Patent Law FAQ

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 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.

Continued Prosecution Applications (CPAs) are limited to specific types of patent applications:

• Design Applications: CPAs are available for design applications filed before May 29, 2000.
• Plant Applications: CPAs can be used for plant patent applications.

It’s important to note that CPAs are not available for utility patent applications filed on or after May 29, 2000. For these applications, applicants should use a Request for Continued Examination (RCE) instead.

The MPEP ¶ 2.34 provides guidance on how CPAs reference prior applications:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.

This means that for eligible applications, the CPA automatically establishes the necessary reference to the prior application without requiring amendments to the specification.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

For more information on plant patents, visit: plant patents.

The term ‘original application’ has a specific meaning in patent law, as outlined in MPEP 201.02:

‘Original’ application is used in the patent statutes and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application.

This definition is significant because it distinguishes original applications from reissue applications, which are used to correct errors in already-granted patents. Original applications encompass:

• First-time filings of new inventions
• Continuing applications (continuations, divisionals, and continuations-in-part)

Understanding this term is crucial for patent applicants and examiners, as it affects how an application is processed and what rights it may claim, particularly in terms of priority dates and the scope of patent protection.

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

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

What is the significance of a national application being made under 35 U.S.C. 111?

A national application made under 35 U.S.C. 111 signifies that it is filed directly with the United States Patent and Trademark Office (USPTO) and follows the standard U.S. patent application process.

The MPEP 201.01 states: ‘A national application is one that was filed in the United States Patent and Trademark Office (USPTO) under 35 U.S.C. 111.’ This means that the application is subject to U.S. patent laws and procedures from the outset.

Applications filed under 35 U.S.C. 111 include:

• Original (nonprovisional) applications
• Reissue applications
• Design applications
• Plant applications
• Provisional applications

These applications are distinct from international applications that enter the national stage in the U.S. under 35 U.S.C. 371.

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

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

For more information on USPTO, visit: USPTO.

What is the difference between a utility patent and a design patent application?

Utility patents and design patents protect different aspects of an invention, and their applications are processed differently. According to MPEP 201.02:

‘A utility application is a nonprovisional application that is not a design application. A design application is an application for a design patent.’

Key differences include:

• Utility Patent Application:
  • Protects the functional aspects of an invention
  • Covers how an invention works or is used
  • Has a term of 20 years from the filing date
• Design Patent Application:
  • Protects the ornamental design of a functional item
  • Covers how an invention looks
  • Has a term of 15 years from the grant date

Inventors should carefully consider which type of patent application best suits their invention’s nature and intended protection.

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

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

For more information on USPTO, visit: USPTO.

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.

There is a significant difference in how Continued Prosecution Applications (CPAs) are treated for utility/plant applications versus design applications. According to the examiner’s note in MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This indicates that for utility or plant applications, an improper CPA request is treated as a Request for Continued Examination (RCE). However, for design applications, CPA requests are generally accepted and processed as described in MPEP ¶ 2.35. This distinction is important for applicants to understand when considering their continued prosecution options.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

A continuation-in-part (CIP) application differs from a regular continuation application in the following ways:

• A CIP application contains a portion or all of the disclosure of an earlier application and adds matter not disclosed in the earlier application.
• A regular continuation application contains the same disclosure as the earlier application without adding new matter.

As stated in 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.

To learn more:

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

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

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

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

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

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

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

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

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

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

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

To learn more:

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

The main difference between applications filed under 35 U.S.C. 111(a) and 111(b) lies in their purpose and requirements. According to MPEP 201.01:

• 35 U.S.C. 111(a) applications: These are for original (nonprovisional) patents. They require a specification, at least one claim, and drawings (when necessary).
• 35 U.S.C. 111(b) applications: These are for provisional patents. They do not require claims and are not examined on their merits.

The key differences are:

1. Examination: 111(a) applications undergo full examination, while 111(b) applications do not.
2. Duration: 111(a) applications can lead to granted patents, while 111(b) applications expire after 12 months.
3. Requirements: 111(a) applications have stricter formal requirements, including the need for claims.

Inventors often use 111(b) provisional applications to establish an early filing date before filing a more comprehensive 111(a) nonprovisional application.

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

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

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

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

A divisional application is defined in MPEP 201.06 as follows:

‘A later application for a distinct or independent invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.’

This definition highlights that a divisional application:

• Is filed after an initial application
• Focuses on a distinct invention
• Only includes subject matter from the original application
• Is ‘carved out’ of the pending parent application

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

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

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

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

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

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

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

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

A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application. It discloses and claims only subject matter disclosed in the earlier or parent application. As stated in MPEP 201.06:

A later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application.

To learn more:

• divisional application
• patent application types
• continuation applications

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

As stated in the MPEP:

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

Key points about CIP applications:

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

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

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

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

A continuation or divisional application is a type of continuing application filed under 37 CFR 1.53(b). According to the MPEP, An application filed under 37 CFR 1.53(b) may be an original or a reissue, a continuation, a divisional, a continuation-in-part, or a substitute. These applications are filed under 35 U.S.C. 111(a) and can be for utility, design, plant, or reissue patents.

To learn more:

• continuation application
• divisional application
• 37 CFR 1.53(b)
• patent application types

To learn more:

• 37 CFR 1.53(b)

If a Continued Prosecution Application (CPA) request is improper for a utility or plant application, the USPTO handles it differently than for design applications. According to MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the USPTO treats the improper CPA request as a Request for Continued Examination (RCE). This approach ensures that the application can continue to be prosecuted, albeit under a different procedure. Applicants should be aware of this distinction and the potential implications for their patent prosecution strategy.

For more information on CPA, visit: CPA.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

Continued Prosecution Applications (CPAs) have several key differences from regular continuation applications filed under 37 CFR 1.53(b):

• CPAs are only available for design applications, not utility or plant applications
• CPAs use the same application number as the prior application
• CPAs do not require a new specification or drawings to be filed
• The filing requirements for a CPA are minimal compared to a regular continuation
• CPAs are typically processed faster than regular continuations
• Filing a CPA automatically abandons the prior application

MPEP 201.06(d) states: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).

For more information on design patents, visit: design patents.

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

For more information on USPTO procedures, visit: USPTO procedures.

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

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

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

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

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

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

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

As stated in the MPEP:

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

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

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

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

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

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

Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:

‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’

Key differences between provisional and non-provisional applications:

• Provisional applications have a simplified filing process and lower fees.
• They do not require formal patent claims or an oath or declaration.
• Provisional applications are not examined and automatically expire after 12 months.
• To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.

Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.

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

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

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

The United States Patent and Trademark Office (USPTO) defines different types of patent applications in the Code of Federal Regulations (CFR) and the Manual of Patent Examining Procedure (MPEP). Specifically:

• National application, Provisional application, and Nonprovisional application are defined in 37 CFR 1.9(a)
• International application is defined in 37 CFR 1.9(b)
• International design application is defined in 37 CFR 1.9(n)

These definitions provide the legal basis for understanding the different types of applications that can be filed with the USPTO. For more detailed explanations and context, refer to MPEP § 201, which provides comprehensive guidance on types and status of applications.

To learn more:

• patent application types
• USPTO definitions
• CFR
• MPEP

Claiming the benefit of an earlier filing date for continuing applications (continuation, divisional, and continuation-in-part) is governed by 35 U.S.C. 120 and 37 CFR 1.78. Key points include:

• The continuing application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The continuing application must contain a specific reference to the prior application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet (ADS).
• For applications filed before September 16, 2012, the specific reference must be in the first sentence(s) of the specification or in an ADS.
• The continuing application must have at least one common inventor with the prior application.

As stated in the MPEP:

A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.

It’s important to note that for continuation-in-part applications, any claims that rely on new matter added in the CIP will not be entitled to the benefit of the earlier filing date of the parent application.

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

A plant patent application is a specialized type of patent application designed to protect new varieties of plants. The MPEP 201 states:

A plant application is an application for a plant patent. A plant patent protects a distinct and new variety of plant that is asexually reproduced.

Key differences of plant patent applications include:

• They are specifically for asexually reproduced plants
• They protect the entire plant, not just a specific part
• They have unique requirements for description and claiming

Plant patents are less common than utility or design patents but are crucial for protecting innovations in agriculture and horticulture.

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

A divisional application discloses and claims only subject matter disclosed in the parent application, while a continuation-in-part (CIP) application may include new matter. The MPEP states:

A continuation-in-part application should not be designated as a divisional application. The Court of Appeals for the Federal Circuit has concluded that the protection of the third sentence of 35 U.S.C. 121 does not extend to continuation-in-part applications, stating that ‘the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.’

