Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
'MPEP 306-Assignment of Division (1)
The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:
If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.
In essence:
- For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
- For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.
This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.
and Continuation-in-Part in Relation to Parent Application' (1)
The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:
If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.
In essence:
- For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
- For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.
This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.
MPEP 200 - Types and Status of Application; Benefit and Priority (1)
Filing a continuation-in-part (CIP) application has several benefits and potential drawbacks:
Benefits:
- Allows addition of new subject matter to an existing invention
- Maintains the priority date of the original application for common subject matter
- Provides an opportunity to strengthen the patent application with new data or improvements
- Allows for changes in inventorship to reflect new contributions
Drawbacks:
- New subject matter only gets the filing date of the CIP, potentially exposing it to more prior art
- Can complicate the patent term calculation
- May result in multiple patents with overlapping subject matter, requiring terminal disclaimers
- Increases overall costs due to additional filing and prosecution fees
The MPEP notes: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”
Inventors and patent attorneys should carefully consider these factors when deciding whether to file a CIP or a new application.
For more information on new subject matter, visit: new subject matter.
For more information on patent strategy, visit: patent strategy.
MPEP 201 - Types of Applications (1)
Filing a continuation-in-part (CIP) application has several benefits and potential drawbacks:
Benefits:
- Allows addition of new subject matter to an existing invention
- Maintains the priority date of the original application for common subject matter
- Provides an opportunity to strengthen the patent application with new data or improvements
- Allows for changes in inventorship to reflect new contributions
Drawbacks:
- New subject matter only gets the filing date of the CIP, potentially exposing it to more prior art
- Can complicate the patent term calculation
- May result in multiple patents with overlapping subject matter, requiring terminal disclaimers
- Increases overall costs due to additional filing and prosecution fees
The MPEP notes: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”
Inventors and patent attorneys should carefully consider these factors when deciding whether to file a CIP or a new application.
For more information on new subject matter, visit: new subject matter.
For more information on patent strategy, visit: patent strategy.
MPEP 300 - Ownership and Assignment (3)
New assignment paperwork is required in the following scenario:
- The application claiming benefit of a provisional application includes subject matter that is not common with the provisional application, and
- The application was filed before September 16, 2012, or the assignee is not the original applicant in the later application.
MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.
This requirement is similar to the practice for continuations-in-part filed under 35 U.S.C. 120.
To learn more:
The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:
If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.
In essence:
- For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
- For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.
This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.
The assignment process for continuation-in-part (CIP) applications claiming benefit of a provisional application differs from standard continuations or divisions:
- If the CIP includes new subject matter not in the provisional application, new assignment papers are typically required.
- This requirement is similar to the practice for CIPs filed under 35 U.S.C. 120.
- An exception exists for applications filed on or after September 16, 2012, where the assignee is the original applicant in the CIP.
MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.
This approach ensures that the assignment covers all subject matter in the CIP, including new material not present in the provisional application.
To learn more:
Patent Law (4)
New assignment paperwork is required in the following scenario:
- The application claiming benefit of a provisional application includes subject matter that is not common with the provisional application, and
- The application was filed before September 16, 2012, or the assignee is not the original applicant in the later application.
MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.
This requirement is similar to the practice for continuations-in-part filed under 35 U.S.C. 120.
To learn more:
Filing a continuation-in-part (CIP) application has several benefits and potential drawbacks:
Benefits:
- Allows addition of new subject matter to an existing invention
- Maintains the priority date of the original application for common subject matter
- Provides an opportunity to strengthen the patent application with new data or improvements
- Allows for changes in inventorship to reflect new contributions
Drawbacks:
- New subject matter only gets the filing date of the CIP, potentially exposing it to more prior art
- Can complicate the patent term calculation
- May result in multiple patents with overlapping subject matter, requiring terminal disclaimers
- Increases overall costs due to additional filing and prosecution fees
The MPEP notes: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”
Inventors and patent attorneys should carefully consider these factors when deciding whether to file a CIP or a new application.
For more information on new subject matter, visit: new subject matter.
For more information on patent strategy, visit: patent strategy.
The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:
If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.
In essence:
- For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
- For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.
This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.
The assignment process for continuation-in-part (CIP) applications claiming benefit of a provisional application differs from standard continuations or divisions:
- If the CIP includes new subject matter not in the provisional application, new assignment papers are typically required.
- This requirement is similar to the practice for CIPs filed under 35 U.S.C. 120.
- An exception exists for applications filed on or after September 16, 2012, where the assignee is the original applicant in the CIP.
MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.
This approach ensures that the assignment covers all subject matter in the CIP, including new material not present in the provisional application.
To learn more:
Patent Procedure (4)
New assignment paperwork is required in the following scenario:
- The application claiming benefit of a provisional application includes subject matter that is not common with the provisional application, and
- The application was filed before September 16, 2012, or the assignee is not the original applicant in the later application.
MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein.
This requirement is similar to the practice for continuations-in-part filed under 35 U.S.C. 120.
To learn more:
Filing a continuation-in-part (CIP) application has several benefits and potential drawbacks:
Benefits:
- Allows addition of new subject matter to an existing invention
- Maintains the priority date of the original application for common subject matter
- Provides an opportunity to strengthen the patent application with new data or improvements
- Allows for changes in inventorship to reflect new contributions
Drawbacks:
- New subject matter only gets the filing date of the CIP, potentially exposing it to more prior art
- Can complicate the patent term calculation
- May result in multiple patents with overlapping subject matter, requiring terminal disclaimers
- Increases overall costs due to additional filing and prosecution fees
The MPEP notes: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”
Inventors and patent attorneys should carefully consider these factors when deciding whether to file a CIP or a new application.
For more information on new subject matter, visit: new subject matter.
For more information on patent strategy, visit: patent strategy.
The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains:
If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.
In essence:
- For continuations and divisions that contain only subject matter from the parent application, the original assignment usually remains effective.
- For CIPs or applications with new subject matter not in the parent or provisional application, new assignment papers are typically required, with the exception noted for applications filed on or after September 16, 2012, where the assignee is the original applicant.
This difference reflects the unique nature of CIPs, which introduce new matter not present in the parent application.
The assignment process for continuation-in-part (CIP) applications claiming benefit of a provisional application differs from standard continuations or divisions:
- If the CIP includes new subject matter not in the provisional application, new assignment papers are typically required.
- This requirement is similar to the practice for CIPs filed under 35 U.S.C. 120.
- An exception exists for applications filed on or after September 16, 2012, where the assignee is the original applicant in the CIP.
MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.
This approach ensures that the assignment covers all subject matter in the CIP, including new material not present in the provisional application.
To learn more: