Patent Law FAQ

Under 35 U.S.C. 111(a), two types of national applications can be filed:

• Nonprovisional applications: These are regular patent applications that, if granted, can result in an issued patent.
• Provisional applications: These provide a priority date but do not mature into patents without further action.

The MPEP 201.01 states: ‘National applications may be filed under 35 U.S.C. 111(a) as provisional applications under 35 U.S.C. 111(b) or as nonprovisional applications under 35 U.S.C. 111(a).’ Each type has specific requirements and serves different purposes in the patent application process.

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

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

For more information on USPTO, visit: USPTO.

What is the significance of the term ‘carved out’ in relation to divisional applications?

The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.”

The significance of ‘carved out’ includes:

• It implies that the divisional application is derived from a portion of the parent application.
• The divisional application focuses on a specific invention or set of claims that are distinct from those in the parent application.
• The subject matter in the divisional is entirely based on the disclosure in the parent application.
• No new matter can be added to the divisional application beyond what was disclosed in the parent.

This term emphasizes that while the divisional application is separate, it is intrinsically linked to the parent application’s original disclosure, ensuring that the applicant doesn’t gain an unfair advantage by introducing new subject matter.

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

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

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

What is the required oath or declaration for a divisional application?

For a divisional application, a new oath or declaration is generally required. However, there are exceptions:

• If the application is filed on or after September 16, 2012, a copy of the oath or declaration from the prior nonprovisional application may be used, provided that it complies with 37 CFR 1.63, 1.64, or 1.67 for the divisional application.
• If the divisional application was filed before September 16, 2012, and the prior application was filed on or after September 16, 2012, a copy of the oath or declaration from the prior application can be used in the divisional application.

As stated in MPEP 201.06: “A new oath or declaration is required in a divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior nonprovisional application is used in the divisional application, unless the divisional application is filed on or after September 16, 2012.”

To learn more:

• divisional application
• oath
• declaration
• patent filing

What is the relationship between a provisional application and a nonprovisional application?

A provisional application serves as a placeholder for a later-filed nonprovisional application. According to MPEP 201.04:

“A provisional application may serve as a basis for claiming benefit under 35 U.S.C. 119(e) in a later filed nonprovisional application or an international application designating the United States.”

This means that a provisional application can establish an earlier filing date for a subsequent nonprovisional application, provided the nonprovisional is filed within 12 months of the provisional and properly claims benefit to it.

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

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

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

What is the purpose of a divisional application under 37 CFR 1.53(b)?

A divisional application under 37 CFR 1.53(b) serves to pursue claims to a distinct invention that was disclosed but not claimed in a parent application. According to the MPEP:

“A divisional application is often filed as a result of a restriction requirement made by the examiner.”

This allows inventors to protect multiple inventions that may have been included in a single original application but were deemed to be separate and distinct by the USPTO. Divisional applications maintain the benefit of the filing date of the parent application for the common subject matter.

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

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

According to MPEP 201.02, there are important distinctions between ‘original’ and ‘substitute’ applications:

Original Application: This term is used in patent statutes and rules to refer to an application that is not a reissue application. An original application can be either a first filing or a continuing application.

Substitute Application: The MPEP defines a substitute application as follows:

A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. […] A substitute application does not obtain the benefit of the filing date of the prior application.

The key difference is that a substitute application does not retain the filing date of the prior application, unlike certain types of continuing applications.

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

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

What is the benefit of filing a divisional application under 37 CFR 1.53(b)?

Filing a divisional application under 37 CFR 1.53(b) offers several benefits:

• It allows you to pursue claims to an invention that was not elected in a previous application due to a restriction requirement.
• You can file the divisional application without a new oath or declaration if you meet certain conditions.
• The divisional application can claim the benefit of the filing date of the prior application.

As stated in the MPEP: “A divisional application is often filed as a result of a restriction requirement made by the examiner.” This means you can protect additional aspects of your invention that weren’t covered in the original application.

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

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

When claiming the benefit of a provisional application filed in a language other than English, additional requirements must be met. The MPEP states:

“If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application.”