This means that divisional applications have certain protections against double patenting rejections that CIPs do not have.

To learn more:

• divisional application
• continuation-in-part application
• patent application types

Design patent applications and utility patent applications are distinct types of patent applications, each protecting different aspects of an invention. According to MPEP 201:

‘Design applications are not included in the term ‘nonprovisional’ as used in 37 CFR 1.9. […] Design applications are treated separately in 35 U.S.C. 171-173 and 37 CFR 1.151-1.155.’

Key differences include:

• Subject Matter: Utility patents protect how an invention works, while design patents protect how it looks.
• Duration: Utility patents last 20 years from filing, design patents 15 years from grant.
• Examination Process: Design applications typically have a simpler examination process.

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

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

A Continued Prosecution Application (CPA) differs from other types of continuing applications in several ways:

• CPAs are only available for design applications, not utility applications.
• Filing a CPA automatically establishes the necessary reference to the prior application under 35 U.S.C. 120, without needing to amend the specification.
• CPAs are processed differently from other continuing applications, as outlined in MPEP § 201.06(d).

The MPEP states: ‘As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.’ This unique feature distinguishes CPAs from other types of continuing applications, such as continuations or divisionals, which may require explicit references in the specification.

For more information on continuing applications, visit: continuing applications.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

A Continued Prosecution Application (CPA) and a continuation application are both ways to continue prosecution of a patent application, but they have key differences:

• CPA: Only available for design applications filed before May 29, 2000, and for plant applications. It continues examination of the same application.
• Continuation: Available for all types of applications and creates a new application that claims priority to the parent application.

The MPEP ¶ 2.34 highlights a crucial distinction in how they reference prior applications:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.

This means that for a CPA, the mere act of filing establishes the reference to the prior application. In contrast, a continuation application typically requires an explicit reference to the parent application in the specification.

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

For more information on CPA, visit: CPA.

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

A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:

An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.

This means that:

• A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
• A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
• Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

A continuation-in-part (CIP) application differs from a regular continuation application in that it adds new disclosure not present in the prior application. While both types of applications repeat substantial portions of a prior application, only a CIP introduces new subject matter.

The MPEP states: This application repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application. (MPEP ¶ 2.06) This additional disclosure is what sets a CIP apart from a standard continuation.

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

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

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

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

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

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

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

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

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

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

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

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

Can you file a CPA in a provisional application?

No, you cannot file a Continued Prosecution Application (CPA) in a provisional application. The MPEP 201.06(d) clearly states:

A CPA may not be filed in a provisional application.

CPAs are only available for certain types of nonprovisional applications. Specifically, they can be filed in design applications, and in utility and plant applications that were filed before May 29, 2000. Provisional applications have a different purpose and process, and do not allow for the filing of CPAs.

For more information on CPA, visit: CPA.

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

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

No, a provisional application cannot be considered a continuation-in-part (CIP). The MPEP explicitly states: An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application. (MPEP ¶ 2.06)

This distinction is important because:

• Provisional applications are not examined and do not mature into patents.
• The term ‘continuation-in-part’ is reserved for non-provisional applications that build upon prior non-provisional applications.
• The relationship between a non-provisional application and a provisional application is described as ‘claiming the benefit of’ the provisional, not as a continuation or CIP.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

No, a design patent application cannot be filed as a provisional application. The MPEP 201.01 states:

“Design applications and provisional applications for patent are considered to be distinct types of applications and are treated as separate categories.”

This means that design patent applications must be filed as nonprovisional applications. Provisional applications are only available for utility and plant patents.

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

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

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

Can a CPA be filed as a continuation-in-part application?

No, a Continued Prosecution Application (CPA) cannot be filed as a continuation-in-part application. According to MPEP 201.06(d):

‘A continuation or divisional application (but not a continuation-in-part) may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b).’

This means that while you can file a CPA as a continuation or divisional application of a prior design application, you cannot file it as a continuation-in-part. Continuation-in-part applications typically contain new matter not present in the prior application, which is not allowed in a CPA filing.

For more information on CPA, visit: CPA.

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

No, Continued Prosecution Applications (CPAs) are not available for all types of patent applications. They are specifically limited to design patent applications. This is evident from the MPEP guidance, which states:

‘Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.’

This statement clearly indicates that CPAs are associated with design applications. For utility and plant patent applications, other continuation options are available, such as:

• Continuation Applications
• Divisional Applications
• Continuation-in-Part Applications

It’s important for inventors and patent practitioners to understand these distinctions to choose the appropriate type of continuing application for their specific situation.

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

For more information on design patents, visit: design patents.

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

Design and plant patent applications are two distinct types of patent applications, each protecting different aspects of inventions:

Design Patent Applications:
1. Protect the ornamental design of a functional item.
2. Cover the visual appearance of an article of manufacture.
3. Have a term of 15 years from the date of grant.
4. Require drawings or photographs of the design.
5. Do not require a written description of the invention.

Plant Patent Applications:
1. Protect new varieties of asexually reproduced plants.
2. Cover the entire plant, not just a specific part.
3. Have a term of 20 years from the filing date.
4. Require a detailed botanical description of the plant.
5. May include drawings or photographs to illustrate the plant’s characteristics.

For more information, refer to MPEP 201.06 for design patents and MPEP 201.07 for plant patents.

No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”

Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.

Continued Prosecution Applications (CPAs) are limited to specific types of patent applications:

• Design Applications: CPAs are available for design applications filed before May 29, 2000.
• Plant Applications: CPAs can be used for plant patent applications.

It’s important to note that CPAs are not available for utility patent applications filed on or after May 29, 2000. For these applications, applicants should use a Request for Continued Examination (RCE) instead.

The MPEP ¶ 2.34 provides guidance on how CPAs reference prior applications:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.

This means that for eligible applications, the CPA automatically establishes the necessary reference to the prior application without requiring amendments to the specification.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

For more information on plant patents, visit: plant patents.

The term ‘original application’ has a specific meaning in patent law, as outlined in MPEP 201.02:

‘Original’ application is used in the patent statutes and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application.

This definition is significant because it distinguishes original applications from reissue applications, which are used to correct errors in already-granted patents. Original applications encompass:

• First-time filings of new inventions
• Continuing applications (continuations, divisionals, and continuations-in-part)

Understanding this term is crucial for patent applicants and examiners, as it affects how an application is processed and what rights it may claim, particularly in terms of priority dates and the scope of patent protection.

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

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

What is the significance of a national application being made under 35 U.S.C. 111?

A national application made under 35 U.S.C. 111 signifies that it is filed directly with the United States Patent and Trademark Office (USPTO) and follows the standard U.S. patent application process.

The MPEP 201.01 states: ‘A national application is one that was filed in the United States Patent and Trademark Office (USPTO) under 35 U.S.C. 111.’ This means that the application is subject to U.S. patent laws and procedures from the outset.

Applications filed under 35 U.S.C. 111 include:

• Original (nonprovisional) applications
• Reissue applications
• Design applications
• Plant applications
• Provisional applications

These applications are distinct from international applications that enter the national stage in the U.S. under 35 U.S.C. 371.

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

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

For more information on USPTO, visit: USPTO.

What is the difference between a utility patent and a design patent application?

Utility patents and design patents protect different aspects of an invention, and their applications are processed differently. According to MPEP 201.02:

‘A utility application is a nonprovisional application that is not a design application. A design application is an application for a design patent.’

Key differences include:

• Utility Patent Application:
  • Protects the functional aspects of an invention
  • Covers how an invention works or is used
  • Has a term of 20 years from the filing date
• Design Patent Application:
  • Protects the ornamental design of a functional item
  • Covers how an invention looks
  • Has a term of 15 years from the grant date

Inventors should carefully consider which type of patent application best suits their invention’s nature and intended protection.

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

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

For more information on USPTO, visit: USPTO.

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.

There is a significant difference in how Continued Prosecution Applications (CPAs) are treated for utility/plant applications versus design applications. According to the examiner’s note in MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This indicates that for utility or plant applications, an improper CPA request is treated as a Request for Continued Examination (RCE). However, for design applications, CPA requests are generally accepted and processed as described in MPEP ¶ 2.35. This distinction is important for applicants to understand when considering their continued prosecution options.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

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

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

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

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

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

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

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

The main difference between applications filed under 35 U.S.C. 111(a) and 111(b) lies in their purpose and requirements. According to MPEP 201.01:

• 35 U.S.C. 111(a) applications: These are for original (nonprovisional) patents. They require a specification, at least one claim, and drawings (when necessary).
• 35 U.S.C. 111(b) applications: These are for provisional patents. They do not require claims and are not examined on their merits.

