Patent Law FAQ

Certain information about patent applications is publicly available, even if the full application is not. According to 37 CFR 1.14(a)(1)(ii) and (iii), for published applications, the following information may be communicated without a petition for access:

• Whether the application is pending, abandoned, or patented
• Whether the application has been published under 35 U.S.C. 122(b)
• The application “numerical identifier” (application number or serial number plus filing date)
• Whether another application claims the benefit of the application

For published applications, “A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in §1.19(b).”

However, for unpublished applications, this information is generally not available to the public unless the application is identified or relied upon in a patent document or other published application.

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

For more information on public information, visit: public information.

No, a suspended or excluded practitioner cannot inspect patent applications. According to MPEP 105, “Power to inspect given to such an attorney or agent will not be accepted.” This means that the USPTO will not allow suspended or excluded practitioners to access or review patent applications, even if they are given permission by the applicant.

To learn more:

• Patent Applications
• Suspended Practitioners
• Excluded Practitioners
• USPTO Procedures
• Patent Inspection

Generally, no. MPEP 105 states: “U.S. Patent and Trademark Office (USPTO) employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application.” This prohibition applies to all forms of communication about patent applications with suspended or excluded practitioners.

To learn more:

• USPTO Employees
• Communication Rules
• Suspended Practitioners
• Excluded Practitioners
• Patent Applications

The process for obtaining a foreign filing license is part of the USPTO’s screening procedure for patent applications. The MPEP states:

A third function of the screening procedure is to process foreign filing license petitions under37 CFR 5.12(a). SeeMPEP § 140.

The foreign filing license is automatically granted in most cases as part of the application filing process. However, if the application contains subject matter that requires further review, the applicant may need to petition for a foreign filing license separately.

To obtain a foreign filing license, applicants should:

1. File a patent application with the USPTO
2. Wait for the automatic screening process to complete
3. If a license is not automatically granted, file a petition under 37 CFR 5.12(a)
4. Provide any additional information requested by the USPTO

It’s important to note that filing an application abroad without first obtaining a foreign filing license can have serious consequences, including abandonment of the U.S. application and potential criminal penalties.

For more information on foreign filing license, visit: foreign filing license.

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

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

A Secrecy Order is a directive issued by the Commissioner for Patents to keep an invention secret and withhold the publication of a patent application or the grant of a patent. It is issued when:

1. A defense agency concludes that disclosure of the invention would be detrimental to national security
2. The agency recommends a Secrecy Order to the Commissioner for Patents

According to 35 U.S.C. 181, Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter.

The Secrecy Order remains in effect for such period as the national interest requires, effectively preventing public disclosure of the invention.

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

The USPTO has specific procedures for handling applications in which the government may have a property interest. According to the MPEP:

For those applications in which the Government has a property interest (including applications indicating national security classified subject matter), responsibility for notifying the Commissioner for Patents of the need for a Secrecy Order resides with the agency having that interest.

Additionally, the screening process identifies inventions that may be of interest to specific government agencies:

A second purpose for the screening of all applications, with an exception for provisional applications, is to identify inventions in which DOE or NASA might have property rights. See42 U.S.C. 2182,51 U.S.C. 20135, andMPEP § 150.

This process ensures that government agencies are notified of inventions that may fall under their purview and allows them to take appropriate action, such as requesting a Secrecy Order if necessary.

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

Secrecy order applications require special handling procedures to maintain their confidentiality. According to MPEP 130:

Applications and papers in the application file, as well as any related papers, must be safeguarded from disclosure to unauthorized persons and must be securely kept in a locked area when not actually in use.

Additionally:

• Secrecy order cases should not be processed on any automated information system (AIS) unless the AIS is certified for classified processing.
• All processing should be done in a secure environment by personnel with appropriate clearances.
• Special care must be taken to prevent inadvertent disclosure of classified information.

For more information on classified information, visit: classified information.

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

Secrecy order applications are subject to strict restrictions on foreign filing to protect national security. The MPEP 130 outlines these restrictions:

A secrecy order bars the filing of a foreign application based on the application under secrecy order without prior license from the Commissioner for Patents.

Key points regarding foreign filing restrictions:

• Filing a foreign application without authorization is prohibited.
• A license from the Commissioner for Patents is required for any foreign filing.
• Unauthorized foreign filing can result in severe penalties, including abandonment of the application.
• These restrictions are in place to prevent disclosure of sensitive information to foreign entities.

Inventors and applicants must be aware of these restrictions to avoid legal complications and potential national security breaches.

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

According to MPEP 150, property rights statements to DOE or NASA can be filed at any time, but they should be kept up-to-date to reflect accurate property rights at the time of application allowance. The MPEP states:

Property rights statements to DOE or NASA may be filed at any time but should be updated if necessary to accurately reflect property rights at the time the application is allowed.

Additionally, the USPTO typically sends an informal request for a property rights statement shortly after filing to applicants whose nonprovisional applications are marked as being of interest to DOE or NASA. While there’s no formal time period set, a response within 45 days is recommended to expedite processing.

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

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

Patent applications that appear to disclose, purport to disclose, or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy. The purpose is to allow the DOE access to these applications for review.

As stated in MPEP 150: Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. However, it’s important to note that Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).

For more information on invention disclosure, visit: invention disclosure.

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

For inventions related to atomic energy, applicants must file a statement under oath with specific information. According to 42 U.S.C. 2182, this statement should include:

• Full facts surrounding the making or conception of the invention
• Whether the invention was made or conceived under any contract or arrangement with the Commission (now DOE)
• Whether the contract involved the expenditure of funds by the Commission

The law states: No patent for any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application, or within thirty days after request therefor by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery described in the application and whether the invention or discovery was made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission.

For more information on invention disclosure, visit: invention disclosure.

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

If an applicant fails to respond to a request for a property rights statement, there can be serious consequences for the patent application. According to MPEP 150:

If no proper and timely statement is received, the application will be held abandoned and the applicant so notified.

The process typically involves:

• An initial informal request (45-Day Letter)
• If no response or if the statement is defective, a formal request is made with a 30-day statutory period for response
• No extensions are available for this 30-day period
• Failure to respond properly results in the application being held abandoned

However, abandoned applications may be revived under the provisions of 37 CFR 1.137, as noted in the case of In re Rutan, 231 USPQ 864 (Comm’r Pat. 1986).

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

For more information on revival, visit: revival.

For inventions related to aeronautical and space activities, applicants must file a statement with specific information if requested by the USPTO. According to 51 U.S.C. 20135:

No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration.

This statement should include:

• Full facts about the circumstances of the invention’s creation
• The relationship, if any, between the invention and work performed under any NASA contract

For more information on invention disclosure, visit: invention disclosure.

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

Filing dates are crucial in patent law as they establish priority and can affect the patentability of an invention. The MPEP 201.02 discusses various application types and their relationship to filing dates:

• Original applications (including first filings and continuing applications) generally retain their filing date for priority purposes.
• Continuing applications (continuations, divisionals, and continuations-in-part) can benefit from the filing date of the parent application under specific conditions outlined in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
• Substitute applications, however, do not obtain the benefit of the filing date of the prior application.

The MPEP states:

A substitute application does not obtain the benefit of the filing date of the prior application.

This emphasizes the importance of maintaining active applications and understanding the implications of different application types on priority dates.

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

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

The priority document exchange program is a system that allows participating patent offices to exchange priority documents electronically. According to MPEP 215.02(a):

“Applicants may use the priority document exchange program to obtain a copy of a foreign application filed in a participating foreign intellectual property office.”

This program simplifies the process of obtaining priority documents for patent applications filed in multiple countries.

To learn more:

• priority document exchange
• patent applications
• foreign applications

Incorporating by reference in patent applications can have significant impacts:

• It allows applicants to include the content of another document without reproducing it in full.
• The incorporated material becomes part of the application as if it were explicitly included.
• It can provide support for claims and help meet disclosure requirements.

MPEP 211.05 mentions:

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

This highlights the importance of including incorporation by reference statements at the time of filing to ensure their effectiveness. Applicants should carefully consider what materials to incorporate and ensure they are properly referenced to support their claims and meet disclosure requirements.

To learn more:

• incorporating by reference
• patent applications
• disclosure requirements
• claim support

The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d). According to MPEP ¶ 2.03:

“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”

In summary:

• For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly incorporated.
• For 37 CFR 1.53(d) applications: Affidavits from the parent application are automatically included.

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

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

A continuation application and a divisional application are both types of continuing applications, but they serve different purposes:

• Continuation application: Used to pursue additional claims to an invention disclosed in a prior application. It contains the same disclosure as the parent application.
• Divisional application: Used to pursue claims to an invention that was disclosed but not claimed in a prior application. It typically results from a restriction requirement in the parent application.

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.” In contrast, a divisional application focuses on a distinct invention that was not claimed in the parent application.

To learn more:

• continuation application
• divisional application
• continuing applications
• patent applications

The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d):

• 37 CFR 1.53(b) applications: Affidavits and declarations from prior applications do not automatically become part of the new application.
• 37 CFR 1.53(d) applications: Affidavits and declarations filed during the prosecution of the parent nonprovisional application automatically become part of the new application.

As noted in MPEP ¶ 2.03: Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.

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

Copendency refers to the requirement that a later-filed application claiming the benefit of a prior-filed nonprovisional application must be filed before:

• (A) the patenting of the prior application;
• (B) the abandonment of the prior application; or
• (C) the termination of proceedings in the prior application.

As stated in MPEP 211.01(b):

“If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application.”

This means that to maintain copendency, applicants should file any continuing applications no later than the date the issue fee is paid for the prior application.

To learn more:

• copendency
• patent applications
• continuing applications
• filing dates

Design patent applications and utility patent applications are two distinct types of patent applications that protect different aspects of inventions. According to MPEP 201:

• Design Patent Application: “An application for a design patent filed under 35 U.S.C. 171 may be referred to as a design application.” Design patents protect the ornamental appearance of an article of manufacture.
• Utility Patent Application: These applications protect the functional aspects of an invention, including processes, machines, articles of manufacture, and compositions of matter.

The key differences are:

1. Subject Matter: Design patents cover appearance, while utility patents cover functionality.
2. Duration: Design patents last for 15 years from issuance, while utility patents last for 20 years from the filing date.
3. Examination Process: Design patent applications typically have a simpler examination process.

For more details on utility patents, refer to 35 U.S.C. 101, and for design patents, see 35 U.S.C. 171.

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

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

A Continued Prosecution Application (CPA) is a type of continuation or divisional application that can be filed for design patent applications under 37 CFR 1.53(d). It allows an applicant to continue prosecution of a prior design application. As stated in the MPEP:

A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;

CPAs can only be filed before the earliest of: payment of the issue fee, abandonment, or termination of proceedings on the prior application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

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

The inventorship in a Continued Prosecution Application (CPA) generally carries over from the prior application, unless specific steps are taken to change it. The MPEP states:

The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

If an inventor needs to be added or deleted in a CPA after it has been filed, a request under 37 CFR 1.48 must be submitted, along with the required fee.

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

When filing a Continued Prosecution Application (CPA), previously filed Information Disclosure Statements (IDS) are handled as follows:

• All IDSs filed in the prior application that comply with 37 CFR 1.98 are automatically considered in the CPA
• No specific request is needed for the examiner to consider the previously submitted information
• New IDSs can be filed in the CPA and will be considered if they comply with the content requirements and are filed before the first Office action

The MPEP states: All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner. No specific request that the previously submitted information be considered in a CPA is required.

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

When an improper Continued Prosecution Application (CPA) is filed, the USPTO’s response depends on the type of application and the nature of the impropriety:

• For utility or plant applications filed on or after July 14, 2003, an improper CPA is treated as a Request for Continued Examination (RCE) if possible
• If the improper CPA doesn’t meet RCE requirements, it’s treated as an improper RCE
• For design applications, an improper CPA may be treated as a new application under 37 CFR 1.53(b) in some circumstances
• The Office will not automatically convert an improper CPA to an application under 37 CFR 1.53(b) without extenuating circumstances

The MPEP states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed.

Regarding treatment as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

If the improper CPA doesn’t meet RCE requirements: If the improper CPA does not satisfy the requirements of 37 CFR 1.114 (e.g., the request lacks a submission or the fee under 37 CFR 1.17(e), or the prosecution of the application is not closed), the Office treats the improper CPA as an improper RCE, and the time period set in the last Office action (or notice) will continue to run.

Examiners are instructed to notify supervisory staff if they discover an improper CPA has been processed: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the Technology Center (TC) who will reprocess the CPA and correct the application records as appropriate.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

Copendency refers to the requirement that two related patent applications must be pending at the same time for one to claim the benefit of the earlier filing date of the other. The MPEP states:

Copendency between the current application and the prior application is required.

This means that the later application must be filed before the earlier application is either abandoned or issued as a patent. Copendency is crucial for maintaining a continuous chain of priority between related applications.

For more information on copendency, visit: copendency.

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

The MPEP 201 outlines several main types of patent applications:

• Nonprovisional applications for patent
• Provisional applications for patent
• International applications
• Design applications
• Plant applications
• Reissue applications
• Divisional applications
• Continuation applications
• Continuation-in-part applications

Each type serves a specific purpose in the patent application process and has its own requirements and procedures.

For more information on divisional, visit: divisional.

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

For more information on reissue, visit: reissue.

There are several types of patent applications in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a), including utility, plant, and design patent applications
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications filed under the Patent Cooperation Treaty (PCT)
• International design applications filed under the Hague Agreement

The MPEP states: Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).

For more information on Hague Agreement, visit: Hague Agreement.