If these documents were not filed in the provisional application, the applicant will be notified and given a period to:

1. File the translation and statement in the provisional application
2. Submit a confirmation in the nonprovisional application that the translation and statement were filed in the provisional application

Failure to respond to this notice in a pending nonprovisional application will result in abandonment. For more details, see MPEP § 211.01(a).

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

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

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

An incomplete patent application is one that is not entitled to a filing date because it lacks some of the essential parts required by the United States Patent and Trademark Office (USPTO). As stated in MPEP 203.06:

An application that is not entitled to a filing date (e.g., for lacking some of the essential parts) is termed an incomplete application.

This means that the application is missing crucial components necessary for it to be considered a complete submission and to receive an official filing date from the USPTO.

To learn more:

• incomplete application
• patent filing
• essential parts
• filing date

An ‘original’ application in patent law refers to an application that is not a reissue application. The MPEP states:

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

This means that an original application can be either:

• The first filing of a patent application for an invention
• A continuing application (continuation, divisional, or continuation-in-part) filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78

To learn more:

• original application
• patent filing
• continuing application

An ‘interim copy’ is a mechanism provided by 37 CFR 1.55(j) that allows applicants to meet the timeliness requirement for submitting a certified copy of a foreign application. It’s a copy of the original foreign application that the applicant can provide from their own records when they cannot obtain a certified copy within the time limit set by 37 CFR 1.55(f).

The MPEP states: 37 CFR 1.55(j) permits an applicant to provide an ‘interim copy’ of the original foreign application from the applicant’s own records to provide for the situation in which the applicant cannot obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f), although there is no requirement that an applicant be unable to obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f) to use 37 CFR 1.55(j).

To learn more:

• interim copy
• foreign application
• patent filing
• certified copy
• timeliness requirement

A provisional patent application is a type of U.S. patent application that allows inventors to establish an early filing date for their invention without the need for a formal patent claim or oath/declaration. According to MPEP 201.04, a provisional application is defined as:

“A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).”

Provisional applications are simpler and less expensive to file than regular nonprovisional applications, but they are not examined for patentability and automatically expire after 12 months.

To learn more:

• provisional application
• patent filing
• USPTO
• early filing date

A continuation-in-part (CIP) application is a type of patent application that builds upon a previously filed application by including new matter not disclosed in the original application. Key points about CIP applications include:

• They are filed while the parent application is still pending.
• They contain a portion or all of the disclosure of the parent application.
• They introduce new matter not present in the original application.
• The new matter is not entitled to the priority date of the parent application.

The MPEP 201.01 states: National applications include […] continuation-in-part applications (which may be filed under 37 CFR 1.53(b)). CIP applications allow inventors to expand on their original invention while maintaining the priority date for the previously disclosed material.

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

For more information on USPTO, visit: USPTO.

Introducing new matter in a divisional application is not allowed and can have serious consequences. According to MPEP 201.06:

“A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.”

This means that a divisional application must not contain any new matter beyond what was disclosed in the parent application. If new matter is introduced:

• The new matter will not be entitled to the benefit of the parent application’s filing date.
• Claims relying on the new matter may be rejected under 35 U.S.C. 112(a) for lack of written description or enablement.
• The application may lose its status as a proper divisional, potentially affecting its ability to overcome certain types of double patenting rejections.

To avoid these issues:

1. Carefully review the divisional application before filing to ensure it only contains subject matter from the parent application.
2. If new subject matter is necessary, consider filing it as a continuation-in-part (CIP) application instead of a divisional.
3. Consult with a patent attorney or agent to ensure compliance with MPEP guidelines.

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

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

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

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

If you file a provisional application but do not file a corresponding nonprovisional application within 12 months, the provisional application will automatically be abandoned. As stated in the MPEP 201.04: “A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter.” This means you lose the benefit of the provisional filing date and cannot claim priority to it in future applications. To maintain the priority benefit, you must file a nonprovisional application claiming benefit of the provisional within the 12-month period.

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

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

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

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

According to MPEP 203.01, a ‘new’ application is defined as follows:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner.

This means that a patent application is considered ‘new’ from the time it is filed until the patent examiner issues their first official response or action on the application.

To learn more:

• new application
• patent examination
• nonprovisional application
• patent filing

To claim benefit to a non-English language provisional application, you must provide:

• An English translation of the non-English language provisional application
• A statement that the translation is accurate

These documents must be filed in the provisional application itself. As stated in MPEP ¶ 2.38: “An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the present (non-provisional) application, you must confirm that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

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

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

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

What are the consequences of not converting a provisional application within 12 months?

If you do not convert a provisional application to a nonprovisional application within 12 months, there are significant consequences:

• The provisional application will automatically expire.
• You will lose the benefit of the provisional filing date.
• The subject matter disclosed in the provisional may become prior art against future applications.

According to MPEP 201.04: “A provisional application will automatically become abandoned 12 months after its filing date pursuant to 35 U.S.C. 111(b)(5).” This means that after 12 months, if no corresponding nonprovisional application has been filed, the provisional application cannot be revived or extended. It’s crucial to file a nonprovisional application or a PCT application within this 12-month period to maintain the benefit of the provisional filing date.

To learn more:

• provisional application
• expiration
• conversion deadline
• patent filing

How does the oath or declaration requirement differ for divisional applications?

For divisional applications, the oath or declaration requirement can be simplified under certain conditions. According to MPEP 201.06(c):

“The divisional application may be filed under 37 CFR 1.53(b) using all or part of a copy of the oath or declaration filed in the prior nonprovisional application under 37 CFR 1.63(d), as long as the oath or declaration is still applicable to the subject matter of the divisional application.”

This means that if the original oath or declaration from the parent application still covers the subject matter in the divisional application, it can be reused. However, if new matter is introduced or the inventors change, a new oath or declaration may be required.

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

For more information on oath or declaration, visit: oath or declaration.

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

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

“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. 37 CFR 1.53(d)(4).”

If an inventor needs to be added or deleted, a request under 37 CFR 1.48 must be filed, along with the required fee. The examiner will notify the applicant if there are any inventorship discrepancies in the first Office action.

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

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

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

According to MPEP 201.01, original applications are defined as follows:

‘Original applications include applications filed under 35 U.S.C. 111(a) and provisional applications filed under 35 U.S.C. 111(b).’

This definition encompasses two distinct types of applications:

• Non-provisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)

Understanding this distinction is crucial for inventors and patent practitioners when deciding which type of application to file based on their specific needs and circumstances.

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

How does a U.S. national stage application differ from a regular national application?

A U.S. national stage application is derived from an international application, while a regular national application is filed directly with the USPTO. The key differences lie in their origins and the legal provisions governing them.

As stated in MPEP 201.01:

A national application may be a U.S. national application filed under 35 U.S.C. 111(a), or a national stage application under 35 U.S.C. 371 of an international application.

Regular national applications are filed under 35 U.S.C. 111(a), while national stage applications enter the U.S. national phase from an international PCT application under 35 U.S.C. 371. National stage applications must meet specific requirements for entering the national phase, such as time limits and submission of necessary documents.

For more information on national stage application, visit: national stage application.

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

For more information on USPTO, visit: USPTO.

While the MPEP 201.02 doesn’t provide detailed definitions, it references 37 CFR 1.9(a) for the definitions of provisional and nonprovisional applications:

• Provisional Application: A temporary application that establishes an early filing date but does not mature into an issued patent without further action.
• Nonprovisional Application: A regular patent application that can be examined and potentially result in an issued patent.

Key differences include:

• Provisional applications have a pendency of 12 months from the filing date.
• Nonprovisional applications undergo examination, while provisional applications do not.
• A nonprovisional application must be filed within 12 months of the provisional to claim its filing date benefit.

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

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

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

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

Can I file a provisional application in a language other than English?

Yes, you can file a provisional application in a language other than English. However, there are important considerations:

• The USPTO accepts provisional applications in any language.
• An English translation is not required at the time of filing.
• If a nonprovisional application is later filed claiming benefit of the provisional, an English translation may be required.

The MPEP 201.04 states: “If a provisional application is filed in a language other than English, an English-language translation of the non-English language provisional application will not be required in the provisional application.” However, it’s important to note that if you later file a nonprovisional application claiming benefit of the provisional, you may need to provide an English translation at that time, along with a statement that the translation is accurate.

To learn more:

• provisional application
• foreign language
• English translation
• patent filing

No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:

“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”

This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.