The key differences are:

1. Examination: 111(a) applications undergo full examination, while 111(b) applications do not.
2. Duration: 111(a) applications can lead to granted patents, while 111(b) applications expire after 12 months.
3. Requirements: 111(a) applications have stricter formal requirements, including the need for claims.

Inventors often use 111(b) provisional applications to establish an early filing date before filing a more comprehensive 111(a) nonprovisional application.

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

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

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

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

A divisional application is defined in MPEP 201.06 as follows:

‘A later application for a distinct or independent invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.’

This definition highlights that a divisional application:

• Is filed after an initial application
• Focuses on a distinct invention
• Only includes subject matter from the original application
• Is ‘carved out’ of the pending parent application

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

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

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

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

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

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

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

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

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

As stated in the MPEP:

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

Key points about CIP applications:

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

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

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

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

If a Continued Prosecution Application (CPA) request is improper for a utility or plant application, the USPTO handles it differently than for design applications. According to MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the USPTO treats the improper CPA request as a Request for Continued Examination (RCE). This approach ensures that the application can continue to be prosecuted, albeit under a different procedure. Applicants should be aware of this distinction and the potential implications for their patent prosecution strategy.

For more information on CPA, visit: CPA.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

Continued Prosecution Applications (CPAs) have several key differences from regular continuation applications filed under 37 CFR 1.53(b):

• CPAs are only available for design applications, not utility or plant applications
• CPAs use the same application number as the prior application
• CPAs do not require a new specification or drawings to be filed
• The filing requirements for a CPA are minimal compared to a regular continuation
• CPAs are typically processed faster than regular continuations
• Filing a CPA automatically abandons the prior application

MPEP 201.06(d) states: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).

For more information on design patents, visit: design patents.

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

For more information on USPTO procedures, visit: USPTO procedures.

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

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

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

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

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

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

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

As stated in the MPEP:

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

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

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

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

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

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

Design and plant patent applications are two distinct types of patent applications, each protecting different aspects of inventions:

Design Patent Applications:
1. Protect the ornamental design of a functional item.
2. Cover the visual appearance of an article of manufacture.
3. Have a term of 15 years from the date of grant.
4. Require drawings or photographs of the design.
5. Do not require a written description of the invention.

Plant Patent Applications:
1. Protect new varieties of asexually reproduced plants.
2. Cover the entire plant, not just a specific part.
3. Have a term of 20 years from the filing date.
4. Require a detailed botanical description of the plant.
5. May include drawings or photographs to illustrate the plant’s characteristics.

For more information, refer to MPEP 201.06 for design patents and MPEP 201.07 for plant patents.

Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:

‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’

Key differences between provisional and non-provisional applications:

• Provisional applications have a simplified filing process and lower fees.
• They do not require formal patent claims or an oath or declaration.
• Provisional applications are not examined and automatically expire after 12 months.
• To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.

Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.

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

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

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

Claiming the benefit of an earlier filing date for continuing applications (continuation, divisional, and continuation-in-part) is governed by 35 U.S.C. 120 and 37 CFR 1.78. Key points include:

• The continuing application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The continuing application must contain a specific reference to the prior application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet (ADS).
• For applications filed before September 16, 2012, the specific reference must be in the first sentence(s) of the specification or in an ADS.
• The continuing application must have at least one common inventor with the prior application.

As stated in the MPEP:

A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.

It’s important to note that for continuation-in-part applications, any claims that rely on new matter added in the CIP will not be entitled to the benefit of the earlier filing date of the parent application.

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

A plant patent application is a specialized type of patent application designed to protect new varieties of plants. The MPEP 201 states:

A plant application is an application for a plant patent. A plant patent protects a distinct and new variety of plant that is asexually reproduced.

Key differences of plant patent applications include:

• They are specifically for asexually reproduced plants
• They protect the entire plant, not just a specific part
• They have unique requirements for description and claiming

Plant patents are less common than utility or design patents but are crucial for protecting innovations in agriculture and horticulture.

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

Design patent applications and utility patent applications are distinct types of patent applications, each protecting different aspects of an invention. According to MPEP 201:

‘Design applications are not included in the term ‘nonprovisional’ as used in 37 CFR 1.9. […] Design applications are treated separately in 35 U.S.C. 171-173 and 37 CFR 1.151-1.155.’

Key differences include:

• Subject Matter: Utility patents protect how an invention works, while design patents protect how it looks.
• Duration: Utility patents last 20 years from filing, design patents 15 years from grant.
• Examination Process: Design applications typically have a simpler examination process.

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

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

A Continued Prosecution Application (CPA) differs from other types of continuing applications in several ways:

• CPAs are only available for design applications, not utility applications.
• Filing a CPA automatically establishes the necessary reference to the prior application under 35 U.S.C. 120, without needing to amend the specification.
• CPAs are processed differently from other continuing applications, as outlined in MPEP § 201.06(d).

The MPEP states: ‘As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.’ This unique feature distinguishes CPAs from other types of continuing applications, such as continuations or divisionals, which may require explicit references in the specification.

For more information on continuing applications, visit: continuing applications.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

A Continued Prosecution Application (CPA) and a continuation application are both ways to continue prosecution of a patent application, but they have key differences:

• CPA: Only available for design applications filed before May 29, 2000, and for plant applications. It continues examination of the same application.
• Continuation: Available for all types of applications and creates a new application that claims priority to the parent application.

The MPEP ¶ 2.34 highlights a crucial distinction in how they reference prior applications:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.

This means that for a CPA, the mere act of filing establishes the reference to the prior application. In contrast, a continuation application typically requires an explicit reference to the parent application in the specification.

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

For more information on CPA, visit: CPA.

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

A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:

An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.

This means that:

• A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
• A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
• Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

A continuation-in-part (CIP) application differs from a regular continuation application in that it adds new disclosure not present in the prior application. While both types of applications repeat substantial portions of a prior application, only a CIP introduces new subject matter.

The MPEP states: This application repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application. (MPEP ¶ 2.06) This additional disclosure is what sets a CIP apart from a standard continuation.

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

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

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

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

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

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

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

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

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

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

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

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

Can you file a CPA in a provisional application?

No, you cannot file a Continued Prosecution Application (CPA) in a provisional application. The MPEP 201.06(d) clearly states:

A CPA may not be filed in a provisional application.

CPAs are only available for certain types of nonprovisional applications. Specifically, they can be filed in design applications, and in utility and plant applications that were filed before May 29, 2000. Provisional applications have a different purpose and process, and do not allow for the filing of CPAs.

For more information on CPA, visit: CPA.

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

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

No, a provisional application cannot be considered a continuation-in-part (CIP). The MPEP explicitly states: An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application. (MPEP ¶ 2.06)

This distinction is important because:

• Provisional applications are not examined and do not mature into patents.
• The term ‘continuation-in-part’ is reserved for non-provisional applications that build upon prior non-provisional applications.
• The relationship between a non-provisional application and a provisional application is described as ‘claiming the benefit of’ the provisional, not as a continuation or CIP.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

No, a design patent application cannot be filed as a provisional application. The MPEP 201.01 states:

“Design applications and provisional applications for patent are considered to be distinct types of applications and are treated as separate categories.”

This means that design patent applications must be filed as nonprovisional applications. Provisional applications are only available for utility and plant patents.

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

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

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

Can a CPA be filed as a continuation-in-part application?

No, a Continued Prosecution Application (CPA) cannot be filed as a continuation-in-part application. According to MPEP 201.06(d):

‘A continuation or divisional application (but not a continuation-in-part) may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b).’

This means that while you can file a CPA as a continuation or divisional application of a prior design application, you cannot file it as a continuation-in-part. Continuation-in-part applications typically contain new matter not present in the prior application, which is not allowed in a CPA filing.

For more information on CPA, visit: CPA.

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

No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”

Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.

No, Continued Prosecution Applications (CPAs) are not available for all types of patent applications. They are specifically limited to design patent applications. This is evident from the MPEP guidance, which states:

‘Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.’

This statement clearly indicates that CPAs are associated with design applications. For utility and plant patent applications, other continuation options are available, such as:

• Continuation Applications
• Divisional Applications
• Continuation-in-Part Applications

It’s important for inventors and patent practitioners to understand these distinctions to choose the appropriate type of continuing application for their specific situation.