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

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

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

The Manual of Patent Examining Procedure (MPEP) outlines several general terms used to describe patent applications:

• National application
• Provisional application
• Nonprovisional application
• International application
• International design application
• Original application
• Continuing application
• Substitute application

These terms are defined in various sections of 37 CFR 1.9 and further explained in MPEP § 201.

To learn more:

• patent applications
• MPEP terminology
• patent law definitions

According to MPEP 201.02, there are several types of patent applications:

• National applications
• Provisional applications
• Nonprovisional applications
• International applications
• International design applications

The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.

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

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

For more information on international design applications, visit: international design applications.

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

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

The United States Patent and Trademark Office (USPTO) recognizes several types of patent applications. According to MPEP 201, these include:

• Nonprovisional applications for patent, including utility, design, and plant patent applications
• Provisional applications for patent
• International applications filed under the Patent Cooperation Treaty (PCT)
• Reissue applications
• Divisional applications
• Continuation applications
• Continuation-in-part applications

Each type of application serves a specific purpose in the patent process and has its own requirements and procedures.

For more information on divisional, visit: divisional.

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

For more information on reissue, visit: reissue.

For more information on USPTO, visit: USPTO.

Filing a Continued Prosecution Application (CPA) for design patents has several advantages over filing a regular continuation application under 37 CFR 1.53(b):

• Minimal filing requirements – only a request on a separate paper and the filing fee are needed
• No new oath or declaration is required
• Faster processing – the CPA uses the file and contents of the prior application
• Potentially faster examination – CPAs are often treated as “amended” applications for examination priority
• No need for a new specification or drawings

The MPEP notes: “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 continuation applications, visit: continuation applications.

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

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

The filing date of a Continued Prosecution Application (CPA) is determined by the date on which a proper request for a CPA is filed. Specifically, the MPEP states:

The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed.

It’s important to note that the CPA request must be on a separate paper. If the request is not on a separate paper, it will not be considered a proper CPA request and will not receive a filing date.

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

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

The filing date of a Continued Prosecution Application (CPA) is determined differently from other types of patent applications. For a CPA, the filing date is the date on which a request for a CPA is filed on a separate paper.

The MPEP states: The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed.

This means that unlike regular applications where the filing date is typically the date all required components are received, a CPA’s filing date is based solely on when the CPA request is submitted, provided it meets the necessary requirements.

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

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

The filing of a Continued Prosecution Application (CPA) has significant effects on the prior application:

• The CPA is considered a request to expressly abandon the prior application as of the filing date of the CPA
• The prior application is automatically abandoned in favor of the CPA
• The filing date of the CPA is the date on which the request for the CPA is filed

As stated in the MPEP: The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:… (v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.

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

Inventorship in a Continued Prosecution Application (CPA) generally carries over from the prior application, but there are some important considerations:

• The inventive entity of the CPA is automatically the same as the prior application unless a statement is filed requesting deletion of inventors
• A statement requesting deletion of inventors must be filed with the CPA request and signed by a person authorized under 37 CFR 1.33(b)
• New inventors cannot be added simply by naming them in the CPA transmittal letter or a new oath/declaration
• To add new inventors, a request under 37 CFR 1.48 must be filed, including the required fee

The MPEP states: The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

If an inventor is named in the CPA who was not in the prior application, the examiner will notify the applicant using form paragraph 2.33:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

Filing a Continued Prosecution Application (CPA) has implications for the confidentiality of the application under 35 U.S.C. 122:

• Filing a CPA is construed as a waiver of confidentiality to a certain extent
• Members of the public entitled to access the prior application may be given similar access to the CPA and other related applications
• This waiver applies to the entire chain of related applications

The MPEP states: A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

For more information on 35 U.S.C. 122, visit: 35 U.S.C. 122.

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

For more information on public access, visit: public access.

Copendency is a crucial requirement for claiming benefit between nonprovisional applications. The later-filed application must be filed before:

• The patenting of the prior application
• The abandonment of the prior application
• The termination of proceedings in the prior application

As stated in MPEP 211.01(b): When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application.

If copendency is not maintained, the benefit claim is improper and the later-filed application cannot claim the earlier filing date of the prior application.

To learn more:

• copendency
• benefit claims
• continuation applications
• patent applications

Confidentiality in Continued Prosecution Applications (CPAs) is handled differently from standard applications. Filing a CPA includes a waiver of confidentiality to some extent:

• The CPA is construed to include a waiver of confidentiality under 35 U.S.C. 122
• This waiver allows public access to both the prior application and any continuing applications filed under 37 CFR 1.53(d)
• Access is limited to those entitled under 37 CFR 1.14 to obtain information about the applications

The MPEP states: A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

This means that if someone is entitled to access information about either the prior application or the CPA, they may be given similar access to information about both applications. This is different from the standard confidentiality provisions for pending applications.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

A Continued Prosecution Application (CPA) automatically maintains the priority claim to its parent application without requiring a separate reference. The CPA itself serves as the specific reference required under 35 U.S.C. 120.

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

This means that filing a CPA automatically establishes a priority claim to the parent application and any earlier applications in the priority chain without additional paperwork.

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

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

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

Continued Prosecution Applications (CPAs) automatically carry over certain aspects from the parent application. Specifically:

• Priority claims under 35 U.S.C. 119(a)-(d) made in the parent application automatically carry over to a CPA.
• A terminal disclaimer filed in the parent application carries over to a CPA.

The MPEP explains: Priority claims under 35 U.S.C. 119(a)-(d) made in a parent application will automatically carry over to a CPA. A terminal disclaimer filed in the parent application carries over to a CPA.

This automatic carry-over occurs because the CPA retains the same application number as the parent application.

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

A Continued Prosecution Application (CPA) automatically maintains the benefit claim to the prior application under 35 U.S.C. 120 without requiring a separate statement. Key points include:

• The CPA request itself serves as the specific reference required by 35 U.S.C. 120
• No amendment to the specification or application data sheet is needed to maintain the benefit claim
• The benefit claim extends to all applications in a chain of CPAs

As stated in the MPEP: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

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

37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.

The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.

If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

For more information on incorporation by reference, visit: incorporation by reference.

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

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

For more information on benefit claims, visit: benefit claims.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

The USPTO handles improper Continued Prosecution Application (CPA) requests in the following ways:

1. For utility or plant applications filed on or after July 14, 2003, improper CPA requests are treated as requests for continued examination (RCE) under 37 CFR 1.114 if the application has a filing date on or after June 8, 1995.
2. If the improper CPA doesn’t satisfy RCE requirements, it’s treated as an improper RCE, and the time period set in the last Office action continues to run.
3. For applications with a filing date before June 8, 1995, the Office will notify the applicant of the improper CPA by mailing a notice.
4. If an examiner discovers an improperly processed CPA, they should immediately notify a supervisory applications examiner (SAE) or other technical support staff to correct the application records.
5. The Office will not convert an improper CPA into an application under 37 CFR 1.53(b) unless there are extenuating circumstances.

As stated in the MPEP: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the TC who will reprocess the CPA and correct the application records as appropriate.

It’s important to note that if the application becomes abandoned due to an improper CPA, the applicant may need to file a petition under 37 CFR 1.137 to revive the application and pay the required fees.

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

For more information on RCE, visit: RCE.

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

Continued Prosecution Applications (CPAs) and Requests for Continued Examination (RCEs) are both methods to continue prosecution of an application, but they have significant differences:

• CPAs are only available for design patent applications, while RCEs can be used for utility, plant, and design applications
• CPAs result in a new application with the same application number, while RCEs continue examination of the same application
• CPAs can only be filed before payment of the issue fee, abandonment, or termination of proceedings; RCEs can be filed after payment of the issue fee with a petition
• CPAs automatically abandon the prior application, while RCEs do not

The MPEP states: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. Henceforth, applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE) under 37 CFR 1.114.

It’s important to note that if an improper CPA is filed for a utility or plant application on or after July 14, 2003, it may be treated as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

The inventorship in a Continued Prosecution Application (CPA) generally remains the same as in the prior application, but it can be changed under certain circumstances:

• The inventorship automatically carries over from the prior application unless a statement is filed requesting deletion of inventors
• Inventors can be deleted by filing a statement with the CPA request
• Adding new inventors requires a request under 37 CFR 1.48 after the CPA is filed

The MPEP states: The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

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

Amendments can be made when filing a Continued Prosecution Application (CPA), but there are important restrictions and considerations:

• Any changes must be made as an amendment to the prior application as it existed before filing the CPA
• No new matter can be introduced in a CPA
• Preliminary amendments filed with a CPA are generally entered, but could be denied entry if they unduly interfere with examination
• New specifications filed with a CPA request are treated as substitute specifications and must comply with 37 CFR 1.125

The MPEP states: Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application.

Regarding preliminary amendments, the MPEP advises: Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.

If more time is needed to prepare amendments, applicants can request a three-month suspension of action under 37 CFR 1.103(b) at the time of filing the CPA.

For more information on amendments, visit: amendments.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.

Cross-noting in patent applications refers to the process of recording and verifying information about prior applications, including U.S. and foreign applications, for which benefit or priority is claimed. This information is typically noted on the bibliographic data (bib-data) sheet of the application and is used to ensure accurate representation of priority claims on the front page of a printed patent.

According to MPEP 202, “The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.”

If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.

To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:

1. File an amendment to include the omitted material within the time period set by the USPTO
2. Ensure the amendment is filed before the close of prosecution or abandonment of the application
3. Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
4. Provide an English translation if the prior-filed application is in a foreign language
5. Identify where the omitted material can be found in the prior-filed application

The MPEP states: “The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”

Filing dates are crucial in patent law as they establish priority and can affect the patentability of an invention. The MPEP 201.02 discusses various application types and their relationship to filing dates:

• Original applications (including first filings and continuing applications) generally retain their filing date for priority purposes.
• Continuing applications (continuations, divisionals, and continuations-in-part) can benefit from the filing date of the parent application under specific conditions outlined in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
• Substitute applications, however, do not obtain the benefit of the filing date of the prior application.

The MPEP states:

A substitute application does not obtain the benefit of the filing date of the prior application.

This emphasizes the importance of maintaining active applications and understanding the implications of different application types on priority dates.

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

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

The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d). According to MPEP ¶ 2.03:

“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”

In summary:

• For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly incorporated.
• For 37 CFR 1.53(d) applications: Affidavits from the parent application are automatically included.

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

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

The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d):

• 37 CFR 1.53(b) applications: Affidavits and declarations from prior applications do not automatically become part of the new application.
• 37 CFR 1.53(d) applications: Affidavits and declarations filed during the prosecution of the parent nonprovisional application automatically become part of the new application.

As noted in MPEP ¶ 2.03: Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.

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

Design patent applications and utility patent applications are two distinct types of patent applications that protect different aspects of inventions. According to MPEP 201:

• Design Patent Application: “An application for a design patent filed under 35 U.S.C. 171 may be referred to as a design application.” Design patents protect the ornamental appearance of an article of manufacture.
• Utility Patent Application: These applications protect the functional aspects of an invention, including processes, machines, articles of manufacture, and compositions of matter.

The key differences are:

1. Subject Matter: Design patents cover appearance, while utility patents cover functionality.
2. Duration: Design patents last for 15 years from issuance, while utility patents last for 20 years from the filing date.
3. Examination Process: Design patent applications typically have a simpler examination process.

For more details on utility patents, refer to 35 U.S.C. 101, and for design patents, see 35 U.S.C. 171.

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

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

A Continued Prosecution Application (CPA) is a type of continuation or divisional application that can be filed for design patent applications under 37 CFR 1.53(d). It allows an applicant to continue prosecution of a prior design application. As stated in the MPEP:

A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;

CPAs can only be filed before the earliest of: payment of the issue fee, abandonment, or termination of proceedings on the prior application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

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

The inventorship in a Continued Prosecution Application (CPA) generally carries over from the prior application, unless specific steps are taken to change it. The MPEP states:

The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

If an inventor needs to be added or deleted in a CPA after it has been filed, a request under 37 CFR 1.48 must be submitted, along with the required fee.

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

When filing a Continued Prosecution Application (CPA), previously filed Information Disclosure Statements (IDS) are handled as follows:

• All IDSs filed in the prior application that comply with 37 CFR 1.98 are automatically considered in the CPA
• No specific request is needed for the examiner to consider the previously submitted information
• New IDSs can be filed in the CPA and will be considered if they comply with the content requirements and are filed before the first Office action

The MPEP states: All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner. No specific request that the previously submitted information be considered in a CPA is required.

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

When an improper Continued Prosecution Application (CPA) is filed, the USPTO’s response depends on the type of application and the nature of the impropriety:

• For utility or plant applications filed on or after July 14, 2003, an improper CPA is treated as a Request for Continued Examination (RCE) if possible
• If the improper CPA doesn’t meet RCE requirements, it’s treated as an improper RCE
• For design applications, an improper CPA may be treated as a new application under 37 CFR 1.53(b) in some circumstances
• The Office will not automatically convert an improper CPA to an application under 37 CFR 1.53(b) without extenuating circumstances

The MPEP states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed.

Regarding treatment as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

If the improper CPA doesn’t meet RCE requirements: If the improper CPA does not satisfy the requirements of 37 CFR 1.114 (e.g., the request lacks a submission or the fee under 37 CFR 1.17(e), or the prosecution of the application is not closed), the Office treats the improper CPA as an improper RCE, and the time period set in the last Office action (or notice) will continue to run.

Examiners are instructed to notify supervisory staff if they discover an improper CPA has been processed: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the Technology Center (TC) who will reprocess the CPA and correct the application records as appropriate.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

The MPEP 201 outlines several main types of patent applications:

• Nonprovisional applications for patent
• Provisional applications for patent
• International applications
• Design applications
• Plant applications
• Reissue applications
• Divisional applications
• Continuation applications
• Continuation-in-part applications

Each type serves a specific purpose in the patent application process and has its own requirements and procedures.

For more information on divisional, visit: divisional.

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

For more information on reissue, visit: reissue.

There are several types of patent applications in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a), including utility, plant, and design patent applications
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications filed under the Patent Cooperation Treaty (PCT)
• International design applications filed under the Hague Agreement

The MPEP states: Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).

For more information on Hague Agreement, visit: Hague Agreement.

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

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

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

According to MPEP 201.02, there are several types of patent applications:

• National applications
• Provisional applications
• Nonprovisional applications
• International applications
• International design applications

The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.

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

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

For more information on international design applications, visit: international design applications.

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

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

The United States Patent and Trademark Office (USPTO) recognizes several types of patent applications. According to MPEP 201, these include:

• Nonprovisional applications for patent, including utility, design, and plant patent applications
• Provisional applications for patent
• International applications filed under the Patent Cooperation Treaty (PCT)
• Reissue applications
• Divisional applications
• Continuation applications
• Continuation-in-part applications

Each type of application serves a specific purpose in the patent process and has its own requirements and procedures.

For more information on divisional, visit: divisional.

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

For more information on reissue, visit: reissue.

For more information on USPTO, visit: USPTO.

Filing a Continued Prosecution Application (CPA) for design patents has several advantages over filing a regular continuation application under 37 CFR 1.53(b):

• Minimal filing requirements – only a request on a separate paper and the filing fee are needed
• No new oath or declaration is required
• Faster processing – the CPA uses the file and contents of the prior application
• Potentially faster examination – CPAs are often treated as “amended” applications for examination priority
• No need for a new specification or drawings

The MPEP notes: “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 continuation applications, visit: continuation applications.

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

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

The filing date of a Continued Prosecution Application (CPA) is determined by the date on which a proper request for a CPA is filed. Specifically, the MPEP states:

The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed.

It’s important to note that the CPA request must be on a separate paper. If the request is not on a separate paper, it will not be considered a proper CPA request and will not receive a filing date.

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

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

The filing date of a Continued Prosecution Application (CPA) is determined differently from other types of patent applications. For a CPA, the filing date is the date on which a request for a CPA is filed on a separate paper.

The MPEP states: The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed.

This means that unlike regular applications where the filing date is typically the date all required components are received, a CPA’s filing date is based solely on when the CPA request is submitted, provided it meets the necessary requirements.

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

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

The filing of a Continued Prosecution Application (CPA) has significant effects on the prior application:

• The CPA is considered a request to expressly abandon the prior application as of the filing date of the CPA
• The prior application is automatically abandoned in favor of the CPA
• The filing date of the CPA is the date on which the request for the CPA is filed

As stated in the MPEP: The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:… (v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.

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

Inventorship in a Continued Prosecution Application (CPA) generally carries over from the prior application, but there are some important considerations:

• The inventive entity of the CPA is automatically the same as the prior application unless a statement is filed requesting deletion of inventors
• A statement requesting deletion of inventors must be filed with the CPA request and signed by a person authorized under 37 CFR 1.33(b)
• New inventors cannot be added simply by naming them in the CPA transmittal letter or a new oath/declaration
• To add new inventors, a request under 37 CFR 1.48 must be filed, including the required fee

The MPEP states: The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

If an inventor is named in the CPA who was not in the prior application, the examiner will notify the applicant using form paragraph 2.33:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

Filing a Continued Prosecution Application (CPA) has implications for the confidentiality of the application under 35 U.S.C. 122:

• Filing a CPA is construed as a waiver of confidentiality to a certain extent
• Members of the public entitled to access the prior application may be given similar access to the CPA and other related applications
• This waiver applies to the entire chain of related applications

The MPEP states: A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

For more information on 35 U.S.C. 122, visit: 35 U.S.C. 122.

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

For more information on public access, visit: public access.

Confidentiality in Continued Prosecution Applications (CPAs) is handled differently from standard applications. Filing a CPA includes a waiver of confidentiality to some extent:

• The CPA is construed to include a waiver of confidentiality under 35 U.S.C. 122
• This waiver allows public access to both the prior application and any continuing applications filed under 37 CFR 1.53(d)
• Access is limited to those entitled under 37 CFR 1.14 to obtain information about the applications

The MPEP states: A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

This means that if someone is entitled to access information about either the prior application or the CPA, they may be given similar access to information about both applications. This is different from the standard confidentiality provisions for pending applications.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

A Continued Prosecution Application (CPA) automatically maintains the priority claim to its parent application without requiring a separate reference. The CPA itself serves as the specific reference required under 35 U.S.C. 120.

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

This means that filing a CPA automatically establishes a priority claim to the parent application and any earlier applications in the priority chain without additional paperwork.

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

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

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

Continued Prosecution Applications (CPAs) automatically carry over certain aspects from the parent application. Specifically:

• Priority claims under 35 U.S.C. 119(a)-(d) made in the parent application automatically carry over to a CPA.
• A terminal disclaimer filed in the parent application carries over to a CPA.

The MPEP explains: Priority claims under 35 U.S.C. 119(a)-(d) made in a parent application will automatically carry over to a CPA. A terminal disclaimer filed in the parent application carries over to a CPA.

This automatic carry-over occurs because the CPA retains the same application number as the parent application.

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

A Continued Prosecution Application (CPA) automatically maintains the benefit claim to the prior application under 35 U.S.C. 120 without requiring a separate statement. Key points include:

• The CPA request itself serves as the specific reference required by 35 U.S.C. 120
• No amendment to the specification or application data sheet is needed to maintain the benefit claim
• The benefit claim extends to all applications in a chain of CPAs

As stated in the MPEP: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

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

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

For more information on benefit claims, visit: benefit claims.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

The USPTO handles improper Continued Prosecution Application (CPA) requests in the following ways:

1. For utility or plant applications filed on or after July 14, 2003, improper CPA requests are treated as requests for continued examination (RCE) under 37 CFR 1.114 if the application has a filing date on or after June 8, 1995.
2. If the improper CPA doesn’t satisfy RCE requirements, it’s treated as an improper RCE, and the time period set in the last Office action continues to run.
3. For applications with a filing date before June 8, 1995, the Office will notify the applicant of the improper CPA by mailing a notice.
4. If an examiner discovers an improperly processed CPA, they should immediately notify a supervisory applications examiner (SAE) or other technical support staff to correct the application records.
5. The Office will not convert an improper CPA into an application under 37 CFR 1.53(b) unless there are extenuating circumstances.

As stated in the MPEP: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the TC who will reprocess the CPA and correct the application records as appropriate.

It’s important to note that if the application becomes abandoned due to an improper CPA, the applicant may need to file a petition under 37 CFR 1.137 to revive the application and pay the required fees.

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

For more information on RCE, visit: RCE.

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

Continued Prosecution Applications (CPAs) and Requests for Continued Examination (RCEs) are both methods to continue prosecution of an application, but they have significant differences:

• CPAs are only available for design patent applications, while RCEs can be used for utility, plant, and design applications
• CPAs result in a new application with the same application number, while RCEs continue examination of the same application
• CPAs can only be filed before payment of the issue fee, abandonment, or termination of proceedings; RCEs can be filed after payment of the issue fee with a petition
• CPAs automatically abandon the prior application, while RCEs do not

The MPEP states: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. Henceforth, applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE) under 37 CFR 1.114.

It’s important to note that if an improper CPA is filed for a utility or plant application on or after July 14, 2003, it may be treated as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

The inventorship in a Continued Prosecution Application (CPA) generally remains the same as in the prior application, but it can be changed under certain circumstances:

• The inventorship automatically carries over from the prior application unless a statement is filed requesting deletion of inventors
• Inventors can be deleted by filing a statement with the CPA request
• Adding new inventors requires a request under 37 CFR 1.48 after the CPA is filed

The MPEP states: The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

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

Amendments can be made when filing a Continued Prosecution Application (CPA), but there are important restrictions and considerations:

• Any changes must be made as an amendment to the prior application as it existed before filing the CPA
• No new matter can be introduced in a CPA
• Preliminary amendments filed with a CPA are generally entered, but could be denied entry if they unduly interfere with examination
• New specifications filed with a CPA request are treated as substitute specifications and must comply with 37 CFR 1.125

The MPEP states: Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application.

Regarding preliminary amendments, the MPEP advises: Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.

If more time is needed to prepare amendments, applicants can request a three-month suspension of action under 37 CFR 1.103(b) at the time of filing the CPA.

For more information on amendments, visit: amendments.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

Cross-noting in patent applications refers to the process of recording and verifying information about prior applications, including U.S. and foreign applications, for which benefit or priority is claimed. This information is typically noted on the bibliographic data (bib-data) sheet of the application and is used to ensure accurate representation of priority claims on the front page of a printed patent.

According to MPEP 202, “The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.”

Copendency refers to the requirement that two related patent applications must be pending at the same time for one to claim the benefit of the earlier filing date of the other. The MPEP states:

Copendency between the current application and the prior application is required.

This means that the later application must be filed before the earlier application is either abandoned or issued as a patent. Copendency is crucial for maintaining a continuous chain of priority between related applications.

For more information on copendency, visit: copendency.

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

A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.

If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.

37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.

The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.

If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

For more information on incorporation by reference, visit: incorporation by reference.

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

To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:

1. File an amendment to include the omitted material within the time period set by the USPTO
2. Ensure the amendment is filed before the close of prosecution or abandonment of the application
3. Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
4. Provide an English translation if the prior-filed application is in a foreign language
5. Identify where the omitted material can be found in the prior-filed application

The MPEP states: “The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”

For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:

“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”

This statement ensures transparency regarding government involvement and rights in the invention.

For more information on invention disclosure, visit: invention disclosure.

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

To record a document with respect to additional patents and/or patent applications, even if it has been previously recorded, the following must be submitted to the Assignment Division:

• (A) A copy of the original document
• (B) A completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)
• (C) The appropriate recording fee (see 37 CFR 1.21(h) and 3.41)

As stated in MPEP 315: “The Office will assign a new recording date to that submission, update the assignment database, and include the cover sheet and document as part of the official record.”

For more information on Assignment Division, visit: Assignment Division.

For more information on document recording, visit: document recording.

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

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

No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.

For more information on assignment documents, visit: assignment documents.

For more information on certified copies, visit: certified copies.

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

For more information on USPTO, visit: USPTO.

The accessibility of assignment records for pending patent applications depends on whether the application has been published. According to MPEP 301.01:

• For published patent applications, assignment records are publicly available.
• For unpublished pending applications, assignment records are not open to public inspection.

The MPEP states: “Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.”

For unpublished pending applications, access to assignment information requires proper authorization. As per the MPEP:

“For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) an applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D).”

To learn more:

• patent applications
• pending applications
• assignment records
• public access

No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.

For more information on assignment documents, visit: assignment documents.

For more information on certified copies, visit: certified copies.

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

For more information on USPTO, visit: USPTO.

For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:

“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”

This statement ensures transparency regarding government involvement and rights in the invention.

For more information on invention disclosure, visit: invention disclosure.

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

To record a document with respect to additional patents and/or patent applications, even if it has been previously recorded, the following must be submitted to the Assignment Division:

• (A) A copy of the original document
• (B) A completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)
• (C) The appropriate recording fee (see 37 CFR 1.21(h) and 3.41)

As stated in MPEP 315: “The Office will assign a new recording date to that submission, update the assignment database, and include the cover sheet and document as part of the official record.”

For more information on Assignment Division, visit: Assignment Division.

For more information on document recording, visit: document recording.

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

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

What is the significance of the ‘acting in a representative capacity’ requirement in patent applications?

The ‘acting in a representative capacity’ requirement is crucial in patent applications as it ensures that only authorized individuals can represent applicants or patent owners before the USPTO. According to MPEP 402.04, “Any paper presented to the United States Patent and Trademark Office (Office) on behalf of an applicant for patent or patent owner must be signed by (A) a patent practitioner of record appointed in compliance with 37 CFR 1.32(b), (B) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34, or (C) the applicant under 37 CFR 1.42.” This requirement helps maintain the integrity of the patent application process and protects the interests of applicants and patent owners.

To learn more:

• representative capacity
• patent applications
• USPTO
• patent practitioner

What is the significance of a power of attorney in patent applications?

A power of attorney is a crucial document in patent applications that authorizes an attorney or agent to act on behalf of the applicant or assignee. According to MPEP 402.04, “A power of attorney may be filed in an individual application, either original or reissue, and in any national stage application.” This document allows the designated representative to make decisions, file documents, and communicate with the USPTO on behalf of the applicant. It’s important to note that the power of attorney must be properly executed and filed to be effective.

To learn more:

• power of attorney
• patent applications
• USPTO
• representative

Canadian patent agents must meet specific requirements to practice before the USPTO under limited recognition:

• They must be registered and in good standing as a patent agent under Canadian law.
• They must apply for limited recognition to the USPTO Director.
• They can only represent Canadian citizens or residents before the USPTO.
• Their representation is limited to the presentation and prosecution of patent applications of Canadian applicants.

As stated in MPEP 402.01: Canadian patent agents are not required to pass the regular patent bar examination to represent Canadian applicants. They need not seek formal recognition to practice before the Office.

To learn more:

• Canadian patent agents
• USPTO practice
• limited recognition
• patent applications

What are the requirements for a power of attorney to be valid in patent applications?

For a power of attorney to be valid in patent applications, it must meet the following requirements:

• It must be signed by the applicant for patent (e.g., the inventor) or the assignee of the entire interest.
• It must be in writing.
• It must name one or more representatives to act on behalf of the principal.

As stated in MPEP 402.04: ‘The power of attorney must be signed by the applicant for patent (e.g., the inventor(s)) or the assignee of the entire interest of the applicant.’ This ensures that only authorized individuals can appoint representatives to act on behalf of the applicant or assignee in patent matters.

To learn more:

• power of attorney
• patent applications
• validity requirements

No, MPEP 409.03(g) is not applicable to all patent applications. As stated in the editor’s note at the beginning of the section:

This MPEP section is not applicable to applications filed on or after September 16, 2012.

This means that the guidance provided in MPEP 409.03(g) regarding proof of irreparable damage only applies to patent applications filed before September 16, 2012. For applications filed on or after that date, different rules and procedures may apply.

To learn more:

• MPEP 409.03(g)
• applicability
• patent applications
• filing date
• September 16 2012

To learn more:

• MPEP 409.03(g)

How can inventors and joint inventors file patent applications after September 16, 2012?

For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:

• An inventor or joint inventor may file an application.
• A legal representative of a deceased or legally incapacitated inventor may file an application.
• An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.

As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.

To learn more:

• inventors
• joint inventors
• patent applications
• legal representative
• assignee
• obligated assignee
• proprietary interest

For the purpose of micro entity status, the following types of patent applications count towards the application filing limit:

• Previously filed U.S. nonprovisional applications (utility, design, plant, continuation, and divisional)
• Previously filed U.S. reissue applications
• Previously filed U.S. national stage applications under the Patent Cooperation Treaty (PCT)
• Previously filed international design applications under the Hague agreement that designate the U.S.

The MPEP states: “All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013.“

Applications that do not count towards the limit include:

• Foreign applications
• International (PCT) applications for which the basic U.S. national stage filing fee was not paid
• Provisional applications

To learn more:

• micro entity
• application filing limit
• patent applications
• USPTO
• nonprovisional applications

What is the limit on the number of previously filed patent applications for micro entity status?

For micro entity status, an applicant must not have been named as an inventor on more than four previously filed patent applications. The MPEP states:

“The applicant has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid.”

This limit helps ensure that micro entity status is reserved for truly small-scale inventors or businesses. It’s important to note that certain types of applications, such as provisional applications and international applications where the basic national fee wasn’t paid, don’t count towards this limit.

To learn more:

• micro entity
• patent applications
• inventor limit

The general mailing address for patent-related correspondence is:

Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

This address should be used for patent applications, replies to notices of informality, requests for extension of time, notices of appeal, and other patent-related matters processed by organizations reporting to the Commissioner for Patents.

As stated in the MPEP: Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450

To learn more:

• patent correspondence
• mailing address
• USPTO
• patent applications

What happens if I lose micro entity status during the patent process?

If you lose micro entity status during the patent process, you must notify the USPTO promptly. The MPEP states:

“A micro entity that no longer meets the requirements for micro entity status at a point in time when a fee is due is treated as a small entity for purposes of paying the fee if the applicant or patentee is otherwise eligible for small entity status.”

This means:

• You must file a notification of loss of entitlement to micro entity status.
• If you still qualify as a small entity, you can pay fees at the small entity rate.
• If you no longer qualify as a small entity, you must pay fees at the standard (large entity) rate.

It’s important to note that continuing to pay fees at the micro entity rate when you no longer qualify can result in the patent being held unenforceable. For more details, refer to MPEP 509.04(e).

To learn more:

• micro entity
• status change
• patent applications
• USPTO

The USPTO sets specific time limits for responding to notices about unlocatable files, which differ for applications and patents:

For applications, the MPEP states: The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.

For patents, the time limit is longer: The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the Office to charge fees for extensions of time in proceedings involving an application.

It’s important to note that failing to reply within these time limits can have serious consequences, including abandonment of pending applications.

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

For more information on Time Limits, visit: Time Limits.

What are the size standards for a small business concern in patent applications?

The size standards for a small business concern in patent applications are determined by the Small Business Administration (SBA). According to MPEP 509.02:

“For the purpose of paying reduced patent fees, a small business concern is one:

• (i) Whose number of employees, including affiliates, does not exceed 500 persons; and
• (ii) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a small business concern or a nonprofit organization under this section.”

It’s important to note that these size standards are specific to patent applications and may differ from SBA size standards used for other purposes. Businesses must meet both the employee count criterion and the rights assignment criterion to qualify as a small business concern for patent fee purposes.

To learn more:

• small business concern
• size standards
• patent applications
• SBA

The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:

Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.

Key points to remember:

• Each distinct subject, inquiry, or order should be in a separate paper.
• This applies to both patent and trademark correspondence.
• Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.

If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.

Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.

To learn more:

• USPTO correspondence
• separate papers
• patent applications
• trademark applications

To establish micro entity status on the gross income basis, an applicant must meet the following requirements as outlined in 37 CFR 1.29(a)(1)-(4):

• Qualify as a small entity
• Not have been named as an inventor on more than four previously filed patent applications
• Not have a gross income exceeding three times the median household income in the preceding calendar year
• Not have assigned, granted, or conveyed, and not be under an obligation to do so, a license or ownership interest to an entity exceeding the gross income limit

The MPEP states: “Because each inventor and each non-inventor applicant (e.g., assignee-applicant) must separately meet the requirements under 37 CFR 1.29(a)(1)-(4), it would not be appropriate to file a micro entity certification under 37 CFR 1.29(a) for the application if there were more than one applicant or inventor and not all of the applicants and inventors qualified as micro entities under 35 U.S.C. 123(a).“

To learn more:

• micro entity
• gross income
• patent fees
• small entity
• patent applications

USPTO employees are required to verify the identity of email senders in patent communications to prevent misrepresentation or spoofing. According to MPEP 502.03:

‘Email must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34.’

The MPEP provides examples of information that can be used for verification:

• Attorney registration number
• Attorney docket number
• Patent application number

Additionally, the MPEP advises:

‘Similar to the policy set forth in MPEP 100 for handling telephone calls, when responding to an email, no information should be disclosed until the identity of the requester can be adequately verified.’

Examiners are instructed to verify the identity by checking Patent Data Portal or the application file, such as confirming the email address previously provided in Patent Data Portal or the application.

To learn more:

• identity verification
• email communication
• USPTO employees
• patent applications
• security

During postal service emergencies, the USPTO takes special measures to ensure patent applications are handled appropriately:

• The USPTO Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a).
• This designation allows for the acceptance of filings that would have been timely filed if not for the postal service interruption or emergency.
• The USPTO may publish a notice in the Official Gazette and on its website about the designation and any special procedures to be followed.

As stated in MPEP 511: The USPTO will consider on a case-by-case basis whether to waive the date indicated on any certificate of mailing or transmission accompanied by a showing which establishes to the satisfaction of the Director that the delay was due to the emergency.

To learn more:

• postal emergencies
• USPTO procedures
• patent applications
• filing deadlines

Yes, video conferencing tools can be used for examiner interviews in patent applications, but there are specific requirements. According to MPEP 502.03:

‘USPTO video conferencing tools may be used to conduct examiner interviews in both published and unpublished applications under the Patent Internet Usage Policy.’

However, several conditions must be met:

• Authorization by the practitioner is required prior to sending a meeting invite.
• All video conferencing communications must be hosted by USPTO personnel.
• Interviews must originate from USPTO links provided by the examiner.
• Links from non-USPTO video conferencing tools are not acceptable.

The MPEP also states:

‘The practitioner’s participation in the interview is considered consent to the use of the video conferencing tool for the interview.’

It’s important to note that personal devices or non-USPTO tools cannot be used by USPTO employees for official communications.

To learn more:

• video conferencing
• examiner interviews
• patent applications
• USPTO tools
• authorization

Can I use a certificate of mailing for all USPTO correspondence?

While the certificate of mailing or transmission is a useful tool, it cannot be used for all types of USPTO correspondence. The MPEP 502 provides specific exceptions:

“The certification procedure under 37 CFR 1.8 is not available for: (A) Applications for patent under 35 U.S.C. 111(a), including reissue applications; (B) International applications for patent; (C) International design applications; (D) Requests for reexamination under 35 U.S.C. 302…”

This list continues with several other exceptions. It’s crucial to note that:

• New patent applications cannot use the certificate of mailing.
• International applications are excluded from this procedure.
• Certain time-sensitive documents require different filing methods.

For these excluded items, consider using Priority Mail Express® or electronic filing to ensure timely receipt by the USPTO. Always check the current regulations or consult with a patent professional to determine the appropriate filing method for your specific correspondence.

For more information on Certificate of Mailing, visit: Certificate of Mailing.

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

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

The general mailing address for patent-related correspondence is:

Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

This address should be used for patent applications, replies to notices of informality, requests for extension of time, notices of appeal, and other patent-related matters processed by organizations reporting to the Commissioner for Patents.

As stated in the MPEP: Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450

To learn more:

• patent correspondence
• mailing address
• USPTO
• patent applications

The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:

Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.

Key points to remember:

• Each distinct subject, inquiry, or order should be in a separate paper.
• This applies to both patent and trademark correspondence.
• Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.

If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.

Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.

To learn more:

• USPTO correspondence
• separate papers
• patent applications
• trademark applications

Can I use a certificate of mailing for all USPTO correspondence?

While the certificate of mailing or transmission is a useful tool, it cannot be used for all types of USPTO correspondence. The MPEP 502 provides specific exceptions:

“The certification procedure under 37 CFR 1.8 is not available for: (A) Applications for patent under 35 U.S.C. 111(a), including reissue applications; (B) International applications for patent; (C) International design applications; (D) Requests for reexamination under 35 U.S.C. 302…”

This list continues with several other exceptions. It’s crucial to note that:

• New patent applications cannot use the certificate of mailing.
• International applications are excluded from this procedure.
• Certain time-sensitive documents require different filing methods.

For these excluded items, consider using Priority Mail Express® or electronic filing to ensure timely receipt by the USPTO. Always check the current regulations or consult with a patent professional to determine the appropriate filing method for your specific correspondence.

For more information on Certificate of Mailing, visit: Certificate of Mailing.

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

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

The USPTO sets specific time limits for responding to notices about unlocatable files, which differ for applications and patents:

For applications, the MPEP states: The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.

For patents, the time limit is longer: The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the Office to charge fees for extensions of time in proceedings involving an application.

It’s important to note that failing to reply within these time limits can have serious consequences, including abandonment of pending applications.

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

For more information on Time Limits, visit: Time Limits.

During postal service emergencies, the USPTO takes special measures to ensure patent applications are handled appropriately:

• The USPTO Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a).
• This designation allows for the acceptance of filings that would have been timely filed if not for the postal service interruption or emergency.
• The USPTO may publish a notice in the Official Gazette and on its website about the designation and any special procedures to be followed.

As stated in MPEP 511: The USPTO will consider on a case-by-case basis whether to waive the date indicated on any certificate of mailing or transmission accompanied by a showing which establishes to the satisfaction of the Director that the delay was due to the emergency.

To learn more:

• postal emergencies
• USPTO procedures
• patent applications
• filing deadlines

According to MPEP 150, property rights statements to DOE or NASA can be filed at any time, but they should be kept up-to-date to reflect accurate property rights at the time of application allowance. The MPEP states:

Property rights statements to DOE or NASA may be filed at any time but should be updated if necessary to accurately reflect property rights at the time the application is allowed.

Additionally, the USPTO typically sends an informal request for a property rights statement shortly after filing to applicants whose nonprovisional applications are marked as being of interest to DOE or NASA. While there’s no formal time period set, a response within 45 days is recommended to expedite processing.

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

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

For the purpose of micro entity status, the following types of patent applications count towards the application filing limit:

• Previously filed U.S. nonprovisional applications (utility, design, plant, continuation, and divisional)
• Previously filed U.S. reissue applications
• Previously filed U.S. national stage applications under the Patent Cooperation Treaty (PCT)
• Previously filed international design applications under the Hague agreement that designate the U.S.

The MPEP states: “All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013.“

Applications that do not count towards the limit include:

• Foreign applications
• International (PCT) applications for which the basic U.S. national stage filing fee was not paid
• Provisional applications

To learn more:

• micro entity
• application filing limit
• patent applications
• USPTO
• nonprovisional applications

For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:

“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”

This statement ensures transparency regarding government involvement and rights in the invention.

For more information on invention disclosure, visit: invention disclosure.

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

What is the significance of the application filing date for new matter in patent applications?

The application filing date is crucial when determining whether content in a patent application constitutes new matter. MPEP 608.04(a) states:

‘Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.’

This means that any information added to the application after the filing date, which was not present in the original specification, claims, or drawings, is considered new matter. This is important because new matter cannot be added to an application without filing a continuation-in-part application.

The filing date serves as a cutoff point for the content that can be included in the application without being considered new matter. Inventors and patent practitioners must ensure that all necessary information is included in the application on or before the filing date to avoid issues with new matter.

To learn more:

• application filing date
• new matter
• patent applications
• MPEP 608.04(a)

To learn more:

• MPEP 608.04(a)

What is the significance of the ‘acting in a representative capacity’ requirement in patent applications?

The ‘acting in a representative capacity’ requirement is crucial in patent applications as it ensures that only authorized individuals can represent applicants or patent owners before the USPTO. According to MPEP 402.04, “Any paper presented to the United States Patent and Trademark Office (Office) on behalf of an applicant for patent or patent owner must be signed by (A) a patent practitioner of record appointed in compliance with 37 CFR 1.32(b), (B) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34, or (C) the applicant under 37 CFR 1.42.” This requirement helps maintain the integrity of the patent application process and protects the interests of applicants and patent owners.