To learn more:

• provisional application priority
• patent filing
• USPTO
• priority claim

Yes, a provisional patent application can be converted to a nonprovisional application. According to MPEP 201.04:

“A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application.”

However, there are specific requirements and considerations for this conversion:

• The request for conversion must be accompanied by the fee set forth in 37 CFR 1.17(i)
• An amendment including at least one claim as prescribed by 35 U.S.C. 112(b) must be submitted
• The request must be filed before the abandonment of the provisional application or the expiration of 12 months after its filing date
• Additional fees for nonprovisional applications will be required

It’s important to note that converting a provisional to a nonprovisional application may result in a shorter patent term. Therefore, filing a new nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) is often preferable.

To learn more:

• provisional application conversion
• nonprovisional application
• USPTO
• patent filing

Yes, a legal representative can file a national patent application in certain circumstances. The Manual of Patent Examining Procedure (MPEP) 201.01 states:

‘A national application may be filed under 35 U.S.C. 111(a) in the U.S. Patent and Trademark Office (USPTO) by… (B) the legal representative (35 U.S.C. 117) of a deceased or legally incapacitated inventor.’

This provision allows for the continuity of the patent application process when the inventor is unable to file themselves. The legal representative must be authorized under 35 U.S.C. 117, which typically includes executors, administrators, or other legal representatives of deceased inventors, or guardians or conservators of incapacitated inventors.

For more information on legal representative, visit: legal representative.

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

Yes, a divisional application can claim priority to a provisional application under certain conditions. According to MPEP 201.06:

‘A divisional application may claim the benefit of a provisional application under 35 U.S.C. 119(e) if the divisional application is filed within twelve months of the provisional application filing date (or an appropriate later date in accordance with 37 CFR 1.78).’

To claim this benefit, the divisional application must:

• Be filed within 12 months of the provisional application’s filing date (or later if permitted under 37 CFR 1.78)
• Include a proper reference to the provisional application
• Have at least one common inventor with the provisional application

To learn more:

• divisional application
• provisional application
• priority claim
• 35 U.S.C. 119(e)
• 37 CFR 1.78

To learn more:

• patent filing

No, provisional patent applications are not examined for patentability. The MPEP explicitly states:

Provisional applications will not be examined for patentability.

This is one of the key differences between provisional and nonprovisional applications. The purpose of a provisional application is to:

• Establish an early filing date
• Allow the term ‘Patent Pending’ to be applied
• Provide a 12-month period to further develop the invention

Since provisional applications are not examined, they do not require formal patent claims or an oath or declaration. This simplifies the filing process and allows inventors to quickly secure a priority date for their invention.

To obtain patent protection, a nonprovisional application must be filed, which will then undergo examination for patentability.

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

A substitute application is a type of national application that is filed to replace a previously filed non-provisional or provisional application. It is used when an applicant wants to start over with a new application while maintaining the benefit of the earlier filing date for common subject matter.

Key points about substitute applications:

• They are treated as new applications and receive a new application number.
• The previously filed application is considered to be abandoned as of the filing date of the substitute application.
• Substitute applications can claim the benefit of the earlier application’s filing date for common subject matter.
• They must be filed while the earlier application is still pending.
• Applicants must file a copy of the original application, specification, drawings, and amendments, if any, and a new oath or declaration.

For more information, see MPEP 201.09 and 37 CFR 1.53.

A provisional application for patent is a type of U.S. patent application that allows inventors to establish an early filing date for their invention without filing a formal patent claim or any information disclosure statement. Key points about provisional applications include:

1. They provide a 12-month pendency from the date of filing.
2. They cannot be extended beyond 12 months.
3. They are not examined on their merits.
4. They can serve as a priority document in foreign filing.
5. They require a specification and drawing(s) if necessary to understand the invention.
6. They do not require formal patent claims or an oath or declaration.

Inventors must file a corresponding nonprovisional application within 12 months to claim the benefit of the provisional application’s filing date. For more details, see USPTO’s Provisional Application for Patent and MPEP 201.04(b).

For patent applications, prior U.S. application data should be provided as follows:

• For applications filed on or after September 16, 2012: In an application data sheet
• For applications filed before September 16, 2012: In either the first sentence(s) of the specification or in an application data sheet

MPEP 202 states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.”