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

For more information on design patents, visit: design patents.

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

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.

Can an assignee revoke power of attorney in all types of patent applications?

An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed:

“For applications involved in an interference or derivation proceeding, 37 CFR 41.5(b) or 42.10(e) provides that the assignee of the entire interest in an application or patent involved in the proceeding may act to the exclusion of the inventor. For national stage applications under 35 U.S.C. 371, the assignee may revoke any power of attorney of the applicant in the national stage application filed under 35 U.S.C. 371 and appoint any representative if the assignee has properly made itself of record in the national stage application pursuant to 37 CFR 3.71.”

This means assignees can revoke power of attorney in:

• Applications involved in interference or derivation proceedings
• National stage applications under 35 U.S.C. 371

For other types of applications, the general rule applies where the assignee must first become of record and then can revoke the applicant’s power of attorney. It’s important to consult with a patent attorney or agent for specific cases to ensure compliance with USPTO regulations.

To learn more:

• power of attorney
• assignee rights
• patent application types
• USPTO procedures

A provisional patent application is a type of patent application that allows inventors to establish an early filing date for their invention. Key differences between provisional and nonprovisional applications include:

• Provisional applications are not examined and automatically expire after 12 months
• Provisional applications require fewer formal components than nonprovisional applications
• Provisional applications cannot directly result in a granted patent

The MPEP states: A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b).

To obtain a filing date, a provisional application must include:

• A specification as prescribed by 35 U.S.C. 112(a)
• Any necessary drawings
• The appropriate filing fee

Inventors often use provisional applications to secure an early filing date while allowing additional time to prepare a more comprehensive nonprovisional application.

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

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

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

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

Application numbers for patent applications are assigned by the Office of Patent Application Processing (OPAP) as follows:

n

n
• Nonprovisional applications are assigned numbers beginning with the series code ’15’ or ’16’.

n

• Design applications are assigned numbers beginning with the series code ’29’.

n

• Plant applications are assigned numbers beginning with the series code ’16’.

n

• Provisional applications are assigned numbers beginning with the series code ’62’.

n

• Reexamination proceedings are assigned numbers beginning with the series code ’90’.

n

n

As stated in the MPEP 503, “The application number includes a two-digit series code and a six-digit serial number.” This system allows for efficient categorization and tracking of different types of patent applications.

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

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

For more information on series code, visit: series code.

The USPTO assigns application numbers to patent applications immediately after mail has been opened. According to MPEP 503, application numbers consist of a series code and a serial number. The series codes are assigned based on the type of application and the time period in which it was filed. For example:

• 01/ – 16/ for nonprovisional applications (utility, plant, and reissue), with different ranges for specific time periods
• 29/ for design applications
• 35/ for international design applications
• 60/, 61/, and 62/ for provisional applications
• 90/ for ex parte reexamination proceedings
• 95/ for inter partes reexamination proceedings
• 96/ for supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP notes: “If an application is filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.”

It’s important to note that the application number on a filing receipt is the official number, which may differ from any preliminary number provided on a postcard receipt.

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

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

For more information on serial number, visit: serial number.

For more information on series code, visit: series code.

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

Application numbers for patent applications are assigned by the Office of Patent Application Processing (OPAP) as follows:

n

n
• Nonprovisional applications are assigned numbers beginning with the series code ’15’ or ’16’.

n

• Design applications are assigned numbers beginning with the series code ’29’.

n

• Plant applications are assigned numbers beginning with the series code ’16’.

n

• Provisional applications are assigned numbers beginning with the series code ’62’.

n

• Reexamination proceedings are assigned numbers beginning with the series code ’90’.

n

n

As stated in the MPEP 503, “The application number includes a two-digit series code and a six-digit serial number.” This system allows for efficient categorization and tracking of different types of patent applications.

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

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

For more information on series code, visit: series code.

The USPTO assigns application numbers to patent applications immediately after mail has been opened. According to MPEP 503, application numbers consist of a series code and a serial number. The series codes are assigned based on the type of application and the time period in which it was filed. For example:

• 01/ – 16/ for nonprovisional applications (utility, plant, and reissue), with different ranges for specific time periods
• 29/ for design applications
• 35/ for international design applications
• 60/, 61/, and 62/ for provisional applications
• 90/ for ex parte reexamination proceedings
• 95/ for inter partes reexamination proceedings
• 96/ for supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP notes: “If an application is filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.”

It’s important to note that the application number on a filing receipt is the official number, which may differ from any preliminary number provided on a postcard receipt.

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

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

For more information on serial number, visit: serial number.

For more information on series code, visit: series code.

A provisional patent application is a type of patent application that allows inventors to establish an early filing date for their invention. Key differences between provisional and nonprovisional applications include:

• Provisional applications are not examined and automatically expire after 12 months
• Provisional applications require fewer formal components than nonprovisional applications
• Provisional applications cannot directly result in a granted patent

The MPEP states: A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b).

To obtain a filing date, a provisional application must include:

• A specification as prescribed by 35 U.S.C. 112(a)
• Any necessary drawings
• The appropriate filing fee

Inventors often use provisional applications to secure an early filing date while allowing additional time to prepare a more comprehensive nonprovisional application.

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

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

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

Continued Prosecution Applications (CPAs) are limited to specific types of patent applications:

• Design Applications: CPAs are available for design applications filed before May 29, 2000.
• Plant Applications: CPAs can be used for plant patent applications.

It’s important to note that CPAs are not available for utility patent applications filed on or after May 29, 2000. For these applications, applicants should use a Request for Continued Examination (RCE) instead.

The MPEP ¶ 2.34 provides guidance on how CPAs reference prior applications:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.

This means that for eligible applications, the CPA automatically establishes the necessary reference to the prior application without requiring amendments to the specification.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

For more information on plant patents, visit: plant patents.

The term ‘original application’ has a specific meaning in patent law, as outlined in MPEP 201.02:

‘Original’ application is used in the patent statutes and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application.

This definition is significant because it distinguishes original applications from reissue applications, which are used to correct errors in already-granted patents. Original applications encompass:

• First-time filings of new inventions
• Continuing applications (continuations, divisionals, and continuations-in-part)

Understanding this term is crucial for patent applicants and examiners, as it affects how an application is processed and what rights it may claim, particularly in terms of priority dates and the scope of patent protection.

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

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

What is the significance of a national application being made under 35 U.S.C. 111?

A national application made under 35 U.S.C. 111 signifies that it is filed directly with the United States Patent and Trademark Office (USPTO) and follows the standard U.S. patent application process.

The MPEP 201.01 states: ‘A national application is one that was filed in the United States Patent and Trademark Office (USPTO) under 35 U.S.C. 111.’ This means that the application is subject to U.S. patent laws and procedures from the outset.

Applications filed under 35 U.S.C. 111 include:

• Original (nonprovisional) applications
• Reissue applications
• Design applications
• Plant applications
• Provisional applications

These applications are distinct from international applications that enter the national stage in the U.S. under 35 U.S.C. 371.

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

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

For more information on USPTO, visit: USPTO.

What is the difference between a utility patent and a design patent application?

Utility patents and design patents protect different aspects of an invention, and their applications are processed differently. According to MPEP 201.02:

‘A utility application is a nonprovisional application that is not a design application. A design application is an application for a design patent.’

Key differences include:

• Utility Patent Application:
  • Protects the functional aspects of an invention
  • Covers how an invention works or is used
  • Has a term of 20 years from the filing date
• Design Patent Application:
  • Protects the ornamental design of a functional item
  • Covers how an invention looks
  • Has a term of 15 years from the grant date

Inventors should carefully consider which type of patent application best suits their invention’s nature and intended protection.

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

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

For more information on USPTO, visit: USPTO.

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.

There is a significant difference in how Continued Prosecution Applications (CPAs) are treated for utility/plant applications versus design applications. According to the examiner’s note in MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This indicates that for utility or plant applications, an improper CPA request is treated as a Request for Continued Examination (RCE). However, for design applications, CPA requests are generally accepted and processed as described in MPEP ¶ 2.35. This distinction is important for applicants to understand when considering their continued prosecution options.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

A continuation-in-part (CIP) application differs from a regular continuation application in the following ways:

• A CIP application contains a portion or all of the disclosure of an earlier application and adds matter not disclosed in the earlier application.
• A regular continuation application contains the same disclosure as the earlier application without adding new matter.