To learn more:

• representative capacity
• patent applications
• USPTO
• patent practitioner

Filing dates are crucial in patent law as they establish priority and can affect the patentability of an invention. The MPEP 201.02 discusses various application types and their relationship to filing dates:

• Original applications (including first filings and continuing applications) generally retain their filing date for priority purposes.
• Continuing applications (continuations, divisionals, and continuations-in-part) can benefit from the filing date of the parent application under specific conditions outlined in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
• Substitute applications, however, do not obtain the benefit of the filing date of the prior application.

The MPEP states:

A substitute application does not obtain the benefit of the filing date of the prior application.

This emphasizes the importance of maintaining active applications and understanding the implications of different application types on priority dates.

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

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

What is the significance of a power of attorney in patent applications?

A power of attorney is a crucial document in patent applications that authorizes an attorney or agent to act on behalf of the applicant or assignee. According to MPEP 402.04, “A power of attorney may be filed in an individual application, either original or reissue, and in any national stage application.” This document allows the designated representative to make decisions, file documents, and communicate with the USPTO on behalf of the applicant. It’s important to note that the power of attorney must be properly executed and filed to be effective.

To learn more:

• power of attorney
• patent applications
• USPTO
• representative

Patent applications that appear to disclose, purport to disclose, or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy. The purpose is to allow the DOE access to these applications for review.

As stated in MPEP 150: Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. However, it’s important to note that Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).

For more information on invention disclosure, visit: invention disclosure.

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

For patent applications filed on or after July 1, 2022, the process for submitting biological sequence listings is as follows:

1. Prepare a “Sequence Listing XML” as an XML file.
2. Ensure the file complies with 37 CFR 1.831 – 1.834.
3. Submit the file via the USPTO patent electronic filing system or on a read-only optical disc.

MPEP 608.05(c) states: “For applications filed on or after July 1, 2022, the sequence listing must be a ‘Sequence Listing XML’ (as an XML file in compliance with 37 CFR 1.831 – 1.834) submission can be submitted via the USPTO patent electronic filing system or on read-only optical disc.”

For detailed information on this process, refer to MPEP §§ 2412 – 2419.

To learn more:

• biological sequence listings
• patent applications
• post-July 2022 applications
• XML file

The process for obtaining a foreign filing license is part of the USPTO’s screening procedure for patent applications. The MPEP states:

A third function of the screening procedure is to process foreign filing license petitions under37 CFR 5.12(a). SeeMPEP § 140.

The foreign filing license is automatically granted in most cases as part of the application filing process. However, if the application contains subject matter that requires further review, the applicant may need to petition for a foreign filing license separately.

To obtain a foreign filing license, applicants should:

1. File a patent application with the USPTO
2. Wait for the automatic screening process to complete
3. If a license is not automatically granted, file a petition under 37 CFR 5.12(a)
4. Provide any additional information requested by the USPTO

It’s important to note that filing an application abroad without first obtaining a foreign filing license can have serious consequences, including abandonment of the U.S. application and potential criminal penalties.

For more information on foreign filing license, visit: foreign filing license.

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

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

The priority document exchange program is a system that allows participating patent offices to exchange priority documents electronically. According to MPEP 215.02(a):

“Applicants may use the priority document exchange program to obtain a copy of a foreign application filed in a participating foreign intellectual property office.”

This program simplifies the process of obtaining priority documents for patent applications filed in multiple countries.

To learn more:

• priority document exchange
• patent applications
• foreign applications

What is the limit on the number of previously filed patent applications for micro entity status?

For micro entity status, an applicant must not have been named as an inventor on more than four previously filed patent applications. The MPEP states:

“The applicant has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid.”

This limit helps ensure that micro entity status is reserved for truly small-scale inventors or businesses. It’s important to note that certain types of applications, such as provisional applications and international applications where the basic national fee wasn’t paid, don’t count towards this limit.

To learn more:

• micro entity
• patent applications
• inventor limit

Incorporating by reference in patent applications can have significant impacts:

• It allows applicants to include the content of another document without reproducing it in full.
• The incorporated material becomes part of the application as if it were explicitly included.
• It can provide support for claims and help meet disclosure requirements.

MPEP 211.05 mentions:

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).

This highlights the importance of including incorporation by reference statements at the time of filing to ensure their effectiveness. Applicants should carefully consider what materials to incorporate and ensure they are properly referenced to support their claims and meet disclosure requirements.

To learn more:

• incorporating by reference
• patent applications
• disclosure requirements
• claim support

The general mailing address for patent-related correspondence is:

Commissioner for Patents
P.O. Box 1450
Alexandria, Virginia 22313-1450

This address should be used for patent applications, replies to notices of informality, requests for extension of time, notices of appeal, and other patent-related matters processed by organizations reporting to the Commissioner for Patents.

As stated in the MPEP: Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to: Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450

To learn more:

• patent correspondence
• mailing address
• USPTO
• patent applications

The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d). According to MPEP ¶ 2.03:

“Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.”

In summary:

• For 37 CFR 1.53(b) applications: Affidavits from prior applications must be explicitly incorporated.
• For 37 CFR 1.53(d) applications: Affidavits from the parent application are automatically included.

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

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

A continuation application and a divisional application are both types of continuing applications, but they serve different purposes:

• Continuation application: Used to pursue additional claims to an invention disclosed in a prior application. It contains the same disclosure as the parent application.
• Divisional application: Used to pursue claims to an invention that was disclosed but not claimed in a prior application. It typically results from a restriction requirement in the parent application.

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.” In contrast, a divisional application focuses on a distinct invention that was not claimed in the parent application.

To learn more:

• continuation application
• divisional application
• continuing applications
• patent applications

The treatment of affidavits and declarations differs between applications filed under 37 CFR 1.53(b) and those filed under 37 CFR 1.53(d):

• 37 CFR 1.53(b) applications: Affidavits and declarations from prior applications do not automatically become part of the new application.
• 37 CFR 1.53(d) applications: Affidavits and declarations filed during the prosecution of the parent nonprovisional application automatically become part of the new application.

As noted in MPEP ¶ 2.03: Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.

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

A certified copy of a foreign application is a copy of the original foreign application with a certification by the patent office of the foreign country in which it was filed. According to the MPEP, “Certified copies ordinarily consist of a copy of the specification and drawings of the applications as filed with a certificate of the foreign patent office giving certain information.” It’s important to note that a copy of the certified copy filed by the applicant will not satisfy the requirement for a certified copy.

Cross-noting in patent applications refers to the process of recording and verifying information about prior applications, including U.S. and foreign applications, for which benefit or priority is claimed. This information is typically noted on the bibliographic data (bib-data) sheet of the application and is used to ensure accurate representation of priority claims on the front page of a printed patent.

According to MPEP 202, “The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications.”

Copendency refers to the requirement that a later-filed application claiming the benefit of a prior-filed nonprovisional application must be filed before:

• (A) the patenting of the prior application;
• (B) the abandonment of the prior application; or
• (C) the termination of proceedings in the prior application.

As stated in MPEP 211.01(b):

“If the prior application issues as a patent, it is sufficient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application.”

This means that to maintain copendency, applicants should file any continuing applications no later than the date the issue fee is paid for the prior application.

To learn more:

• copendency
• patent applications
• continuing applications
• filing dates

A Secrecy Order is a directive issued by the Commissioner for Patents to keep an invention secret and withhold the publication of a patent application or the grant of a patent. It is issued when:

1. A defense agency concludes that disclosure of the invention would be detrimental to national security
2. The agency recommends a Secrecy Order to the Commissioner for Patents

According to 35 U.S.C. 181, Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter.

The Secrecy Order remains in effect for such period as the national interest requires, effectively preventing public disclosure of the invention.

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

Design patent applications and utility patent applications are two distinct types of patent applications that protect different aspects of inventions. According to MPEP 201:

• Design Patent Application: “An application for a design patent filed under 35 U.S.C. 171 may be referred to as a design application.” Design patents protect the ornamental appearance of an article of manufacture.
• Utility Patent Application: These applications protect the functional aspects of an invention, including processes, machines, articles of manufacture, and compositions of matter.

The key differences are:

1. Subject Matter: Design patents cover appearance, while utility patents cover functionality.
2. Duration: Design patents last for 15 years from issuance, while utility patents last for 20 years from the filing date.
3. Examination Process: Design patent applications typically have a simpler examination process.

For more details on utility patents, refer to 35 U.S.C. 101, and for design patents, see 35 U.S.C. 171.

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

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

A Continued Prosecution Application (CPA) is a type of continuation or divisional application that can be filed for design patent applications under 37 CFR 1.53(d). It allows an applicant to continue prosecution of a prior design application. As stated in the MPEP:

A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;

CPAs can only be filed before the earliest of: payment of the issue fee, abandonment, or termination of proceedings on the prior application.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

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

For inventions related to atomic energy, applicants must file a statement under oath with specific information. According to 42 U.S.C. 2182, this statement should include:

• Full facts surrounding the making or conception of the invention
• Whether the invention was made or conceived under any contract or arrangement with the Commission (now DOE)
• Whether the contract involved the expenditure of funds by the Commission

The law states: No patent for any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application, or within thirty days after request therefor by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery described in the application and whether the invention or discovery was made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the contract, subcontract, or arrangement involved the expenditure of funds by the Commission.

For more information on invention disclosure, visit: invention disclosure.

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

Certain information about patent applications is publicly available, even if the full application is not. According to 37 CFR 1.14(a)(1)(ii) and (iii), for published applications, the following information may be communicated without a petition for access:

• Whether the application is pending, abandoned, or patented
• Whether the application has been published under 35 U.S.C. 122(b)
• The application “numerical identifier” (application number or serial number plus filing date)
• Whether another application claims the benefit of the application

For published applications, “A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending published application may be provided to any person upon request and payment of the appropriate fee set forth in §1.19(b).”

However, for unpublished applications, this information is generally not available to the public unless the application is identified or relied upon in a patent document or other published application.

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

For more information on public information, visit: public information.

The inventorship in a Continued Prosecution Application (CPA) generally carries over from the prior application, unless specific steps are taken to change it. The MPEP states:

The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

If an inventor needs to be added or deleted in a CPA after it has been filed, a request under 37 CFR 1.48 must be submitted, along with the required fee.

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

When filing a Continued Prosecution Application (CPA), previously filed Information Disclosure Statements (IDS) are handled as follows:

• All IDSs filed in the prior application that comply with 37 CFR 1.98 are automatically considered in the CPA
• No specific request is needed for the examiner to consider the previously submitted information
• New IDSs can be filed in the CPA and will be considered if they comply with the content requirements and are filed before the first Office action

The MPEP states: All information disclosure statements filed in the prior application that comply with the content requirements of 37 CFR 1.98 will be considered in a CPA by the examiner. No specific request that the previously submitted information be considered in a CPA is required.

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

If priority papers are found to be deficient in material respects, such as failure to include the correct certified copy, applicants should ensure that there is sufficient time to remedy any defects. The MPEP advises: “Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and applicants should ensure that there is sufficient time to remedy any defects.” It’s recommended to file priority papers as early as possible to allow time for correction if needed.

What happens if I lose micro entity status during the patent process?

If you lose micro entity status during the patent process, you must notify the USPTO promptly. The MPEP states:

“A micro entity that no longer meets the requirements for micro entity status at a point in time when a fee is due is treated as a small entity for purposes of paying the fee if the applicant or patentee is otherwise eligible for small entity status.”

This means:

• You must file a notification of loss of entitlement to micro entity status.
• If you still qualify as a small entity, you can pay fees at the small entity rate.
• If you no longer qualify as a small entity, you must pay fees at the standard (large entity) rate.

It’s important to note that continuing to pay fees at the micro entity rate when you no longer qualify can result in the patent being held unenforceable. For more details, refer to MPEP 509.04(e).

To learn more:

• micro entity
• status change
• patent applications
• USPTO

When an improper Continued Prosecution Application (CPA) is filed, the USPTO’s response depends on the type of application and the nature of the impropriety:

• For utility or plant applications filed on or after July 14, 2003, an improper CPA is treated as a Request for Continued Examination (RCE) if possible
• If the improper CPA doesn’t meet RCE requirements, it’s treated as an improper RCE
• For design applications, an improper CPA may be treated as a new application under 37 CFR 1.53(b) in some circumstances
• The Office will not automatically convert an improper CPA to an application under 37 CFR 1.53(b) without extenuating circumstances

The MPEP states: Any request for a CPA filed on or after July 14, 2003, in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed.

Regarding treatment as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

If the improper CPA doesn’t meet RCE requirements: If the improper CPA does not satisfy the requirements of 37 CFR 1.114 (e.g., the request lacks a submission or the fee under 37 CFR 1.17(e), or the prosecution of the application is not closed), the Office treats the improper CPA as an improper RCE, and the time period set in the last Office action (or notice) will continue to run.

Examiners are instructed to notify supervisory staff if they discover an improper CPA has been processed: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the Technology Center (TC) who will reprocess the CPA and correct the application records as appropriate.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

If an applicant fails to respond to a request for a property rights statement, there can be serious consequences for the patent application. According to MPEP 150:

If no proper and timely statement is received, the application will be held abandoned and the applicant so notified.

The process typically involves:

• An initial informal request (45-Day Letter)
• If no response or if the statement is defective, a formal request is made with a 30-day statutory period for response
• No extensions are available for this 30-day period
• Failure to respond properly results in the application being held abandoned

However, abandoned applications may be revived under the provisions of 37 CFR 1.137, as noted in the case of In re Rutan, 231 USPQ 864 (Comm’r Pat. 1986).