Under 35 U.S.C. 111(a), two types of national applications can be filed:

• Nonprovisional applications: These are regular patent applications that, if granted, can result in an issued patent.
• Provisional applications: These provide a priority date but do not mature into patents without further action.

The MPEP 201.01 states: ‘National applications may be filed under 35 U.S.C. 111(a) as provisional applications under 35 U.S.C. 111(b) or as nonprovisional applications under 35 U.S.C. 111(a).’ Each type has specific requirements and serves different purposes in the patent application process.

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

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

For more information on USPTO, visit: USPTO.

What is the significance of the term ‘carved out’ in relation to divisional applications?

The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.”

The significance of ‘carved out’ includes:

• It implies that the divisional application is derived from a portion of the parent application.
• The divisional application focuses on a specific invention or set of claims that are distinct from those in the parent application.
• The subject matter in the divisional is entirely based on the disclosure in the parent application.
• No new matter can be added to the divisional application beyond what was disclosed in the parent.

This term emphasizes that while the divisional application is separate, it is intrinsically linked to the parent application’s original disclosure, ensuring that the applicant doesn’t gain an unfair advantage by introducing new subject matter.

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

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

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

What is the relationship between a provisional application and a nonprovisional application?

A provisional application serves as a placeholder for a later-filed nonprovisional application. According to MPEP 201.04:

“A provisional application may serve as a basis for claiming benefit under 35 U.S.C. 119(e) in a later filed nonprovisional application or an international application designating the United States.”

This means that a provisional application can establish an earlier filing date for a subsequent nonprovisional application, provided the nonprovisional is filed within 12 months of the provisional and properly claims benefit to it.

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

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

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

What is the purpose of a divisional application under 37 CFR 1.53(b)?

A divisional application under 37 CFR 1.53(b) serves to pursue claims to a distinct invention that was disclosed but not claimed in a parent application. According to the MPEP:

“A divisional application is often filed as a result of a restriction requirement made by the examiner.”

This allows inventors to protect multiple inventions that may have been included in a single original application but were deemed to be separate and distinct by the USPTO. Divisional applications maintain the benefit of the filing date of the parent application for the common subject matter.

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

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

According to MPEP 201.02, there are important distinctions between ‘original’ and ‘substitute’ applications:

Original Application: This term is used in patent statutes and rules to refer to an application that is not a reissue application. An original application can be either a first filing or a continuing application.

Substitute Application: The MPEP defines a substitute application as follows:

A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. […] A substitute application does not obtain the benefit of the filing date of the prior application.

The key difference is that a substitute application does not retain the filing date of the prior application, unlike certain types of continuing applications.

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

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

What is the benefit of filing a divisional application under 37 CFR 1.53(b)?

Filing a divisional application under 37 CFR 1.53(b) offers several benefits:

• It allows you to pursue claims to an invention that was not elected in a previous application due to a restriction requirement.
• You can file the divisional application without a new oath or declaration if you meet certain conditions.
• The divisional application can claim the benefit of the filing date of the prior application.

As stated in the MPEP: “A divisional application is often filed as a result of a restriction requirement made by the examiner.” This means you can protect additional aspects of your invention that weren’t covered in the original application.

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

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

A substitute application is a type of national application that is filed to replace a previously filed non-provisional or provisional application. It is used when an applicant wants to start over with a new application while maintaining the benefit of the earlier filing date for common subject matter.

Key points about substitute applications:

• They are treated as new applications and receive a new application number.
• The previously filed application is considered to be abandoned as of the filing date of the substitute application.
• Substitute applications can claim the benefit of the earlier application’s filing date for common subject matter.
• They must be filed while the earlier application is still pending.
• Applicants must file a copy of the original application, specification, drawings, and amendments, if any, and a new oath or declaration.

For more information, see MPEP 201.09 and 37 CFR 1.53.

A provisional application for patent is a type of U.S. patent application that allows inventors to establish an early filing date for their invention without filing a formal patent claim or any information disclosure statement. Key points about provisional applications include:

1. They provide a 12-month pendency from the date of filing.
2. They cannot be extended beyond 12 months.
3. They are not examined on their merits.
4. They can serve as a priority document in foreign filing.
5. They require a specification and drawing(s) if necessary to understand the invention.
6. They do not require formal patent claims or an oath or declaration.