As stated in 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.

To learn more:

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

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

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

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

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

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

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

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

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

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

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

To learn more:

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

The main difference between applications filed under 35 U.S.C. 111(a) and 111(b) lies in their purpose and requirements. According to MPEP 201.01:

• 35 U.S.C. 111(a) applications: These are for original (nonprovisional) patents. They require a specification, at least one claim, and drawings (when necessary).
• 35 U.S.C. 111(b) applications: These are for provisional patents. They do not require claims and are not examined on their merits.

The key differences are:

1. Examination: 111(a) applications undergo full examination, while 111(b) applications do not.
2. Duration: 111(a) applications can lead to granted patents, while 111(b) applications expire after 12 months.
3. Requirements: 111(a) applications have stricter formal requirements, including the need for claims.

Inventors often use 111(b) provisional applications to establish an early filing date before filing a more comprehensive 111(a) nonprovisional application.

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

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

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

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

A divisional application is defined in MPEP 201.06 as follows:

‘A later application for a distinct or independent invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.’

This definition highlights that a divisional application:

• Is filed after an initial application
• Focuses on a distinct invention
• Only includes subject matter from the original application
• Is ‘carved out’ of the pending parent application

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

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

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

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

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

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

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

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

A provisional patent application is a type of patent application that allows inventors to establish an early filing date for their invention. Key differences between provisional and nonprovisional applications include:

• Provisional applications are not examined and automatically expire after 12 months
• Provisional applications require fewer formal components than nonprovisional applications
• Provisional applications cannot directly result in a granted patent

The MPEP states: A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b).

To obtain a filing date, a provisional application must include:

• A specification as prescribed by 35 U.S.C. 112(a)
• Any necessary drawings
• The appropriate filing fee

Inventors often use provisional applications to secure an early filing date while allowing additional time to prepare a more comprehensive nonprovisional application.

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

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

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

A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application. It discloses and claims only subject matter disclosed in the earlier or parent application. As stated in MPEP 201.06:

A later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application.

To learn more:

• divisional application
• patent application types
• continuation applications

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

As stated in the MPEP:

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

Key points about CIP applications:

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

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

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

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

A continuation or divisional application is a type of continuing application filed under 37 CFR 1.53(b). According to the MPEP, An application filed under 37 CFR 1.53(b) may be an original or a reissue, a continuation, a divisional, a continuation-in-part, or a substitute. These applications are filed under 35 U.S.C. 111(a) and can be for utility, design, plant, or reissue patents.

To learn more:

• continuation application
• divisional application
• 37 CFR 1.53(b)
• patent application types

To learn more:

• 37 CFR 1.53(b)

If a Continued Prosecution Application (CPA) request is improper for a utility or plant application, the USPTO handles it differently than for design applications. According to MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the USPTO treats the improper CPA request as a Request for Continued Examination (RCE). This approach ensures that the application can continue to be prosecuted, albeit under a different procedure. Applicants should be aware of this distinction and the potential implications for their patent prosecution strategy.

For more information on CPA, visit: CPA.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

Continued Prosecution Applications (CPAs) have several key differences from regular continuation applications filed under 37 CFR 1.53(b):

• CPAs are only available for design applications, not utility or plant applications
• CPAs use the same application number as the prior application
• CPAs do not require a new specification or drawings to be filed
• The filing requirements for a CPA are minimal compared to a regular continuation
• CPAs are typically processed faster than regular continuations
• Filing a CPA automatically abandons the prior application

MPEP 201.06(d) states: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).

For more information on design patents, visit: design patents.

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

For more information on USPTO procedures, visit: USPTO procedures.

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

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

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

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

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

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

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

As stated in the MPEP:

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

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

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

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

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

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

Design and plant patent applications are two distinct types of patent applications, each protecting different aspects of inventions:

Design Patent Applications:
1. Protect the ornamental design of a functional item.
2. Cover the visual appearance of an article of manufacture.
3. Have a term of 15 years from the date of grant.
4. Require drawings or photographs of the design.
5. Do not require a written description of the invention.

Plant Patent Applications:
1. Protect new varieties of asexually reproduced plants.
2. Cover the entire plant, not just a specific part.
3. Have a term of 20 years from the filing date.
4. Require a detailed botanical description of the plant.
5. May include drawings or photographs to illustrate the plant’s characteristics.

For more information, refer to MPEP 201.06 for design patents and MPEP 201.07 for plant patents.

Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:

‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’

Key differences between provisional and non-provisional applications:

• Provisional applications have a simplified filing process and lower fees.
• They do not require formal patent claims or an oath or declaration.
• Provisional applications are not examined and automatically expire after 12 months.
• To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.

Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.

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

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

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

The United States Patent and Trademark Office (USPTO) defines different types of patent applications in the Code of Federal Regulations (CFR) and the Manual of Patent Examining Procedure (MPEP). Specifically:

• National application, Provisional application, and Nonprovisional application are defined in 37 CFR 1.9(a)
• International application is defined in 37 CFR 1.9(b)
• International design application is defined in 37 CFR 1.9(n)

These definitions provide the legal basis for understanding the different types of applications that can be filed with the USPTO. For more detailed explanations and context, refer to MPEP § 201, which provides comprehensive guidance on types and status of applications.

To learn more:

• patent application types
• USPTO definitions
• CFR
• MPEP

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.

Claiming the benefit of an earlier filing date for continuing applications (continuation, divisional, and continuation-in-part) is governed by 35 U.S.C. 120 and 37 CFR 1.78. Key points include:

• The continuing application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The continuing application must contain a specific reference to the prior application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet (ADS).
• For applications filed before September 16, 2012, the specific reference must be in the first sentence(s) of the specification or in an ADS.
• The continuing application must have at least one common inventor with the prior application.

As stated in the MPEP:

A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.

It’s important to note that for continuation-in-part applications, any claims that rely on new matter added in the CIP will not be entitled to the benefit of the earlier filing date of the parent application.

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

A plant patent application is a specialized type of patent application designed to protect new varieties of plants. The MPEP 201 states:

A plant application is an application for a plant patent. A plant patent protects a distinct and new variety of plant that is asexually reproduced.

Key differences of plant patent applications include:

• They are specifically for asexually reproduced plants
• They protect the entire plant, not just a specific part
• They have unique requirements for description and claiming

Plant patents are less common than utility or design patents but are crucial for protecting innovations in agriculture and horticulture.

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

A divisional application discloses and claims only subject matter disclosed in the parent application, while a continuation-in-part (CIP) application may include new matter. The MPEP states:

A continuation-in-part application should not be designated as a divisional application. The Court of Appeals for the Federal Circuit has concluded that the protection of the third sentence of 35 U.S.C. 121 does not extend to continuation-in-part applications, stating that ‘the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.’

This means that divisional applications have certain protections against double patenting rejections that CIPs do not have.

To learn more:

• divisional application
• continuation-in-part application
• patent application types

Design patent applications and utility patent applications are distinct types of patent applications, each protecting different aspects of an invention. According to MPEP 201:

‘Design applications are not included in the term ‘nonprovisional’ as used in 37 CFR 1.9. […] Design applications are treated separately in 35 U.S.C. 171-173 and 37 CFR 1.151-1.155.’

Key differences include:

• Subject Matter: Utility patents protect how an invention works, while design patents protect how it looks.
• Duration: Utility patents last 20 years from filing, design patents 15 years from grant.
• Examination Process: Design applications typically have a simpler examination process.

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

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

A Continued Prosecution Application (CPA) differs from other types of continuing applications in several ways:

• CPAs are only available for design applications, not utility applications.
• Filing a CPA automatically establishes the necessary reference to the prior application under 35 U.S.C. 120, without needing to amend the specification.
• CPAs are processed differently from other continuing applications, as outlined in MPEP § 201.06(d).

The MPEP states: ‘As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.’ This unique feature distinguishes CPAs from other types of continuing applications, such as continuations or divisionals, which may require explicit references in the specification.

For more information on continuing applications, visit: continuing applications.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

A Continued Prosecution Application (CPA) and a continuation application are both ways to continue prosecution of a patent application, but they have key differences:

• CPA: Only available for design applications filed before May 29, 2000, and for plant applications. It continues examination of the same application.
• Continuation: Available for all types of applications and creates a new application that claims priority to the parent application.

The MPEP ¶ 2.34 highlights a crucial distinction in how they reference prior applications:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.

This means that for a CPA, the mere act of filing establishes the reference to the prior application. In contrast, a continuation application typically requires an explicit reference to the parent application in the specification.