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

For more information on revival, visit: revival.

Copendency refers to the requirement that two related patent applications must be pending at the same time for one to claim the benefit of the earlier filing date of the other. The MPEP states:

Copendency between the current application and the prior application is required.

This means that the later application must be filed before the earlier application is either abandoned or issued as a patent. Copendency is crucial for maintaining a continuous chain of priority between related applications.

For more information on copendency, visit: copendency.

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

What constitutes inherent characteristics in patent applications?

Inherent characteristics in patent applications refer to properties or features that are necessarily present in the invention but may not be explicitly stated in the original disclosure. MPEP 608.04(a) provides guidance on this:

‘Inherent characteristics of materials and properties of processes are not considered to be new matter.’

This means that certain aspects of an invention that are inherently present, even if not explicitly described, are not considered new matter when later disclosed or claimed. Examples of inherent characteristics might include:

• Physical properties of materials
• Chemical reactions that naturally occur under specified conditions
• Known scientific principles underlying the invention

However, it’s important to note that claiming inherent characteristics requires careful consideration. The written description requirement must still be satisfied, and the inherency must be clearly and unambiguously supported by the original disclosure.

To learn more:

• inherent characteristics
• patent applications
• new matter
• MPEP 608.04(a)

To learn more:

• MPEP 608.04(a)

The USPTO sets specific time limits for responding to notices about unlocatable files, which differ for applications and patents:

For applications, the MPEP states: The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an application. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates otherwise) by three months up to a maximum period for reply of six months in an application.

For patents, the time limit is longer: The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the Office to charge fees for extensions of time in proceedings involving an application.

It’s important to note that failing to reply within these time limits can have serious consequences, including abandonment of pending applications.

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

For more information on Time Limits, visit: Time Limits.

Canadian patent agents must meet specific requirements to practice before the USPTO under limited recognition:

• They must be registered and in good standing as a patent agent under Canadian law.
• They must apply for limited recognition to the USPTO Director.
• They can only represent Canadian citizens or residents before the USPTO.
• Their representation is limited to the presentation and prosecution of patent applications of Canadian applicants.

As stated in MPEP 402.01: Canadian patent agents are not required to pass the regular patent bar examination to represent Canadian applicants. They need not seek formal recognition to practice before the Office.

To learn more:

• Canadian patent agents
• USPTO practice
• limited recognition
• patent applications

Secrecy order applications require special handling procedures to maintain their confidentiality. According to MPEP 130:

Applications and papers in the application file, as well as any related papers, must be safeguarded from disclosure to unauthorized persons and must be securely kept in a locked area when not actually in use.

Additionally:

• Secrecy order cases should not be processed on any automated information system (AIS) unless the AIS is certified for classified processing.
• All processing should be done in a secure environment by personnel with appropriate clearances.
• Special care must be taken to prevent inadvertent disclosure of classified information.

For more information on classified information, visit: classified information.

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

What are the size standards for a small business concern in patent applications?

The size standards for a small business concern in patent applications are determined by the Small Business Administration (SBA). According to MPEP 509.02:

“For the purpose of paying reduced patent fees, a small business concern is one:

• (i) Whose number of employees, including affiliates, does not exceed 500 persons; and
• (ii) Which has not assigned, granted, conveyed, or licensed (and is under no obligation to do so) any rights in the invention to any person who made it and could not be classified as an independent inventor, or to any concern which would not qualify as a small business concern or a nonprofit organization under this section.”

It’s important to note that these size standards are specific to patent applications and may differ from SBA size standards used for other purposes. Businesses must meet both the employee count criterion and the rights assignment criterion to qualify as a small business concern for patent fee purposes.

To learn more:

• small business concern
• size standards
• patent applications
• SBA

Secrecy order applications are subject to strict restrictions on foreign filing to protect national security. The MPEP 130 outlines these restrictions:

A secrecy order bars the filing of a foreign application based on the application under secrecy order without prior license from the Commissioner for Patents.

Key points regarding foreign filing restrictions:

• Filing a foreign application without authorization is prohibited.
• A license from the Commissioner for Patents is required for any foreign filing.
• Unauthorized foreign filing can result in severe penalties, including abandonment of the application.
• These restrictions are in place to prevent disclosure of sensitive information to foreign entities.

Inventors and applicants must be aware of these restrictions to avoid legal complications and potential national security breaches.

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

The requirements for submitting biological sequence listings in patent applications depend on the filing date:

• For applications filed before July 1, 2022: A “Sequence Listing” as an ASCII plain text file in compliance with 37 CFR 1.821 – 1.824.
• For applications filed on or after July 1, 2022: A “Sequence Listing XML” as an XML file in compliance with 37 CFR 1.831 – 1.834.

As stated in MPEP 608.05(c): “Applications disclosing nucleotide and/or amino acid sequences […] are required to provide the biological sequence information in a sequence listing.”

To learn more:

• biological sequence listings
• patent applications
• sequence listing requirements
• USPTO

The USPTO requires that different matters be submitted in separate papers to avoid confusion and delays. This requirement is outlined in 37 CFR 1.4(c), which states:

Since different matters may be considered by different branches or sections of the Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.

Key points to remember:

• Each distinct subject, inquiry, or order should be in a separate paper.
• This applies to both patent and trademark correspondence.
• Exceptions are allowed for subjects provided for on a single Office or World Intellectual Property Organization form.

If you submit multiple subjects in a single paper, the USPTO may use Form Paragraph 5.01.01 to notify you of the requirement for separate papers in future correspondence.

Adhering to this requirement helps ensure that your correspondence is processed efficiently by the appropriate Office branches or sections.

To learn more:

• USPTO correspondence
• separate papers
• patent applications
• trademark applications

To record a document with respect to additional patents and/or patent applications, even if it has been previously recorded, the following must be submitted to the Assignment Division:

• (A) A copy of the original document
• (B) A completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07)
• (C) The appropriate recording fee (see 37 CFR 1.21(h) and 3.41)

As stated in MPEP 315: “The Office will assign a new recording date to that submission, update the assignment database, and include the cover sheet and document as part of the official record.”

For more information on Assignment Division, visit: Assignment Division.

For more information on document recording, visit: document recording.

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

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

For inventions related to aeronautical and space activities, applicants must file a statement with specific information if requested by the USPTO. According to 51 U.S.C. 20135:

No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office […] to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration.

This statement should include:

• Full facts about the circumstances of the invention’s creation
• The relationship, if any, between the invention and work performed under any NASA contract

For more information on invention disclosure, visit: invention disclosure.

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

To establish micro entity status on the gross income basis, an applicant must meet the following requirements as outlined in 37 CFR 1.29(a)(1)-(4):

• Qualify as a small entity
• Not have been named as an inventor on more than four previously filed patent applications
• Not have a gross income exceeding three times the median household income in the preceding calendar year
• Not have assigned, granted, or conveyed, and not be under an obligation to do so, a license or ownership interest to an entity exceeding the gross income limit

The MPEP states: “Because each inventor and each non-inventor applicant (e.g., assignee-applicant) must separately meet the requirements under 37 CFR 1.29(a)(1)-(4), it would not be appropriate to file a micro entity certification under 37 CFR 1.29(a) for the application if there were more than one applicant or inventor and not all of the applicants and inventors qualified as micro entities under 35 U.S.C. 123(a).“

To learn more:

• micro entity
• gross income
• patent fees
• small entity
• patent applications

Drawing symbols in patent applications must adhere to specific requirements:

• Symbols should be clear and legible.
• The same part of an invention should be designated by the same reference character throughout the application.
• Different parts should not be designated by the same reference character.
• Reference characters not mentioned in the description will not be permitted in the drawings.

MPEP 608.02(b) states: “The drawing must show every feature of the invention specified in the claims.” This includes proper use of symbols and reference characters to clearly illustrate the invention.

For detailed guidelines on drawing symbols, refer to 37 CFR 1.84(p).

To learn more:

• drawing symbols
• patent applications
• reference characters

Color photographs in patent applications are subject to specific requirements. According to MPEP 608.01(f):

Color photographs will be accepted in utility and design patent applications if the conditions for accepting color drawings and black and white photographs have been satisfied.

To include color photographs in a patent application, you must:

• Meet the conditions for accepting color drawings (petition, fee, and specific language in the specification)
• Satisfy the requirements for black and white photographs (only practicable medium for illustrating the invention)
• Ensure the photographs are of sufficient quality for reproduction in the printed patent

It’s important to note that color photographs are subject to the same restrictions and requirements as color drawings in patent applications.

To learn more:

• color photographs
• patent applications
• drawing requirements

What are the requirements for a power of attorney to be valid in patent applications?

For a power of attorney to be valid in patent applications, it must meet the following requirements:

• It must be signed by the applicant for patent (e.g., the inventor) or the assignee of the entire interest.
• It must be in writing.
• It must name one or more representatives to act on behalf of the principal.

As stated in MPEP 402.04: ‘The power of attorney must be signed by the applicant for patent (e.g., the inventor(s)) or the assignee of the entire interest of the applicant.’ This ensures that only authorized individuals can appoint representatives to act on behalf of the applicant or assignee in patent matters.

To learn more:

• power of attorney
• patent applications
• validity requirements

The MPEP 201 outlines several main types of patent applications:

• Nonprovisional applications for patent
• Provisional applications for patent
• International applications
• Design applications
• Plant applications
• Reissue applications
• Divisional applications
• Continuation applications
• Continuation-in-part applications

Each type serves a specific purpose in the patent application process and has its own requirements and procedures.

For more information on divisional, visit: divisional.

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

For more information on reissue, visit: reissue.

There are several types of patent applications in the United States:

• Nonprovisional applications filed under 35 U.S.C. 111(a), including utility, plant, and design patent applications
• Provisional applications filed under 35 U.S.C. 111(b)
• International applications filed under the Patent Cooperation Treaty (PCT)
• International design applications filed under the Hague Agreement

The MPEP states: Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d).

For more information on Hague Agreement, visit: Hague Agreement.

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

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

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

The Manual of Patent Examining Procedure (MPEP) outlines several general terms used to describe patent applications:

• National application
• Provisional application
• Nonprovisional application
• International application
• International design application
• Original application
• Continuing application
• Substitute application

These terms are defined in various sections of 37 CFR 1.9 and further explained in MPEP § 201.

To learn more:

• patent applications
• MPEP terminology
• patent law definitions

According to MPEP 201.02, there are several types of patent applications:

• National applications
• Provisional applications
• Nonprovisional applications
• International applications
• International design applications

The definitions for these terms can be found in 37 CFR 1.9. Additionally, applications can be classified as ‘original’ or ‘continuing’ applications. An original application may be a first filing or a continuing application, while a continuing application can be a continuation, divisional, or continuation-in-part application.

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

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

For more information on international design applications, visit: international design applications.

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

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

The United States Patent and Trademark Office (USPTO) recognizes several types of patent applications. According to MPEP 201, these include:

• Nonprovisional applications for patent, including utility, design, and plant patent applications
• Provisional applications for patent
• International applications filed under the Patent Cooperation Treaty (PCT)
• Reissue applications
• Divisional applications
• Continuation applications
• Continuation-in-part applications

Each type of application serves a specific purpose in the patent process and has its own requirements and procedures.

For more information on divisional, visit: divisional.

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

For more information on reissue, visit: reissue.

For more information on USPTO, visit: USPTO.

Including offensive content in a patent application can have significant consequences. According to MPEP 608:

• The examiner will object to the offensive language or drawings.
• The application will not be classified for publication under 35 U.S.C. 122(b).
• The examiner will not pass the application to issue until the offensive content is removed.

The MPEP states, “An application should not be classified for publication under 35 U.S.C. 122(b) and an examiner should not pass the application to issue until such language or drawings have been deleted, or questions relating to the propriety thereof fully resolved.” This policy ensures that federal government publications maintain appropriate standards of decorum and courtesy.

To learn more:

• offensive content
• patent applications
• consequences
• publication
• issuance

Filing a Continued Prosecution Application (CPA) for design patents has several advantages over filing a regular continuation application under 37 CFR 1.53(b):

• Minimal filing requirements – only a request on a separate paper and the filing fee are needed
• No new oath or declaration is required
• Faster processing – the CPA uses the file and contents of the prior application
• Potentially faster examination – CPAs are often treated as “amended” applications for examination priority
• No need for a new specification or drawings

The MPEP notes: “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 continuation applications, visit: continuation applications.

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

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

The USPTO accepts two primary methods for submitting biological sequence listings in patent applications:

1. USPTO patent electronic filing system: This is the preferred method for submitting sequence listings.
2. Read-only optical disc: An alternative method if electronic filing is not possible.

These submission methods apply to both pre-July 1, 2022, and post-July 1, 2022 applications. As stated in MPEP 608.05(c): “[…] submission must be submitted via the USPTO patent electronic filing system or on read-only optical disc.”

It’s important to note that the file format requirements differ based on the application filing date, but the submission methods remain the same.

To learn more:

• biological sequence listings
• patent applications
• USPTO submission methods
• electronic filing

No, MPEP 409.03(g) is not applicable to all patent applications. As stated in the editor’s note at the beginning of the section:

This MPEP section is not applicable to applications filed on or after September 16, 2012.

This means that the guidance provided in MPEP 409.03(g) regarding proof of irreparable damage only applies to patent applications filed before September 16, 2012. For applications filed on or after that date, different rules and procedures may apply.

To learn more:

• MPEP 409.03(g)
• applicability
• patent applications
• filing date
• September 16 2012

To learn more:

• MPEP 409.03(g)

USPTO employees are required to verify the identity of email senders in patent communications to prevent misrepresentation or spoofing. According to MPEP 502.03:

‘Email must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34.’

