Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 200 - Types and Status of Application; Benefit and Priority (11)
What is the relationship between a divisional application and its parent application?
A divisional application is closely related to its parent application, as it stems from the same invention disclosure. 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:
- The divisional application contains a subset of the subject matter from the parent application.
- It claims an independent or distinct invention from what is claimed in the parent application.
- It cannot introduce new matter beyond what was disclosed in the parent application.
- It can claim the benefit of the parent application’s filing date.
The relationship allows for separate prosecution of different aspects of an invention while maintaining the priority date of the original disclosure.
To learn more:
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.
What is the filing date of a divisional application?
A divisional application is entitled to the filing date of the parent application. According to MPEP 201.06, “A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed as a nonprovisional application that discloses and claims only subject matter disclosed in the prior-filed (parent) application.” This means that the divisional application inherits the filing date of its parent application, provided it meets the necessary requirements.
To learn more:
What is the difference between a parent application and a child application in patent law?
In patent law, the terms ‘parent application’ and ‘child application’ refer to the relationship between related patent applications. According to MPEP 201.02:
“The term parent application is used to refer to the immediate prior application from which a continuing application claims priority.”
“A child application is an application that claims the benefit of an earlier filing date from a parent application.”
Key differences:
- Parent application: The original or earlier-filed application
- Child application: A subsequent application that claims priority from the parent
- Child applications can be continuations, divisionals, or continuations-in-part
- The parent-child relationship establishes a priority claim under 35 U.S.C. 120
Understanding this relationship is crucial for determining priority dates and the scope of patent protection in related applications.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on parent application, visit: parent application.
For more information on patent application types, visit: patent application types.
What happens to the parent application when a divisional application is filed?
When a divisional application is filed, the parent application continues to be prosecuted independently. The filing of a divisional application does not automatically affect the status or prosecution of the parent application.
As stated in MPEP 201.06: “The divisional application may be filed either while the original application is still pending or after it has been patented.” This means that:
- If the parent application is pending, it remains pending and continues through the examination process.
- If the parent application has already been granted as a patent, it remains a valid patent.
It’s important to note that while the divisional application is independent, it must contain claims to a different invention than the parent application. The examiner will ensure that there is no double patenting between the parent and divisional applications.
Additionally, if the divisional application is filed in response to a restriction requirement in the parent application, the applicant should consider canceling the claims in the parent application that are now being pursued in the divisional to avoid potential issues with duplicate claims.
For more information on Divisional application, visit: Divisional application.
For more information on parent application, visit: parent application.
For more information on patent prosecution, visit: patent prosecution.
Terminal disclaimers filed in a parent application do not automatically carry over to a divisional application. The MPEP 201.06 states:
‘A terminal disclaimer filed to obviate a nonstatutory double patenting rejection in a parent application does not carry over to a divisional application. The applicant filing the divisional application must determine whether a new terminal disclaimer needs to be filed in the divisional application.’
This means:
- Terminal disclaimers from the parent application are not automatically applied to the divisional
- The applicant must assess whether a new terminal disclaimer is necessary for the divisional application
- If required, a new terminal disclaimer must be filed specifically for the divisional application
It’s important for applicants to review potential double patenting issues in the divisional application and file new terminal disclaimers if needed to overcome any rejections.
To learn more:
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:
The inventorship in a Continued Prosecution Application (CPA) is directly related to the parent application. As stated in MPEP 201.06(d):
‘The inventorship in a CPA filed under 37 CFR 1.53(d) is the same as in the prior application.’
This means that when you file a CPA, you are essentially continuing the same application with the same inventors. However, it’s important to note that if there are any changes to inventorship required, they must be made through the appropriate procedures, such as filing a request under 37 CFR 1.48. Any such changes should be made promptly to ensure the accuracy of the patent application.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on inventorship, visit: inventorship.
For more information on parent application, visit: parent application.
Filing a continuation-in-part (CIP) application does not automatically resolve or affect outstanding rejections in the parent application. The MPEP 201.08 clarifies this point:
“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.”
This means:
- Outstanding rejections in the parent application remain active and must be addressed separately.
- The applicant is not presumed to agree with or accept these rejections by filing a CIP.
- The CIP application will be examined independently, though it may face similar rejections if it includes the same claimed subject matter.
Applicants should continue to respond to office actions and address rejections in the parent application if they wish to pursue those claims, even after filing a CIP.
For more information on parent application, visit: parent application.
For more information on patent examination, visit: patent examination.
Can I file a divisional-continuation application after my parent application has been patented?
No, you cannot file a divisional-continuation application after your parent application has been patented. According to MPEP 201.06(c):
“The divisional application must be filed before the patenting or abandonment of or termination of proceedings on the prior application.”
This means that the window for filing a divisional-continuation application closes when the parent application is either:
- Granted a patent
- Abandoned
- Proceedings are terminated
If you wish to pursue additional claims or inventions after your patent has been granted, you may need to consider other options, such as filing a reissue application or a new continuation-in-part application, depending on the specific circumstances and the nature of the new subject matter.
For more information on parent application, visit: parent application.
For more information on patent grant, visit: patent grant.
Can an inventor’s oath or declaration from a parent application be used in a divisional application?
Yes, an inventor’s oath or declaration from a parent application can often be used in a divisional application. According to MPEP 201.06(c):
‘In accordance with 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the divisional application claims are directed to subject matter disclosed in the prior-filed application; (2) a copy of the inventor’s oath or declaration from the prior-filed application is provided for the divisional application; and (3) the prior-filed application contains a statement by the applicant that any required oath or declaration, including any substitute statement under 37 CFR 1.64 or assignment-statement under pre-AIA 37 CFR 1.63(e), has been filed.’
This provision simplifies the filing process for divisional applications by allowing the reuse of the original oath or declaration, provided certain conditions are met. However, it’s important to ensure that all inventors named in the divisional application are covered by the oath or declaration from the parent application.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on parent application, visit: parent application.
MPEP 200 - Types and Status of Application; Benefit and Priority Claims (1)
Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.
Key points to note:
1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.
2. Filing a continuation or CIP does not automatically abandon the parent application.
3. Prosecution can continue in both the parent and child applications simultaneously.
The MPEP states: “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.”
However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.
MPEP 201 - Types of Applications (8)
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.
Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.
Key points to note:
1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.
2. Filing a continuation or CIP does not automatically abandon the parent application.
3. Prosecution can continue in both the parent and child applications simultaneously.
The MPEP states: “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.”
However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.
What is the difference between a parent application and a child application in patent law?
In patent law, the terms ‘parent application’ and ‘child application’ refer to the relationship between related patent applications. According to MPEP 201.02:
“The term parent application is used to refer to the immediate prior application from which a continuing application claims priority.”
“A child application is an application that claims the benefit of an earlier filing date from a parent application.”
Key differences:
- Parent application: The original or earlier-filed application
- Child application: A subsequent application that claims priority from the parent
- Child applications can be continuations, divisionals, or continuations-in-part
- The parent-child relationship establishes a priority claim under 35 U.S.C. 120
Understanding this relationship is crucial for determining priority dates and the scope of patent protection in related applications.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on parent application, visit: parent application.
For more information on patent application types, visit: patent application types.
What happens to the parent application when a divisional application is filed?
When a divisional application is filed, the parent application continues to be prosecuted independently. The filing of a divisional application does not automatically affect the status or prosecution of the parent application.
As stated in MPEP 201.06: “The divisional application may be filed either while the original application is still pending or after it has been patented.” This means that:
- If the parent application is pending, it remains pending and continues through the examination process.
- If the parent application has already been granted as a patent, it remains a valid patent.
It’s important to note that while the divisional application is independent, it must contain claims to a different invention than the parent application. The examiner will ensure that there is no double patenting between the parent and divisional applications.
Additionally, if the divisional application is filed in response to a restriction requirement in the parent application, the applicant should consider canceling the claims in the parent application that are now being pursued in the divisional to avoid potential issues with duplicate claims.
For more information on Divisional application, visit: Divisional application.
For more information on parent application, visit: parent application.
For more information on patent prosecution, visit: patent prosecution.
The inventorship in a Continued Prosecution Application (CPA) is directly related to the parent application. As stated in MPEP 201.06(d):
‘The inventorship in a CPA filed under 37 CFR 1.53(d) is the same as in the prior application.’
This means that when you file a CPA, you are essentially continuing the same application with the same inventors. However, it’s important to note that if there are any changes to inventorship required, they must be made through the appropriate procedures, such as filing a request under 37 CFR 1.48. Any such changes should be made promptly to ensure the accuracy of the patent application.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on inventorship, visit: inventorship.
For more information on parent application, visit: parent application.
Filing a continuation-in-part (CIP) application does not automatically resolve or affect outstanding rejections in the parent application. The MPEP 201.08 clarifies this point:
“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.”
This means:
- Outstanding rejections in the parent application remain active and must be addressed separately.
- The applicant is not presumed to agree with or accept these rejections by filing a CIP.
- The CIP application will be examined independently, though it may face similar rejections if it includes the same claimed subject matter.
Applicants should continue to respond to office actions and address rejections in the parent application if they wish to pursue those claims, even after filing a CIP.
For more information on parent application, visit: parent application.
For more information on patent examination, visit: patent examination.
Can I file a divisional-continuation application after my parent application has been patented?
No, you cannot file a divisional-continuation application after your parent application has been patented. According to MPEP 201.06(c):
“The divisional application must be filed before the patenting or abandonment of or termination of proceedings on the prior application.”
This means that the window for filing a divisional-continuation application closes when the parent application is either:
- Granted a patent
- Abandoned
- Proceedings are terminated
If you wish to pursue additional claims or inventions after your patent has been granted, you may need to consider other options, such as filing a reissue application or a new continuation-in-part application, depending on the specific circumstances and the nature of the new subject matter.
For more information on parent application, visit: parent application.
For more information on patent grant, visit: patent grant.
Can an inventor’s oath or declaration from a parent application be used in a divisional application?
Yes, an inventor’s oath or declaration from a parent application can often be used in a divisional application. According to MPEP 201.06(c):
‘In accordance with 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the divisional application claims are directed to subject matter disclosed in the prior-filed application; (2) a copy of the inventor’s oath or declaration from the prior-filed application is provided for the divisional application; and (3) the prior-filed application contains a statement by the applicant that any required oath or declaration, including any substitute statement under 37 CFR 1.64 or assignment-statement under pre-AIA 37 CFR 1.63(e), has been filed.’
This provision simplifies the filing process for divisional applications by allowing the reuse of the original oath or declaration, provided certain conditions are met. However, it’s important to ensure that all inventors named in the divisional application are covered by the oath or declaration from the parent application.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on parent application, visit: parent application.
Patent Law (13)
What is the relationship between a divisional application and its parent application?
A divisional application is closely related to its parent application, as it stems from the same invention disclosure. 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:
- The divisional application contains a subset of the subject matter from the parent application.
- It claims an independent or distinct invention from what is claimed in the parent application.
- It cannot introduce new matter beyond what was disclosed in the parent application.
- It can claim the benefit of the parent application’s filing date.
The relationship allows for separate prosecution of different aspects of an invention while maintaining the priority date of the original disclosure.
To learn more:
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.
What is the filing date of a divisional application?
A divisional application is entitled to the filing date of the parent application. According to MPEP 201.06, “A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed as a nonprovisional application that discloses and claims only subject matter disclosed in the prior-filed (parent) application.” This means that the divisional application inherits the filing date of its parent application, provided it meets the necessary requirements.
To learn more:
Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.
Key points to note:
1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.
2. Filing a continuation or CIP does not automatically abandon the parent application.
3. Prosecution can continue in both the parent and child applications simultaneously.
The MPEP states: “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.”
However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.
What is the difference between a parent application and a child application in patent law?
In patent law, the terms ‘parent application’ and ‘child application’ refer to the relationship between related patent applications. According to MPEP 201.02:
“The term parent application is used to refer to the immediate prior application from which a continuing application claims priority.”
“A child application is an application that claims the benefit of an earlier filing date from a parent application.”
Key differences:
- Parent application: The original or earlier-filed application
- Child application: A subsequent application that claims priority from the parent
- Child applications can be continuations, divisionals, or continuations-in-part
- The parent-child relationship establishes a priority claim under 35 U.S.C. 120
Understanding this relationship is crucial for determining priority dates and the scope of patent protection in related applications.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on parent application, visit: parent application.
For more information on patent application types, visit: patent application types.
What happens to the parent application when a divisional application is filed?
When a divisional application is filed, the parent application continues to be prosecuted independently. The filing of a divisional application does not automatically affect the status or prosecution of the parent application.
As stated in MPEP 201.06: “The divisional application may be filed either while the original application is still pending or after it has been patented.” This means that:
- If the parent application is pending, it remains pending and continues through the examination process.
- If the parent application has already been granted as a patent, it remains a valid patent.
It’s important to note that while the divisional application is independent, it must contain claims to a different invention than the parent application. The examiner will ensure that there is no double patenting between the parent and divisional applications.
Additionally, if the divisional application is filed in response to a restriction requirement in the parent application, the applicant should consider canceling the claims in the parent application that are now being pursued in the divisional to avoid potential issues with duplicate claims.
For more information on Divisional application, visit: Divisional application.
For more information on parent application, visit: parent application.
For more information on patent prosecution, visit: patent prosecution.
Terminal disclaimers filed in a parent application do not automatically carry over to a divisional application. The MPEP 201.06 states:
‘A terminal disclaimer filed to obviate a nonstatutory double patenting rejection in a parent application does not carry over to a divisional application. The applicant filing the divisional application must determine whether a new terminal disclaimer needs to be filed in the divisional application.’
This means:
- Terminal disclaimers from the parent application are not automatically applied to the divisional
- The applicant must assess whether a new terminal disclaimer is necessary for the divisional application
- If required, a new terminal disclaimer must be filed specifically for the divisional application
It’s important for applicants to review potential double patenting issues in the divisional application and file new terminal disclaimers if needed to overcome any rejections.
To learn more:
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:
The inventorship in a Continued Prosecution Application (CPA) is directly related to the parent application. As stated in MPEP 201.06(d):
‘The inventorship in a CPA filed under 37 CFR 1.53(d) is the same as in the prior application.’
This means that when you file a CPA, you are essentially continuing the same application with the same inventors. However, it’s important to note that if there are any changes to inventorship required, they must be made through the appropriate procedures, such as filing a request under 37 CFR 1.48. Any such changes should be made promptly to ensure the accuracy of the patent application.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on inventorship, visit: inventorship.
For more information on parent application, visit: parent application.
Filing a continuation-in-part (CIP) application does not automatically resolve or affect outstanding rejections in the parent application. The MPEP 201.08 clarifies this point:
“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.”
This means:
- Outstanding rejections in the parent application remain active and must be addressed separately.
- The applicant is not presumed to agree with or accept these rejections by filing a CIP.
- The CIP application will be examined independently, though it may face similar rejections if it includes the same claimed subject matter.
Applicants should continue to respond to office actions and address rejections in the parent application if they wish to pursue those claims, even after filing a CIP.
For more information on parent application, visit: parent application.
For more information on patent examination, visit: patent examination.
Generally, it is not necessary to resubmit prior art cited by the examiner in a parent application when filing a continuing application that claims benefit under 35 U.S.C. 120. The MPEP states:
“The examiner of the continuing application will consider information which has been considered by the Office in the parent application.”
However, if you want the information to be printed on the patent issuing from the continuing application, you should resubmit it. For international applications that designated the U.S., you must submit an information disclosure statement in the continuing application to ensure the examiner considers the documents cited in the international search report and/or international preliminary examination report.
To learn more:
Can I file a divisional-continuation application after my parent application has been patented?
No, you cannot file a divisional-continuation application after your parent application has been patented. According to MPEP 201.06(c):
“The divisional application must be filed before the patenting or abandonment of or termination of proceedings on the prior application.”
This means that the window for filing a divisional-continuation application closes when the parent application is either:
- Granted a patent
- Abandoned
- Proceedings are terminated
If you wish to pursue additional claims or inventions after your patent has been granted, you may need to consider other options, such as filing a reissue application or a new continuation-in-part application, depending on the specific circumstances and the nature of the new subject matter.
For more information on parent application, visit: parent application.
For more information on patent grant, visit: patent grant.
Can an inventor’s oath or declaration from a parent application be used in a divisional application?
Yes, an inventor’s oath or declaration from a parent application can often be used in a divisional application. According to MPEP 201.06(c):
‘In accordance with 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the divisional application claims are directed to subject matter disclosed in the prior-filed application; (2) a copy of the inventor’s oath or declaration from the prior-filed application is provided for the divisional application; and (3) the prior-filed application contains a statement by the applicant that any required oath or declaration, including any substitute statement under 37 CFR 1.64 or assignment-statement under pre-AIA 37 CFR 1.63(e), has been filed.’
This provision simplifies the filing process for divisional applications by allowing the reuse of the original oath or declaration, provided certain conditions are met. However, it’s important to ensure that all inventors named in the divisional application are covered by the oath or declaration from the parent application.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on parent application, visit: parent application.
Patent Procedure (13)
What is the relationship between a divisional application and its parent application?
A divisional application is closely related to its parent application, as it stems from the same invention disclosure. 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:
- The divisional application contains a subset of the subject matter from the parent application.
- It claims an independent or distinct invention from what is claimed in the parent application.
- It cannot introduce new matter beyond what was disclosed in the parent application.
- It can claim the benefit of the parent application’s filing date.
The relationship allows for separate prosecution of different aspects of an invention while maintaining the priority date of the original disclosure.
To learn more:
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.
What is the filing date of a divisional application?
A divisional application is entitled to the filing date of the parent application. According to MPEP 201.06, “A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed as a nonprovisional application that discloses and claims only subject matter disclosed in the prior-filed (parent) application.” This means that the divisional application inherits the filing date of its parent application, provided it meets the necessary requirements.
To learn more:
Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.
Key points to note:
1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.
2. Filing a continuation or CIP does not automatically abandon the parent application.
3. Prosecution can continue in both the parent and child applications simultaneously.
The MPEP states: “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.”
However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.
What is the difference between a parent application and a child application in patent law?
In patent law, the terms ‘parent application’ and ‘child application’ refer to the relationship between related patent applications. According to MPEP 201.02:
“The term parent application is used to refer to the immediate prior application from which a continuing application claims priority.”
“A child application is an application that claims the benefit of an earlier filing date from a parent application.”
Key differences:
- Parent application: The original or earlier-filed application
- Child application: A subsequent application that claims priority from the parent
- Child applications can be continuations, divisionals, or continuations-in-part
- The parent-child relationship establishes a priority claim under 35 U.S.C. 120
Understanding this relationship is crucial for determining priority dates and the scope of patent protection in related applications.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on parent application, visit: parent application.
For more information on patent application types, visit: patent application types.
What happens to the parent application when a divisional application is filed?
When a divisional application is filed, the parent application continues to be prosecuted independently. The filing of a divisional application does not automatically affect the status or prosecution of the parent application.
As stated in MPEP 201.06: “The divisional application may be filed either while the original application is still pending or after it has been patented.” This means that:
- If the parent application is pending, it remains pending and continues through the examination process.
- If the parent application has already been granted as a patent, it remains a valid patent.
It’s important to note that while the divisional application is independent, it must contain claims to a different invention than the parent application. The examiner will ensure that there is no double patenting between the parent and divisional applications.
Additionally, if the divisional application is filed in response to a restriction requirement in the parent application, the applicant should consider canceling the claims in the parent application that are now being pursued in the divisional to avoid potential issues with duplicate claims.
For more information on Divisional application, visit: Divisional application.
For more information on parent application, visit: parent application.
For more information on patent prosecution, visit: patent prosecution.
Terminal disclaimers filed in a parent application do not automatically carry over to a divisional application. The MPEP 201.06 states:
‘A terminal disclaimer filed to obviate a nonstatutory double patenting rejection in a parent application does not carry over to a divisional application. The applicant filing the divisional application must determine whether a new terminal disclaimer needs to be filed in the divisional application.’
This means:
- Terminal disclaimers from the parent application are not automatically applied to the divisional
- The applicant must assess whether a new terminal disclaimer is necessary for the divisional application
- If required, a new terminal disclaimer must be filed specifically for the divisional application
It’s important for applicants to review potential double patenting issues in the divisional application and file new terminal disclaimers if needed to overcome any rejections.
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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.
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The inventorship in a Continued Prosecution Application (CPA) is directly related to the parent application. As stated in MPEP 201.06(d):
‘The inventorship in a CPA filed under 37 CFR 1.53(d) is the same as in the prior application.’
This means that when you file a CPA, you are essentially continuing the same application with the same inventors. However, it’s important to note that if there are any changes to inventorship required, they must be made through the appropriate procedures, such as filing a request under 37 CFR 1.48. Any such changes should be made promptly to ensure the accuracy of the patent application.
For more information on continued prosecution application, visit: continued prosecution application.
For more information on CPA, visit: CPA.
For more information on inventorship, visit: inventorship.
For more information on parent application, visit: parent application.
Filing a continuation-in-part (CIP) application does not automatically resolve or affect outstanding rejections in the parent application. The MPEP 201.08 clarifies this point:
“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.”
This means:
- Outstanding rejections in the parent application remain active and must be addressed separately.
- The applicant is not presumed to agree with or accept these rejections by filing a CIP.
- The CIP application will be examined independently, though it may face similar rejections if it includes the same claimed subject matter.
Applicants should continue to respond to office actions and address rejections in the parent application if they wish to pursue those claims, even after filing a CIP.
For more information on parent application, visit: parent application.
For more information on patent examination, visit: patent examination.
Generally, it is not necessary to resubmit prior art cited by the examiner in a parent application when filing a continuing application that claims benefit under 35 U.S.C. 120. The MPEP states:
“The examiner of the continuing application will consider information which has been considered by the Office in the parent application.”
However, if you want the information to be printed on the patent issuing from the continuing application, you should resubmit it. For international applications that designated the U.S., you must submit an information disclosure statement in the continuing application to ensure the examiner considers the documents cited in the international search report and/or international preliminary examination report.
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Can I file a divisional-continuation application after my parent application has been patented?
No, you cannot file a divisional-continuation application after your parent application has been patented. According to MPEP 201.06(c):
“The divisional application must be filed before the patenting or abandonment of or termination of proceedings on the prior application.”
This means that the window for filing a divisional-continuation application closes when the parent application is either:
- Granted a patent
- Abandoned
- Proceedings are terminated
If you wish to pursue additional claims or inventions after your patent has been granted, you may need to consider other options, such as filing a reissue application or a new continuation-in-part application, depending on the specific circumstances and the nature of the new subject matter.
For more information on parent application, visit: parent application.
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Can an inventor’s oath or declaration from a parent application be used in a divisional application?
Yes, an inventor’s oath or declaration from a parent application can often be used in a divisional application. According to MPEP 201.06(c):
‘In accordance with 37 CFR 1.63(d), a newly executed oath or declaration is not required in a divisional application filed under 37 CFR 1.53(b) if: (1) the divisional application claims are directed to subject matter disclosed in the prior-filed application; (2) a copy of the inventor’s oath or declaration from the prior-filed application is provided for the divisional application; and (3) the prior-filed application contains a statement by the applicant that any required oath or declaration, including any substitute statement under 37 CFR 1.64 or assignment-statement under pre-AIA 37 CFR 1.63(e), has been filed.’
This provision simplifies the filing process for divisional applications by allowing the reuse of the original oath or declaration, provided certain conditions are met. However, it’s important to ensure that all inventors named in the divisional application are covered by the oath or declaration from the parent application.
For more information on declaration, visit: declaration.
For more information on Divisional application, visit: Divisional application.
For more information on inventor’s oath, visit: inventor’s oath.
For more information on parent application, visit: parent application.