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

For more information on CPA, visit: CPA.

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

A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:

An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.

This means that:

• A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
• A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
• Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

A continuation-in-part (CIP) application differs from a regular continuation application in that it adds new disclosure not present in the prior application. While both types of applications repeat substantial portions of a prior application, only a CIP introduces new subject matter.

The MPEP states: This application repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application. (MPEP ¶ 2.06) This additional disclosure is what sets a CIP apart from a standard continuation.

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

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

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

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

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

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

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

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

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

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

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

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

Application numbers for patent applications are assigned by the Office of Patent Application Processing (OPAP) as follows:

n

n
• Nonprovisional applications are assigned numbers beginning with the series code ’15’ or ’16’.

n

• Design applications are assigned numbers beginning with the series code ’29’.

n

• Plant applications are assigned numbers beginning with the series code ’16’.

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• Provisional applications are assigned numbers beginning with the series code ’62’.

n

• Reexamination proceedings are assigned numbers beginning with the series code ’90’.

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As stated in the MPEP 503, “The application number includes a two-digit series code and a six-digit serial number.” This system allows for efficient categorization and tracking of different types of patent applications.

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

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

For more information on series code, visit: series code.

The USPTO assigns application numbers to patent applications immediately after mail has been opened. According to MPEP 503, application numbers consist of a series code and a serial number. The series codes are assigned based on the type of application and the time period in which it was filed. For example:

• 01/ – 16/ for nonprovisional applications (utility, plant, and reissue), with different ranges for specific time periods
• 29/ for design applications
• 35/ for international design applications
• 60/, 61/, and 62/ for provisional applications
• 90/ for ex parte reexamination proceedings
• 95/ for inter partes reexamination proceedings
• 96/ for supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP notes: “If an application is filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.”

It’s important to note that the application number on a filing receipt is the official number, which may differ from any preliminary number provided on a postcard receipt.

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

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

For more information on serial number, visit: serial number.

For more information on series code, visit: series code.

Can you file a CPA in a provisional application?

No, you cannot file a Continued Prosecution Application (CPA) in a provisional application. The MPEP 201.06(d) clearly states:

A CPA may not be filed in a provisional application.

CPAs are only available for certain types of nonprovisional applications. Specifically, they can be filed in design applications, and in utility and plant applications that were filed before May 29, 2000. Provisional applications have a different purpose and process, and do not allow for the filing of CPAs.

For more information on CPA, visit: CPA.

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

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

Can an assignee revoke power of attorney in all types of patent applications?

An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed:

“For applications involved in an interference or derivation proceeding, 37 CFR 41.5(b) or 42.10(e) provides that the assignee of the entire interest in an application or patent involved in the proceeding may act to the exclusion of the inventor. For national stage applications under 35 U.S.C. 371, the assignee may revoke any power of attorney of the applicant in the national stage application filed under 35 U.S.C. 371 and appoint any representative if the assignee has properly made itself of record in the national stage application pursuant to 37 CFR 3.71.”

This means assignees can revoke power of attorney in:

• Applications involved in interference or derivation proceedings
• National stage applications under 35 U.S.C. 371

For other types of applications, the general rule applies where the assignee must first become of record and then can revoke the applicant’s power of attorney. It’s important to consult with a patent attorney or agent for specific cases to ensure compliance with USPTO regulations.

To learn more:

• power of attorney
• assignee rights
• patent application types
• USPTO procedures

Can a substitute statement be filed in a provisional application?

No, a substitute statement cannot be filed in a provisional application. According to MPEP 604:

“A substitute statement is not available for provisional applications because provisional applications do not require an inventor’s oath or declaration.”

Provisional applications have different requirements compared to non-provisional applications. They are primarily used to establish an early filing date and do not require formal claims, oath, or declaration. Therefore, there is no need for a substitute statement in provisional applications.

To learn more:

• substitute statement
• provisional application
• patent application types

No, a provisional application cannot be considered a continuation-in-part (CIP). The MPEP explicitly states: An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application. (MPEP ¶ 2.06)

This distinction is important because:

• Provisional applications are not examined and do not mature into patents.
• The term ‘continuation-in-part’ is reserved for non-provisional applications that build upon prior non-provisional applications.
• The relationship between a non-provisional application and a provisional application is described as ‘claiming the benefit of’ the provisional, not as a continuation or CIP.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

No, a design patent application cannot be filed as a provisional application. The MPEP 201.01 states:

“Design applications and provisional applications for patent are considered to be distinct types of applications and are treated as separate categories.”

This means that design patent applications must be filed as nonprovisional applications. Provisional applications are only available for utility and plant patents.

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

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

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

Can a CPA be filed as a continuation-in-part application?

No, a Continued Prosecution Application (CPA) cannot be filed as a continuation-in-part application. According to MPEP 201.06(d):

‘A continuation or divisional application (but not a continuation-in-part) may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b).’

This means that while you can file a CPA as a continuation or divisional application of a prior design application, you cannot file it as a continuation-in-part. Continuation-in-part applications typically contain new matter not present in the prior application, which is not allowed in a CPA filing.

For more information on CPA, visit: CPA.

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

No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”

Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.

No, Continued Prosecution Applications (CPAs) are not available for all types of patent applications. They are specifically limited to design patent applications. This is evident from the MPEP guidance, which states:

‘Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.’

This statement clearly indicates that CPAs are associated with design applications. For utility and plant patent applications, other continuation options are available, such as:

• Continuation Applications
• Divisional Applications
• Continuation-in-Part Applications

It’s important for inventors and patent practitioners to understand these distinctions to choose the appropriate type of continuing application for their specific situation.

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

For more information on design patents, visit: design patents.

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

Continued Prosecution Applications (CPAs) are limited to specific types of patent applications:

• Design Applications: CPAs are available for design applications filed before May 29, 2000.
• Plant Applications: CPAs can be used for plant patent applications.

It’s important to note that CPAs are not available for utility patent applications filed on or after May 29, 2000. For these applications, applicants should use a Request for Continued Examination (RCE) instead.

The MPEP ¶ 2.34 provides guidance on how CPAs reference prior applications:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.

This means that for eligible applications, the CPA automatically establishes the necessary reference to the prior application without requiring amendments to the specification.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

For more information on plant patents, visit: plant patents.

The term ‘original application’ has a specific meaning in patent law, as outlined in MPEP 201.02:

‘Original’ application is used in the patent statutes and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application.

This definition is significant because it distinguishes original applications from reissue applications, which are used to correct errors in already-granted patents. Original applications encompass:

• First-time filings of new inventions
• Continuing applications (continuations, divisionals, and continuations-in-part)

Understanding this term is crucial for patent applicants and examiners, as it affects how an application is processed and what rights it may claim, particularly in terms of priority dates and the scope of patent protection.

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

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

What is the significance of a national application being made under 35 U.S.C. 111?

A national application made under 35 U.S.C. 111 signifies that it is filed directly with the United States Patent and Trademark Office (USPTO) and follows the standard U.S. patent application process.

The MPEP 201.01 states: ‘A national application is one that was filed in the United States Patent and Trademark Office (USPTO) under 35 U.S.C. 111.’ This means that the application is subject to U.S. patent laws and procedures from the outset.

Applications filed under 35 U.S.C. 111 include:

• Original (nonprovisional) applications
• Reissue applications
• Design applications
• Plant applications
• Provisional applications

These applications are distinct from international applications that enter the national stage in the U.S. under 35 U.S.C. 371.

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

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

For more information on USPTO, visit: USPTO.

What is the difference between a utility patent and a design patent application?

Utility patents and design patents protect different aspects of an invention, and their applications are processed differently. According to MPEP 201.02:

‘A utility application is a nonprovisional application that is not a design application. A design application is an application for a design patent.’

Key differences include:

• Utility Patent Application:
  • Protects the functional aspects of an invention
  • Covers how an invention works or is used
  • Has a term of 20 years from the filing date
• Design Patent Application:
  • Protects the ornamental design of a functional item
  • Covers how an invention looks
  • Has a term of 15 years from the grant date

Inventors should carefully consider which type of patent application best suits their invention’s nature and intended protection.

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

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

For more information on USPTO, visit: USPTO.

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.

