Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority (1)
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.
MPEP 201 – Types of Applications (1)
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.
MPEP 2100 – Patentability (2)
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
To learn more:
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
MPEP 2163.04 – Burden On The Examiner With Regard To The Written Description Requirement (1)
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
MPEP 2163.07 – Amendments To Application Which Are Supported In The Original Description (1)
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
To learn more:
Patent Law (5)
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.
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:
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
To learn more:
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
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:
Patent Procedure (5)
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.
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:
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
To learn more:
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
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: