Patent Law FAQ

When filing a Continued Prosecution Application (CPA), amendments and information disclosure statements (IDS) from the prior application are handled as follows:

• Amendments: 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.” Applicants are encouraged to file any preliminary amendments at the time of filing the CPA.
• Information Disclosure Statements: According to the MPEP, “All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner.” No specific request for consideration is required.

It’s important to note that amendments or IDSs filed after the CPA filing date could delay prosecution. The MPEP advises, “Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.”

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

37 CFR 1.62, which covered the File Wrapper Continuing Procedure, was deleted effective December 1, 1997. This change was announced in the Official Gazette 1203, published on October 21, 1997.

The MPEP states: 37 CFR 1.62 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. This means that applications filed under this procedure after its deletion date would be treated differently.

To learn more:

• File Wrapper Continuing Procedure
• 37 CFR 1.62
• Patent Application Procedures

To learn more:

• 37 CFR 1.62

37 CFR 1.62, which covered the File Wrapper Continuing Procedure, was deleted effective December 1, 1997. This change was announced in the Official Gazette: “See 1203 O.G. 63, October 21, 1997.” This deletion significantly impacted how certain continuation, divisional, and continuation-in-part applications were processed.

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

When filing a Continued Prosecution Application (CPA), amendments and information disclosure statements (IDS) from the prior application are handled as follows:

• Amendments: 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.” Applicants are encouraged to file any preliminary amendments at the time of filing the CPA.
• Information Disclosure Statements: According to the MPEP, “All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner.” No specific request for consideration is required.

It’s important to note that amendments or IDSs filed after the CPA filing date could delay prosecution. The MPEP advises, “Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.”

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

37 CFR 1.62, which covered the File Wrapper Continuing Procedure, was deleted effective December 1, 1997. This change was announced in the Official Gazette: “See 1203 O.G. 63, October 21, 1997.” This deletion significantly impacted how certain continuation, divisional, and continuation-in-part applications were processed.

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

While both the Certificate of Mailing (37 CFR 1.8) and Priority Mail Express (37 CFR 1.10) procedures can be used to establish timely filing of USPTO correspondence, they have some key differences:

• Certificate of Mailing can be used with any class of mail, while Priority Mail Express is a specific USPS service.
• Certificate of Mailing uses the date of deposit with USPS as the filing date, while Priority Mail Express uses the date of deposit as shown by the “date accepted” on the mailing label.
• Certificate of Mailing cannot be used for new patent applications, while Priority Mail Express can establish a filing date for new applications.
• Certificate of Mailing requires a signed certificate, while Priority Mail Express requires the mailing label to be affixed to the correspondence.

The MPEP notes: “New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.”

Both procedures have specific requirements and limitations, so it’s important to consult the full text of 37 CFR 1.8 and 37 CFR 1.10 when deciding which to use.

While both the Certificate of Mailing (37 CFR 1.8) and Priority Mail Express (37 CFR 1.10) procedures can be used to establish timely filing of USPTO correspondence, they have some key differences:

• Certificate of Mailing can be used with any class of mail, while Priority Mail Express is a specific USPS service.
• Certificate of Mailing uses the date of deposit with USPS as the filing date, while Priority Mail Express uses the date of deposit as shown by the “date accepted” on the mailing label.
• Certificate of Mailing cannot be used for new patent applications, while Priority Mail Express can establish a filing date for new applications.
• Certificate of Mailing requires a signed certificate, while Priority Mail Express requires the mailing label to be affixed to the correspondence.

The MPEP notes: “New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.”

Both procedures have specific requirements and limitations, so it’s important to consult the full text of 37 CFR 1.8 and 37 CFR 1.10 when deciding which to use.

While both the Certificate of Mailing (37 CFR 1.8) and Priority Mail Express (37 CFR 1.10) procedures can be used to establish timely filing of USPTO correspondence, they have some key differences:

• Certificate of Mailing can be used with any class of mail, while Priority Mail Express is a specific USPS service.
• Certificate of Mailing uses the date of deposit with USPS as the filing date, while Priority Mail Express uses the date of deposit as shown by the “date accepted” on the mailing label.
• Certificate of Mailing cannot be used for new patent applications, while Priority Mail Express can establish a filing date for new applications.
• Certificate of Mailing requires a signed certificate, while Priority Mail Express requires the mailing label to be affixed to the correspondence.

The MPEP notes: “New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.”

Both procedures have specific requirements and limitations, so it’s important to consult the full text of 37 CFR 1.8 and 37 CFR 1.10 when deciding which to use.

When filing a Continued Prosecution Application (CPA), amendments and information disclosure statements (IDS) from the prior application are handled as follows:

• Amendments: 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.” Applicants are encouraged to file any preliminary amendments at the time of filing the CPA.
• Information Disclosure Statements: According to the MPEP, “All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner.” No specific request for consideration is required.

It’s important to note that amendments or IDSs filed after the CPA filing date could delay prosecution. The MPEP advises, “Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.”

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

37 CFR 1.62, which covered the File Wrapper Continuing Procedure, was deleted effective December 1, 1997. This change was announced in the Official Gazette 1203, published on October 21, 1997.

The MPEP states: 37 CFR 1.62 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. This means that applications filed under this procedure after its deletion date would be treated differently.

To learn more:

• File Wrapper Continuing Procedure
• 37 CFR 1.62
• Patent Application Procedures

To learn more:

• 37 CFR 1.62

37 CFR 1.62, which covered the File Wrapper Continuing Procedure, was deleted effective December 1, 1997. This change was announced in the Official Gazette: “See 1203 O.G. 63, October 21, 1997.” This deletion significantly impacted how certain continuation, divisional, and continuation-in-part applications were processed.

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

While both the Certificate of Mailing (37 CFR 1.8) and Priority Mail Express (37 CFR 1.10) procedures can be used to establish timely filing of USPTO correspondence, they have some key differences:

• Certificate of Mailing can be used with any class of mail, while Priority Mail Express is a specific USPS service.
• Certificate of Mailing uses the date of deposit with USPS as the filing date, while Priority Mail Express uses the date of deposit as shown by the “date accepted” on the mailing label.
• Certificate of Mailing cannot be used for new patent applications, while Priority Mail Express can establish a filing date for new applications.
• Certificate of Mailing requires a signed certificate, while Priority Mail Express requires the mailing label to be affixed to the correspondence.

The MPEP notes: “New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as Priority Mail Express® with the United States Postal Service.”

Both procedures have specific requirements and limitations, so it’s important to consult the full text of 37 CFR 1.8 and 37 CFR 1.10 when deciding which to use.

When filing a Continued Prosecution Application (CPA), amendments and information disclosure statements (IDS) from the prior application are handled as follows:

• Amendments: 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.” Applicants are encouraged to file any preliminary amendments at the time of filing the CPA.
• Information Disclosure Statements: According to the MPEP, “All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner.” No specific request for consideration is required.

It’s important to note that amendments or IDSs filed after the CPA filing date could delay prosecution. The MPEP advises, “Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.”

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

37 CFR 1.62, which covered the File Wrapper Continuing Procedure, was deleted effective December 1, 1997. This change was announced in the Official Gazette 1203, published on October 21, 1997.

The MPEP states: 37 CFR 1.62 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. This means that applications filed under this procedure after its deletion date would be treated differently.

To learn more:

• File Wrapper Continuing Procedure
• 37 CFR 1.62
• Patent Application Procedures

To learn more:

• 37 CFR 1.62

37 CFR 1.62, which covered the File Wrapper Continuing Procedure, was deleted effective December 1, 1997. This change was announced in the Official Gazette: “See 1203 O.G. 63, October 21, 1997.” This deletion significantly impacted how certain continuation, divisional, and continuation-in-part applications were processed.

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