The MPEP provides examples of information that can be used for verification:

• Attorney registration number
• Attorney docket number
• Patent application number

Additionally, the MPEP advises:

‘Similar to the policy set forth in MPEP 100 for handling telephone calls, when responding to an email, no information should be disclosed until the identity of the requester can be adequately verified.’

Examiners are instructed to verify the identity by checking Patent Data Portal or the application file, such as confirming the email address previously provided in Patent Data Portal or the application.

To learn more:

• identity verification
• email communication
• USPTO employees
• patent applications
• security

When using trademarks in patent applications:

• Capitalize each letter of the trademark
• Use the trademark symbol ® or TM as appropriate
• Accompany the trademark with generic terminology
• Respect the proprietary nature of the mark

According to MPEP 608.01(v): “Although the use of marks having definite meanings is permissible in patent applications, the proprietary nature of the marks should be respected. Marks should be identified by capitalizing each letter of the mark (in the case of word or letter marks) or otherwise indicating the description of the mark (in the case of marks in the form of a symbol or device or other nontextual form). Every effort should be made to prevent their use in any manner which might adversely affect their validity as marks.”

To learn more:

• trademarks
• patent applications
• proper use of marks

How does the USPTO handle photographs in patent applications?

The USPTO has specific guidelines for handling photographs in patent applications:

1. General rule: As stated in MPEP 608.02(a), “Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications.”
2. Exceptions: Photographs are accepted in applications where they are the only practicable medium for illustrating the claimed invention. This typically applies to:
• Crystalline structures
• Metallurgical microstructures
• Textile fabrics
• Grain structures
• Color effects
3. Requirement for acceptance: The MPEP states, “The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent.”
4. Color photographs: These require a petition explaining why color is necessary and are subject to additional fees.

If photographs are submitted, applicants should ensure they meet USPTO standards to avoid potential issues during examination.

To learn more:

• photographs
• patent applications
• USPTO guidelines
• exceptions for photographs

During postal service emergencies, the USPTO takes special measures to ensure patent applications are handled appropriately:

• The USPTO Director may designate the interruption or emergency as a ‘postal service interruption or emergency’ under 35 U.S.C. 21(a).
• This designation allows for the acceptance of filings that would have been timely filed if not for the postal service interruption or emergency.
• The USPTO may publish a notice in the Official Gazette and on its website about the designation and any special procedures to be followed.

As stated in MPEP 511: The USPTO will consider on a case-by-case basis whether to waive the date indicated on any certificate of mailing or transmission accompanied by a showing which establishes to the satisfaction of the Director that the delay was due to the emergency.

To learn more:

• postal emergencies
• USPTO procedures
• patent applications
• filing deadlines

The USPTO has specific guidelines for handling offensive language in patent applications. According to MPEP 608:

“If during the course of examination of a patent application, an examiner notes the use of language that could be deemed offensive to any race, religion, sex, ethnic group, or nationality, he or she should object to the use of the language as failing to comply with 37 CFR 1.3 which proscribes the presentation of papers which are lacking in decorum and courtesy.”

Examiners are instructed to object to such language and require its removal before classifying the application for publication or passing it to issue. This policy applies to both text and drawings in the application.

To learn more:

• offensive language
• patent applications
• USPTO guidelines
• 37 CFR 1.3

To learn more:

• 37 CFR 1.3

The USPTO has specific procedures for handling applications in which the government may have a property interest. According to the MPEP:

For those applications in which the Government has a property interest (including applications indicating national security classified subject matter), responsibility for notifying the Commissioner for Patents of the need for a Secrecy Order resides with the agency having that interest.

Additionally, the screening process identifies inventions that may be of interest to specific government agencies:

A second purpose for the screening of all applications, with an exception for provisional applications, is to identify inventions in which DOE or NASA might have property rights. See42 U.S.C. 2182,51 U.S.C. 20135, andMPEP § 150.

This process ensures that government agencies are notified of inventions that may fall under their purview and allows them to take appropriate action, such as requesting a Secrecy Order if necessary.

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

The filing date of a Continued Prosecution Application (CPA) is determined by the date on which a proper request for a CPA is filed. Specifically, the MPEP states:

The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed.

It’s important to note that the CPA request must be on a separate paper. If the request is not on a separate paper, it will not be considered a proper CPA request and will not receive a filing date.

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

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

The filing date of a Continued Prosecution Application (CPA) is determined differently from other types of patent applications. For a CPA, the filing date is the date on which a request for a CPA is filed on a separate paper.

The MPEP states: The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed.

This means that unlike regular applications where the filing date is typically the date all required components are received, a CPA’s filing date is based solely on when the CPA request is submitted, provided it meets the necessary requirements.

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

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

The filing of a Continued Prosecution Application (CPA) has significant effects on the prior application:

• The CPA is considered a request to expressly abandon the prior application as of the filing date of the CPA
• The prior application is automatically abandoned in favor of the CPA
• The filing date of the CPA is the date on which the request for the CPA is filed

As stated in the MPEP: The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:… (v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.

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

Inventorship in a Continued Prosecution Application (CPA) generally carries over from the prior application, but there are some important considerations:

• The inventive entity of the CPA is automatically the same as the prior application unless a statement is filed requesting deletion of inventors
• A statement requesting deletion of inventors must be filed with the CPA request and signed by a person authorized under 37 CFR 1.33(b)
• New inventors cannot be added simply by naming them in the CPA transmittal letter or a new oath/declaration
• To add new inventors, a request under 37 CFR 1.48 must be filed, including the required fee

The MPEP states: The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

If an inventor is named in the CPA who was not in the prior application, the examiner will notify the applicant using form paragraph 2.33:

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

Filing a Continued Prosecution Application (CPA) has implications for the confidentiality of the application under 35 U.S.C. 122:

• Filing a CPA is construed as a waiver of confidentiality to a certain extent
• Members of the public entitled to access the prior application may be given similar access to the CPA and other related applications
• This waiver applies to the entire chain of related applications

The MPEP states: A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

For more information on 35 U.S.C. 122, visit: 35 U.S.C. 122.

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

For more information on public access, visit: public access.

Copendency is a crucial requirement for claiming benefit between nonprovisional applications. The later-filed application must be filed before:

• The patenting of the prior application
• The abandonment of the prior application
• The termination of proceedings in the prior application

As stated in MPEP 211.01(b): When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly entitled to the benefit of the filing date of the prior application.

If copendency is not maintained, the benefit claim is improper and the later-filed application cannot claim the earlier filing date of the prior application.

To learn more:

• copendency
• benefit claims
• continuation applications
• patent applications

Confidentiality in Continued Prosecution Applications (CPAs) is handled differently from standard applications. Filing a CPA includes a waiver of confidentiality to some extent:

• The CPA is construed to include a waiver of confidentiality under 35 U.S.C. 122
• This waiver allows public access to both the prior application and any continuing applications filed under 37 CFR 1.53(d)
• Access is limited to those entitled under 37 CFR 1.14 to obtain information about the applications

The MPEP states: A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

This means that if someone is entitled to access information about either the prior application or the CPA, they may be given similar access to information about both applications. This is different from the standard confidentiality provisions for pending applications.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

A Continued Prosecution Application (CPA) automatically maintains the priority claim to its parent application without requiring a separate reference. The CPA itself serves as the specific reference required under 35 U.S.C. 120.

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

This means that filing a CPA automatically establishes a priority claim to the parent application and any earlier applications in the priority chain without additional paperwork.

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

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

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

Continued Prosecution Applications (CPAs) automatically carry over certain aspects from the parent application. Specifically:

• Priority claims under 35 U.S.C. 119(a)-(d) made in the parent application automatically carry over to a CPA.
• A terminal disclaimer filed in the parent application carries over to a CPA.

The MPEP explains: Priority claims under 35 U.S.C. 119(a)-(d) made in a parent application will automatically carry over to a CPA. A terminal disclaimer filed in the parent application carries over to a CPA.

This automatic carry-over occurs because the CPA retains the same application number as the parent application.

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

A Continued Prosecution Application (CPA) automatically maintains the benefit claim to the prior application under 35 U.S.C. 120 without requiring a separate statement. Key points include:

• The CPA request itself serves as the specific reference required by 35 U.S.C. 120
• No amendment to the specification or application data sheet is needed to maintain the benefit claim
• The benefit claim extends to all applications in a chain of CPAs

As stated in the MPEP: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.

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

37 CFR 1.57(b) is closely tied to priority claims in patent applications. For an amendment to comply with this regulation, the claim for priority or benefit of the prior-filed application must have been present on the filing date of the current application.

The MPEP specifically states that an amendment may not comply with 37 CFR 1.57(b) if the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application. This requirement ensures that the incorporation by reference is based on a properly established relationship between the current application and the prior-filed application.

If the priority claim was not present at filing, the applicant cannot use 37 CFR 1.57(b) to incorporate material from the prior-filed application, even if that material was inadvertently omitted.

For more information on 37 CFR 1.57(b), visit: 37 CFR 1.57(b).

For more information on incorporation by reference, visit: incorporation by reference.

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

For patent applications filed before July 1, 2022, biological sequence listings should be submitted as follows:

1. Prepare a “Sequence Listing” as an ASCII plain text file.
2. Ensure the file complies with 37 CFR 1.821 – 1.824.
3. Submit the file via the USPTO patent electronic filing system or on a read-only optical disc.

As stated in MPEP 608.05(c): “For applications filed before July 1, 2022, the sequence listing can be a ‘Sequence Listing’ (as an ASCII plain text file in compliance with 37 CFR 1.821 – 1.824) submission must be submitted via the USPTO patent electronic filing system or on read-only optical disc.”

For detailed information, refer to MPEP §§ 2420 et seq.

To learn more:

• biological sequence listings
• patent applications
• pre-July 2022 applications
• ASCII plain text file

To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:

1. File an amendment to include the omitted material within the time period set by the USPTO
2. Ensure the amendment is filed before the close of prosecution or abandonment of the application
3. Supply a copy of the prior-filed application (unless it’s a US application filed under 35 U.S.C. 111)
4. Provide an English translation if the prior-filed application is in a foreign language
5. Identify where the omitted material can be found in the prior-filed application

The MPEP states: “The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier.”

Benefit claims in Continued Prosecution Applications (CPAs) have some unique characteristics:

• A CPA automatically includes a specific reference under 35 U.S.C. 120 to the prior application
• No additional amendment to the specification or application data sheet is required to claim benefit
• A CPA is considered to reference every application in the chain with the same application number
• Priority claims under 35 U.S.C. 119(a)-(d) from the parent application automatically carry over to the CPA

The MPEP states: 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. No further amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(d) to identify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

It’s important to note that applicants cannot delete benefit claims to certain applications in a chain of CPAs. The MPEP clarifies: Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit claim as to certain applications assigned that application number (e.g., for patent term purposes).

For more information on benefit claims, visit: benefit claims.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

How can inventors and joint inventors file patent applications after September 16, 2012?

For patent applications filed on or after September 16, 2012, inventors and joint inventors can file applications in the following ways:

• An inventor or joint inventor may file an application.
• A legal representative of a deceased or legally incapacitated inventor may file an application.
• An assignee, obligated assignee, or person who shows sufficient proprietary interest may file an application.

As stated in MPEP 403.01(a): “For applications filed on or after September 16, 2012, a patent practitioner acting in a representative capacity must have authority to act on behalf of the applicant.” This means that patent practitioners must ensure they have proper authorization before acting on behalf of applicants.

To learn more:

• inventors
• joint inventors
• patent applications
• legal representative
• assignee
• obligated assignee
• proprietary interest

The USPTO handles improper Continued Prosecution Application (CPA) requests in the following ways:

1. For utility or plant applications filed on or after July 14, 2003, improper CPA requests are treated as requests for continued examination (RCE) under 37 CFR 1.114 if the application has a filing date on or after June 8, 1995.
2. If the improper CPA doesn’t satisfy RCE requirements, it’s treated as an improper RCE, and the time period set in the last Office action continues to run.
3. For applications with a filing date before June 8, 1995, the Office will notify the applicant of the improper CPA by mailing a notice.
4. If an examiner discovers an improperly processed CPA, they should immediately notify a supervisory applications examiner (SAE) or other technical support staff to correct the application records.
5. The Office will not convert an improper CPA into an application under 37 CFR 1.53(b) unless there are extenuating circumstances.

As stated in the MPEP: If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the TC who will reprocess the CPA and correct the application records as appropriate.

It’s important to note that if the application becomes abandoned due to an improper CPA, the applicant may need to file a petition under 37 CFR 1.137 to revive the application and pay the required fees.

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

For more information on RCE, visit: RCE.

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

Continued Prosecution Applications (CPAs) and Requests for Continued Examination (RCEs) are both methods to continue prosecution of an application, but they have significant differences:

• CPAs are only available for design patent applications, while RCEs can be used for utility, plant, and design applications
• CPAs result in a new application with the same application number, while RCEs continue examination of the same application
• CPAs can only be filed before payment of the issue fee, abandonment, or termination of proceedings; RCEs can be filed after payment of the issue fee with a petition
• CPAs automatically abandon the prior application, while RCEs do not

The MPEP states: Effective July 14, 2003, continued prosecution application (CPA) practice was eliminated as to utility and plant applications. Henceforth, applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE) under 37 CFR 1.114.

It’s important to note that if an improper CPA is filed for a utility or plant application on or after July 14, 2003, it may be treated as an RCE: If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 is treated as a request for continued examination (RCE) under 37 CFR 1.114.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

For more information on RCE, visit: RCE.

Black and white photographs and grayscale drawings are handled uniformly across various types of patent applications and proceedings. According to MPEP 608.02(c):

Black and white photographs and grayscale drawings in: (i) provisional applications under 35 U.S.C. 111(b); (ii) nonprovisional utility and design patent applications under 35 U.S.C. 111(a), including reissue utility and design patent applications; (iii) national stage applications under 35 U.S.C. 371; (iv) international applications (PCT); (v) international design applications; (vi) reexamination proceedings for utility patents and design patents; and (vii) supplemental examination proceedings will be stored in SCORE, and a black and white copy will be stored in IFW along with a SCORE placeholder sheet.

In summary, these types of drawings are:

• Stored in SCORE (Supplemental Content Repository)
• A black and white copy is stored in IFW (Image File Wrapper)
• A SCORE placeholder sheet is included in the IFW

To learn more:

• patent drawings
• photographs
• grayscale drawings
• SCORE
• IFW
• patent applications

The definition of biological sequences in patent applications depends on the filing date of the application:

• For applications filed before July 1, 2022: Biological sequences are defined in 37 CFR 1.821(a).
• For applications filed on or after July 1, 2022: Biological sequences are defined in 37 CFR 1.831(b).

MPEP 608.05(c) states: “Applications disclosing nucleotide and/or amino acid sequences, as defined in 37 CFR 1.821(a) for applications filed before July 1, 2022 or as defined in 37 CFR 1.831(b) for applications filed on or after July 1, 2022, are required to provide the biological sequence information in a sequence listing.”

These definitions typically include specific criteria for nucleotide and amino acid sequences that must be disclosed in the sequence listing.

To learn more:

• biological sequences
• patent applications
• sequence definitions
• USPTO regulations

No, certified copies of patent applications as filed do not include an indication of assignment documents. According to the MPEP 303, “Certified copies of patent applications as filed do not include an indication of assignment documents.” This means that the initial certified copy of a patent application does not contain information about any assignments that may have been recorded.

For more information on assignment documents, visit: assignment documents.

For more information on certified copies, visit: certified copies.

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

For more information on USPTO, visit: USPTO.

Yes, video conferencing tools can be used for examiner interviews in patent applications, but there are specific requirements. According to MPEP 502.03:

‘USPTO video conferencing tools may be used to conduct examiner interviews in both published and unpublished applications under the Patent Internet Usage Policy.’

However, several conditions must be met:

• Authorization by the practitioner is required prior to sending a meeting invite.
• All video conferencing communications must be hosted by USPTO personnel.
• Interviews must originate from USPTO links provided by the examiner.
• Links from non-USPTO video conferencing tools are not acceptable.

The MPEP also states:

‘The practitioner’s participation in the interview is considered consent to the use of the video conferencing tool for the interview.’

It’s important to note that personal devices or non-USPTO tools cannot be used by USPTO employees for official communications.

To learn more:

• video conferencing
• examiner interviews
• patent applications
• USPTO tools
• authorization

The inventorship in a Continued Prosecution Application (CPA) generally remains the same as in the prior application, but it can be changed under certain circumstances:

• The inventorship automatically carries over from the prior application unless a statement is filed requesting deletion of inventors
• Inventors can be deleted by filing a statement with the CPA request
• Adding new inventors requires a request under 37 CFR 1.48 after the CPA is filed

The MPEP states: The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

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

Can I use a certificate of mailing for all USPTO correspondence?

While the certificate of mailing or transmission is a useful tool, it cannot be used for all types of USPTO correspondence. The MPEP 502 provides specific exceptions:

“The certification procedure under 37 CFR 1.8 is not available for: (A) Applications for patent under 35 U.S.C. 111(a), including reissue applications; (B) International applications for patent; (C) International design applications; (D) Requests for reexamination under 35 U.S.C. 302…”

This list continues with several other exceptions. It’s crucial to note that:

• New patent applications cannot use the certificate of mailing.
• International applications are excluded from this procedure.
• Certain time-sensitive documents require different filing methods.

For these excluded items, consider using Priority Mail Express® or electronic filing to ensure timely receipt by the USPTO. Always check the current regulations or consult with a patent professional to determine the appropriate filing method for your specific correspondence.

For more information on Certificate of Mailing, visit: Certificate of Mailing.

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

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

Copyright notices may be included in patent applications under certain conditions:

• The notice must be placed adjacent to the copyrighted material
• The content must be limited to required legal elements
• An authorization statement must be included in the specification
• Notices in drawings must comply with 37 CFR 1.84(s)

As stated in 37 CFR 1.71(d): “A copyright or mask work notice may be placed in a design or utility patent application adjacent to copyright and mask work material contained therein. The notice may appear at any appropriate portion of the patent application disclosure. For notices in drawings, see § 1.84(s). The content of the notice must be limited to only those elements provided for by law.”

To learn more:

• copyright notice
• patent applications
• 37 CFR 1.71

To learn more:

• 37 CFR 1.71

Amendments can be made when filing a Continued Prosecution Application (CPA), but there are important restrictions and considerations:

• Any changes must be made as an amendment to the prior application as it existed before filing the CPA
• No new matter can be introduced in a CPA
• Preliminary amendments filed with a CPA are generally entered, but could be denied entry if they unduly interfere with examination
• New specifications filed with a CPA request are treated as substitute specifications and must comply with 37 CFR 1.125

The MPEP states: Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application.

Regarding preliminary amendments, the MPEP advises: Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.

If more time is needed to prepare amendments, applicants can request a three-month suspension of action under 37 CFR 1.103(b) at the time of filing the CPA.

For more information on amendments, visit: amendments.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

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

No, a suspended or excluded practitioner cannot inspect patent applications. According to MPEP 105, “Power to inspect given to such an attorney or agent will not be accepted.” This means that the USPTO will not allow suspended or excluded practitioners to access or review patent applications, even if they are given permission by the applicant.

To learn more:

• Patent Applications
• Suspended Practitioners
• Excluded Practitioners
• USPTO Procedures
• Patent Inspection

Generally, no. MPEP 105 states: “U.S. Patent and Trademark Office (USPTO) employees are forbidden to hold either oral or written communication with an attorney or agent who has been suspended or excluded from practice by the USPTO regarding an application.” This prohibition applies to all forms of communication about patent applications with suspended or excluded practitioners.

To learn more:

• USPTO Employees
• Communication Rules
• Suspended Practitioners
• Excluded Practitioners
• Patent Applications

Photographs are generally not permitted in utility and design patent applications, but exceptions exist. According to MPEP 608.01(f):

Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention.

Examples of acceptable photographs include:

• Electrophoresis gels
• Blots (e.g., immunological, western, Southern, and northern)
• Cell cultures
• Histological tissue cross sections
• In vivo imaging
• Crystalline structures
• Ornamental effects (in design patent applications)

The photographs must be of sufficient quality to ensure all details are reproducible in the printed patent. If the subject matter can be illustrated by a drawing, the examiner may require a drawing instead of a photograph.

To learn more:

• photographs
• patent applications
• utility patents
• design patents

The accessibility of assignment records for pending patent applications depends on whether the application has been published. According to MPEP 301.01:

• For published patent applications, assignment records are publicly available.
• For unpublished pending applications, assignment records are not open to public inspection.

The MPEP states: “Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.”

For unpublished pending applications, access to assignment information requires proper authorization. As per the MPEP:

“For applications filed on or after September 16, 2012, the written authority must be from (A) an inventor, (B) an applicant, (C) the assignee or an assignee of an undivided part interest, (D) a patent practitioner of record, or (E) a person with written authority from (A), (B), or (C) or (D).”

To learn more:

• patent applications
• pending applications
• assignment records
• public access

According to MPEP 150, property rights statements to DOE or NASA can be filed at any time, but they should be kept up-to-date to reflect accurate property rights at the time of application allowance. The MPEP states:

Property rights statements to DOE or NASA may be filed at any time but should be updated if necessary to accurately reflect property rights at the time the application is allowed.

Additionally, the USPTO typically sends an informal request for a property rights statement shortly after filing to applicants whose nonprovisional applications are marked as being of interest to DOE or NASA. While there’s no formal time period set, a response within 45 days is recommended to expedite processing.

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

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

For the purpose of micro entity status, the following types of patent applications count towards the application filing limit:

• Previously filed U.S. nonprovisional applications (utility, design, plant, continuation, and divisional)
• Previously filed U.S. reissue applications
• Previously filed U.S. national stage applications under the Patent Cooperation Treaty (PCT)
• Previously filed international design applications under the Hague agreement that designate the U.S.

The MPEP states: “All such applications naming the inventor or a joint inventor are counted toward the application filing limit, whether the applications were filed before, on, or after March 19, 2013.“

Applications that do not count towards the limit include:

• Foreign applications
• International (PCT) applications for which the basic U.S. national stage filing fee was not paid
• Provisional applications

To learn more:

• micro entity
• application filing limit
• patent applications
• USPTO
• nonprovisional applications

For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:

“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”

This statement ensures transparency regarding government involvement and rights in the invention.

For more information on invention disclosure, visit: invention disclosure.

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

What is the significance of the application filing date for new matter in patent applications?

The application filing date is crucial when determining whether content in a patent application constitutes new matter. MPEP 608.04(a) states:

‘Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.’

This means that any information added to the application after the filing date, which was not present in the original specification, claims, or drawings, is considered new matter. This is important because new matter cannot be added to an application without filing a continuation-in-part application.

The filing date serves as a cutoff point for the content that can be included in the application without being considered new matter. Inventors and patent practitioners must ensure that all necessary information is included in the application on or before the filing date to avoid issues with new matter.

To learn more:

• application filing date
• new matter
• patent applications
• MPEP 608.04(a)

To learn more:

• MPEP 608.04(a)

What is the significance of the ‘acting in a representative capacity’ requirement in patent applications?

The ‘acting in a representative capacity’ requirement is crucial in patent applications as it ensures that only authorized individuals can represent applicants or patent owners before the USPTO. According to MPEP 402.04, “Any paper presented to the United States Patent and Trademark Office (Office) on behalf of an applicant for patent or patent owner must be signed by (A) a patent practitioner of record appointed in compliance with 37 CFR 1.32(b), (B) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34, or (C) the applicant under 37 CFR 1.42.” This requirement helps maintain the integrity of the patent application process and protects the interests of applicants and patent owners.

To learn more:

• representative capacity
• patent applications
• USPTO
• patent practitioner

Filing dates are crucial in patent law as they establish priority and can affect the patentability of an invention. The MPEP 201.02 discusses various application types and their relationship to filing dates:

• Original applications (including first filings and continuing applications) generally retain their filing date for priority purposes.
• Continuing applications (continuations, divisionals, and continuations-in-part) can benefit from the filing date of the parent application under specific conditions outlined in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
• Substitute applications, however, do not obtain the benefit of the filing date of the prior application.

The MPEP states:

A substitute application does not obtain the benefit of the filing date of the prior application.

This emphasizes the importance of maintaining active applications and understanding the implications of different application types on priority dates.

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

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

What is the significance of a power of attorney in patent applications?

A power of attorney is a crucial document in patent applications that authorizes an attorney or agent to act on behalf of the applicant or assignee. According to MPEP 402.04, “A power of attorney may be filed in an individual application, either original or reissue, and in any national stage application.” This document allows the designated representative to make decisions, file documents, and communicate with the USPTO on behalf of the applicant. It’s important to note that the power of attorney must be properly executed and filed to be effective.

To learn more:

• power of attorney
• patent applications
• USPTO
• representative

Patent applications that appear to disclose, purport to disclose, or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy. The purpose is to allow the DOE access to these applications for review.

As stated in MPEP 150: Applications for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. However, it’s important to note that Such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).

For more information on invention disclosure, visit: invention disclosure.

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

For patent applications filed on or after July 1, 2022, the process for submitting biological sequence listings is as follows:

1. Prepare a “Sequence Listing XML” as an XML file.
2. Ensure the file complies with 37 CFR 1.831 – 1.834.
3. Submit the file via the USPTO patent electronic filing system or on a read-only optical disc.

MPEP 608.05(c) states: “For applications filed on or after July 1, 2022, the sequence listing must be a ‘Sequence Listing XML’ (as an XML file in compliance with 37 CFR 1.831 – 1.834) submission can be submitted via the USPTO patent electronic filing system or on read-only optical disc.”

For detailed information on this process, refer to MPEP §§ 2412 – 2419.

To learn more:

• biological sequence listings
• patent applications
• post-July 2022 applications
• XML file

The process for obtaining a foreign filing license is part of the USPTO’s screening procedure for patent applications. The MPEP states:

A third function of the screening procedure is to process foreign filing license petitions under37 CFR 5.12(a). SeeMPEP § 140.

The foreign filing license is automatically granted in most cases as part of the application filing process. However, if the application contains subject matter that requires further review, the applicant may need to petition for a foreign filing license separately.

To obtain a foreign filing license, applicants should:

1. File a patent application with the USPTO
2. Wait for the automatic screening process to complete
3. If a license is not automatically granted, file a petition under 37 CFR 5.12(a)
4. Provide any additional information requested by the USPTO

It’s important to note that filing an application abroad without first obtaining a foreign filing license can have serious consequences, including abandonment of the U.S. application and potential criminal penalties.

For more information on foreign filing license, visit: foreign filing license.

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

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

The priority document exchange program is a system that allows participating patent offices to exchange priority documents electronically. According to MPEP 215.02(a):

“Applicants may use the priority document exchange program to obtain a copy of a foreign application filed in a participating foreign intellectual property office.”

This program simplifies the process of obtaining priority documents for patent applications filed in multiple countries.

To learn more:

• priority document exchange
• patent applications
• foreign applications