period set by the Office, or no later than the close of prosecution as defined by 37 CFR 1.114(b).

According to 37 CFR 1.57(g): ‘Any insertion of material incorporated by reference into the specification or drawings of an application must be by way of an amendment to the specification or drawings. Such an amendment must be accompanied by a statement that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter.’

Note that corrections after abandonment require a petition to revive under 37 CFR 1.137, and corrections after patent issuance require a reissue application.

To learn more:

• incorporation by reference
• patent application
• correction
• amendment
• new matter