There is a significant difference in how Continued Prosecution Applications (CPAs) are treated for utility/plant applications versus design applications. According to the examiner’s note in MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

This indicates that for utility or plant applications, an improper CPA request is treated as a Request for Continued Examination (RCE). However, for design applications, CPA requests are generally accepted and processed as described in MPEP ¶ 2.35. This distinction is important for applicants to understand when considering their continued prosecution options.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

A continuation-in-part (CIP) application differs from a regular continuation application in the following ways:

• A CIP application contains a portion or all of the disclosure of an earlier application and adds matter not disclosed in the earlier application.
• A regular continuation application contains the same disclosure as the earlier application without adding new matter.

As stated in 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.

To learn more:

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

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

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

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

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

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

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

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

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

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

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

To learn more:

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

The main difference between applications filed under 35 U.S.C. 111(a) and 111(b) lies in their purpose and requirements. According to MPEP 201.01:

• 35 U.S.C. 111(a) applications: These are for original (nonprovisional) patents. They require a specification, at least one claim, and drawings (when necessary).
• 35 U.S.C. 111(b) applications: These are for provisional patents. They do not require claims and are not examined on their merits.

The key differences are:

1. Examination: 111(a) applications undergo full examination, while 111(b) applications do not.
2. Duration: 111(a) applications can lead to granted patents, while 111(b) applications expire after 12 months.
3. Requirements: 111(a) applications have stricter formal requirements, including the need for claims.

Inventors often use 111(b) provisional applications to establish an early filing date before filing a more comprehensive 111(a) nonprovisional application.

For more information on 35 U.S.C. 111(a), visit: 35 U.S.C. 111(a).

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

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

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

A divisional application is defined in MPEP 201.06 as follows:

‘A later application for a distinct or independent invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.’

This definition highlights that a divisional application:

• Is filed after an initial application
• Focuses on a distinct invention
• Only includes subject matter from the original application
• Is ‘carved out’ of the pending parent application

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

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

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

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

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

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

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

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

A provisional patent application is a type of patent application that allows inventors to establish an early filing date for their invention. Key differences between provisional and nonprovisional applications include:

• Provisional applications are not examined and automatically expire after 12 months
• Provisional applications require fewer formal components than nonprovisional applications
• Provisional applications cannot directly result in a granted patent

The MPEP states: A provisional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provisional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b).

To obtain a filing date, a provisional application must include:

• A specification as prescribed by 35 U.S.C. 112(a)
• Any necessary drawings
• The appropriate filing fee

Inventors often use provisional applications to secure an early filing date while allowing additional time to prepare a more comprehensive nonprovisional application.

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

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

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

A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application. It discloses and claims only subject matter disclosed in the earlier or parent application. As stated in MPEP 201.06:

A later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application.

To learn more:

• divisional application
• patent application types
• continuation applications

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

As stated in the MPEP:

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

Key points about CIP applications:

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

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

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

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

A continuation or divisional application is a type of continuing application filed under 37 CFR 1.53(b). According to the MPEP, An application filed under 37 CFR 1.53(b) may be an original or a reissue, a continuation, a divisional, a continuation-in-part, or a substitute. These applications are filed under 35 U.S.C. 111(a) and can be for utility, design, plant, or reissue patents.

To learn more:

• continuation application
• divisional application
• 37 CFR 1.53(b)
• patent application types

To learn more:

• 37 CFR 1.53(b)

If a Continued Prosecution Application (CPA) request is improper for a utility or plant application, the USPTO handles it differently than for design applications. According to MPEP ¶ 2.35:

If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h).

In such cases, the USPTO treats the improper CPA request as a Request for Continued Examination (RCE). This approach ensures that the application can continue to be prosecuted, albeit under a different procedure. Applicants should be aware of this distinction and the potential implications for their patent prosecution strategy.

For more information on CPA, visit: CPA.

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

For more information on plant patents, visit: plant patents.

For more information on RCE, visit: RCE.

For more information on utility patents, visit: utility patents.

The USPTO assigns different series codes to various types of patent applications:

• 01/ – 16/: Nonprovisional applications (utility, plant, and reissue)
• 29/: Design applications
• 35/: International design applications
• 60/, 61/, and 62/: Provisional applications
• 90/: Ex parte reexamination proceedings
• 95/: Inter partes reexamination proceedings
• 96/: Supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP provides a detailed breakdown of series codes for nonprovisional applications from 1925 to the present. For example, ‘Series code 16 is assigned to nonprovisional applications filed from June 2018 to present.’ (MPEP 503)

Continued Prosecution Applications (CPAs) have several key differences from regular continuation applications filed under 37 CFR 1.53(b):

• CPAs are only available for design applications, not utility or plant applications
• CPAs use the same application number as the prior application
• CPAs do not require a new specification or drawings to be filed
• The filing requirements for a CPA are minimal compared to a regular continuation
• CPAs are typically processed faster than regular continuations
• Filing a CPA automatically abandons the prior application

MPEP 201.06(d) states: A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).

For more information on design patents, visit: design patents.

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

For more information on USPTO procedures, visit: USPTO procedures.

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

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

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

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

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

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

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

As stated in the MPEP:

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

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

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

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

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

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

Design and plant patent applications are two distinct types of patent applications, each protecting different aspects of inventions:

Design Patent Applications:
1. Protect the ornamental design of a functional item.
2. Cover the visual appearance of an article of manufacture.
3. Have a term of 15 years from the date of grant.
4. Require drawings or photographs of the design.
5. Do not require a written description of the invention.

Plant Patent Applications:
1. Protect new varieties of asexually reproduced plants.
2. Cover the entire plant, not just a specific part.
3. Have a term of 20 years from the filing date.
4. Require a detailed botanical description of the plant.
5. May include drawings or photographs to illustrate the plant’s characteristics.

For more information, refer to MPEP 201.06 for design patents and MPEP 201.07 for plant patents.

Provisional applications are a type of patent application that allows inventors to establish an early filing date without the formal requirements of a non-provisional application. According to MPEP 201:

‘A provisional application is a U.S. national application for patent filed in the USPTO under 35 U.S.C. 111(b).’

Key differences between provisional and non-provisional applications:

• Provisional applications have a simplified filing process and lower fees.
• They do not require formal patent claims or an oath or declaration.
• Provisional applications are not examined and automatically expire after 12 months.
• To obtain patent protection, a non-provisional application claiming benefit of the provisional must be filed within 12 months.

Non-provisional applications, on the other hand, are formal patent applications that are examined by the USPTO and can result in an issued patent if approved.

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

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

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

The United States Patent and Trademark Office (USPTO) defines different types of patent applications in the Code of Federal Regulations (CFR) and the Manual of Patent Examining Procedure (MPEP). Specifically:

• National application, Provisional application, and Nonprovisional application are defined in 37 CFR 1.9(a)
• International application is defined in 37 CFR 1.9(b)
• International design application is defined in 37 CFR 1.9(n)

These definitions provide the legal basis for understanding the different types of applications that can be filed with the USPTO. For more detailed explanations and context, refer to MPEP § 201, which provides comprehensive guidance on types and status of applications.

To learn more:

• patent application types
• USPTO definitions
• CFR
• MPEP

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.

Claiming the benefit of an earlier filing date for continuing applications (continuation, divisional, and continuation-in-part) is governed by 35 U.S.C. 120 and 37 CFR 1.78. Key points include:

• The continuing application must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The continuing application must contain a specific reference to the prior application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet (ADS).
• For applications filed before September 16, 2012, the specific reference must be in the first sentence(s) of the specification or in an ADS.
• The continuing application must have at least one common inventor with the prior application.

As stated in the MPEP:

A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.

It’s important to note that for continuation-in-part applications, any claims that rely on new matter added in the CIP will not be entitled to the benefit of the earlier filing date of the parent application.

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

A plant patent application is a specialized type of patent application designed to protect new varieties of plants. The MPEP 201 states:

A plant application is an application for a plant patent. A plant patent protects a distinct and new variety of plant that is asexually reproduced.

Key differences of plant patent applications include:

• They are specifically for asexually reproduced plants
• They protect the entire plant, not just a specific part
• They have unique requirements for description and claiming

Plant patents are less common than utility or design patents but are crucial for protecting innovations in agriculture and horticulture.

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

A divisional application discloses and claims only subject matter disclosed in the parent application, while a continuation-in-part (CIP) application may include new matter. The MPEP states:

A continuation-in-part application should not be designated as a divisional application. The Court of Appeals for the Federal Circuit has concluded that the protection of the third sentence of 35 U.S.C. 121 does not extend to continuation-in-part applications, stating that ‘the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.’

This means that divisional applications have certain protections against double patenting rejections that CIPs do not have.

To learn more:

• divisional application
• continuation-in-part application
• patent application types

Design patent applications and utility patent applications are distinct types of patent applications, each protecting different aspects of an invention. According to MPEP 201:

‘Design applications are not included in the term ‘nonprovisional’ as used in 37 CFR 1.9. […] Design applications are treated separately in 35 U.S.C. 171-173 and 37 CFR 1.151-1.155.’

Key differences include:

• Subject Matter: Utility patents protect how an invention works, while design patents protect how it looks.
• Duration: Utility patents last 20 years from filing, design patents 15 years from grant.
• Examination Process: Design applications typically have a simpler examination process.

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

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

A Continued Prosecution Application (CPA) differs from other types of continuing applications in several ways:

• CPAs are only available for design applications, not utility applications.
• Filing a CPA automatically establishes the necessary reference to the prior application under 35 U.S.C. 120, without needing to amend the specification.
• CPAs are processed differently from other continuing applications, as outlined in MPEP § 201.06(d).

The MPEP states: ‘As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.’ This unique feature distinguishes CPAs from other types of continuing applications, such as continuations or divisionals, which may require explicit references in the specification.

For more information on continuing applications, visit: continuing applications.

For more information on CPA, visit: CPA.

For more information on design patents, visit: design patents.

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

A Continued Prosecution Application (CPA) and a continuation application are both ways to continue prosecution of a patent application, but they have key differences:

• CPA: Only available for design applications filed before May 29, 2000, and for plant applications. It continues examination of the same application.
• Continuation: Available for all types of applications and creates a new application that claims priority to the parent application.

The MPEP ¶ 2.34 highlights a crucial distinction in how they reference prior applications:

As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request.

This means that for a CPA, the mere act of filing establishes the reference to the prior application. In contrast, a continuation application typically requires an explicit reference to the parent application in the specification.

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

For more information on CPA, visit: CPA.

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

A continuation-in-part (CIP) application and a provisional application are two distinct types of patent applications with different purposes and effects. The key difference is highlighted in MPEP ¶ 2.06, which states:

An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application.

This means that:

• A CIP application builds upon a prior non-provisional application, adding new disclosure while claiming the benefit of the earlier filing date for the shared content.
• A provisional application is a temporary placeholder that establishes a priority date but does not mature into a patent. It cannot be continued or have a CIP.
• Applications claiming benefit from a provisional application are typically filed as new non-provisional applications, not as CIPs.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

A continuation-in-part (CIP) application differs from a regular continuation application in that it adds new disclosure not present in the prior application. While both types of applications repeat substantial portions of a prior application, only a CIP introduces new subject matter.

The MPEP states: This application repeats a substantial portion of prior Application No.[1], filed[2], and adds disclosure not presented in the prior application. (MPEP ¶ 2.06) This additional disclosure is what sets a CIP apart from a standard continuation.

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

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

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

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

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

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

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

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

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

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

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

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

Application numbers for patent applications are assigned by the Office of Patent Application Processing (OPAP) as follows:

n

n
• Nonprovisional applications are assigned numbers beginning with the series code ’15’ or ’16’.

n

• Design applications are assigned numbers beginning with the series code ’29’.

n

• Plant applications are assigned numbers beginning with the series code ’16’.

n

• Provisional applications are assigned numbers beginning with the series code ’62’.

n

• Reexamination proceedings are assigned numbers beginning with the series code ’90’.

n

n

As stated in the MPEP 503, “The application number includes a two-digit series code and a six-digit serial number.” This system allows for efficient categorization and tracking of different types of patent applications.

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

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

For more information on series code, visit: series code.

The USPTO assigns application numbers to patent applications immediately after mail has been opened. According to MPEP 503, application numbers consist of a series code and a serial number. The series codes are assigned based on the type of application and the time period in which it was filed. For example:

• 01/ – 16/ for nonprovisional applications (utility, plant, and reissue), with different ranges for specific time periods
• 29/ for design applications
• 35/ for international design applications
• 60/, 61/, and 62/ for provisional applications
• 90/ for ex parte reexamination proceedings
• 95/ for inter partes reexamination proceedings
• 96/ for supplemental examination proceedings and resulting ex parte reexamination proceedings

The MPEP notes: “If an application is filed using the USPTO patent electronic filing system, EFS-Web provides an Acknowledgement Receipt that contains a time and date stamp, an application number and a confirmation number.”

It’s important to note that the application number on a filing receipt is the official number, which may differ from any preliminary number provided on a postcard receipt.

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

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

For more information on serial number, visit: serial number.

For more information on series code, visit: series code.

Can you file a CPA in a provisional application?

No, you cannot file a Continued Prosecution Application (CPA) in a provisional application. The MPEP 201.06(d) clearly states:

A CPA may not be filed in a provisional application.

CPAs are only available for certain types of nonprovisional applications. Specifically, they can be filed in design applications, and in utility and plant applications that were filed before May 29, 2000. Provisional applications have a different purpose and process, and do not allow for the filing of CPAs.

For more information on CPA, visit: CPA.

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

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

Can an assignee revoke power of attorney in all types of patent applications?

An assignee’s ability to revoke power of attorney applies to most, but not all, types of patent applications. According to MPEP 402.07, there are specific scenarios where this is explicitly allowed:

“For applications involved in an interference or derivation proceeding, 37 CFR 41.5(b) or 42.10(e) provides that the assignee of the entire interest in an application or patent involved in the proceeding may act to the exclusion of the inventor. For national stage applications under 35 U.S.C. 371, the assignee may revoke any power of attorney of the applicant in the national stage application filed under 35 U.S.C. 371 and appoint any representative if the assignee has properly made itself of record in the national stage application pursuant to 37 CFR 3.71.”

This means assignees can revoke power of attorney in:

• Applications involved in interference or derivation proceedings
• National stage applications under 35 U.S.C. 371

For other types of applications, the general rule applies where the assignee must first become of record and then can revoke the applicant’s power of attorney. It’s important to consult with a patent attorney or agent for specific cases to ensure compliance with USPTO regulations.

To learn more:

• power of attorney
• assignee rights
• patent application types
• USPTO procedures

Can a substitute statement be filed in a provisional application?

No, a substitute statement cannot be filed in a provisional application. According to MPEP 604:

“A substitute statement is not available for provisional applications because provisional applications do not require an inventor’s oath or declaration.”

Provisional applications have different requirements compared to non-provisional applications. They are primarily used to establish an early filing date and do not require formal claims, oath, or declaration. Therefore, there is no need for a substitute statement in provisional applications.

To learn more:

• substitute statement
• provisional application
• patent application types

No, a provisional application cannot be considered a continuation-in-part (CIP). The MPEP explicitly states: An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘continuation-in-part’ of the provisional application. (MPEP ¶ 2.06)

This distinction is important because:

• Provisional applications are not examined and do not mature into patents.
• The term ‘continuation-in-part’ is reserved for non-provisional applications that build upon prior non-provisional applications.
• The relationship between a non-provisional application and a provisional application is described as ‘claiming the benefit of’ the provisional, not as a continuation or CIP.

For more information on 35 U.S.C. 119(e), visit: 35 U.S.C. 119(e).

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

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

No, a design patent application cannot be filed as a provisional application. The MPEP 201.01 states:

“Design applications and provisional applications for patent are considered to be distinct types of applications and are treated as separate categories.”

This means that design patent applications must be filed as nonprovisional applications. Provisional applications are only available for utility and plant patents.

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

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

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

Can a CPA be filed as a continuation-in-part application?

No, a Continued Prosecution Application (CPA) cannot be filed as a continuation-in-part application. According to MPEP 201.06(d):

‘A continuation or divisional application (but not a continuation-in-part) may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b).’

This means that while you can file a CPA as a continuation or divisional application of a prior design application, you cannot file it as a continuation-in-part. Continuation-in-part applications typically contain new matter not present in the prior application, which is not allowed in a CPA filing.

For more information on CPA, visit: CPA.

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

No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).”

Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types of patent application filings.

No, Continued Prosecution Applications (CPAs) are not available for all types of patent applications. They are specifically limited to design patent applications. This is evident from the MPEP guidance, which states:

‘Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.’

This statement clearly indicates that CPAs are associated with design applications. For utility and plant patent applications, other continuation options are available, such as:

• Continuation Applications
• Divisional Applications
• Continuation-in-Part Applications

It’s important for inventors and patent practitioners to understand these distinctions to choose the appropriate type of continuing application for their specific situation.

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

For more information on design patents, visit: design patents.

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