Inventors must file a corresponding nonprovisional application within 12 months to claim the benefit of the provisional application’s filing date. For more details, see USPTO’s Provisional Application for Patent and MPEP 201.04(b).

A continuation-in-part (CIP) application is a type of patent application that builds upon a previously filed application by including new matter not disclosed in the original application. Key points about CIP applications include:

• They are filed while the parent application is still pending.
• They contain a portion or all of the disclosure of the parent application.
• They introduce new matter not present in the original application.
• The new matter is not entitled to the priority date of the parent application.

The MPEP 201.01 states: National applications include […] continuation-in-part applications (which may be filed under 37 CFR 1.53(b)). CIP applications allow inventors to expand on their original invention while maintaining the priority date for the previously disclosed material.

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

For more information on USPTO, visit: USPTO.

Introducing new matter in a divisional application is not allowed and can have serious consequences. According to MPEP 201.06:

“A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.”

This means that a divisional application must not contain any new matter beyond what was disclosed in the parent application. If new matter is introduced:

• The new matter will not be entitled to the benefit of the parent application’s filing date.
• Claims relying on the new matter may be rejected under 35 U.S.C. 112(a) for lack of written description or enablement.
• The application may lose its status as a proper divisional, potentially affecting its ability to overcome certain types of double patenting rejections.

To avoid these issues:

1. Carefully review the divisional application before filing to ensure it only contains subject matter from the parent application.
2. If new subject matter is necessary, consider filing it as a continuation-in-part (CIP) application instead of a divisional.
3. Consult with a patent attorney or agent to ensure compliance with MPEP guidelines.

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

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

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

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

If you file a provisional application but do not file a corresponding nonprovisional application within 12 months, the provisional application will automatically be abandoned. As stated in the MPEP 201.04: “A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter.” This means you lose the benefit of the provisional filing date and cannot claim priority to it in future applications. To maintain the priority benefit, you must file a nonprovisional application claiming benefit of the provisional within the 12-month period.

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

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

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

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

How does the oath or declaration requirement differ for divisional applications?

For divisional applications, the oath or declaration requirement can be simplified under certain conditions. According to MPEP 201.06(c):

“The divisional application may be filed under 37 CFR 1.53(b) using all or part of a copy of the oath or declaration filed in the prior nonprovisional application under 37 CFR 1.63(d), as long as the oath or declaration is still applicable to the subject matter of the divisional application.”

This means that if the original oath or declaration from the parent application still covers the subject matter in the divisional application, it can be reused. However, if new matter is introduced or the inventors change, a new oath or declaration may be required.

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

For more information on oath or declaration, visit: oath or declaration.

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

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

“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. 37 CFR 1.53(d)(4).”

If an inventor needs to be added or deleted, a request under 37 CFR 1.48 must be filed, along with the required fee. The examiner will notify the applicant if there are any inventorship discrepancies in the first Office action.

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

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

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

According to MPEP 201.01, original applications are defined as follows:

‘Original applications include applications filed under 35 U.S.C. 111(a) and provisional applications filed under 35 U.S.C. 111(b).’

This definition encompasses two distinct types of applications:

• Non-provisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)

Understanding this distinction is crucial for inventors and patent practitioners when deciding which type of application to file based on their specific needs and circumstances.

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

How does a U.S. national stage application differ from a regular national application?

A U.S. national stage application is derived from an international application, while a regular national application is filed directly with the USPTO. The key differences lie in their origins and the legal provisions governing them.

As stated in MPEP 201.01:

A national application may be a U.S. national application filed under 35 U.S.C. 111(a), or a national stage application under 35 U.S.C. 371 of an international application.

Regular national applications are filed under 35 U.S.C. 111(a), while national stage applications enter the U.S. national phase from an international PCT application under 35 U.S.C. 371. National stage applications must meet specific requirements for entering the national phase, such as time limits and submission of necessary documents.

For more information on national stage application, visit: national stage application.

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

For more information on USPTO, visit: USPTO.

While the MPEP 201.02 doesn’t provide detailed definitions, it references 37 CFR 1.9(a) for the definitions of provisional and nonprovisional applications:

• Provisional Application: A temporary application that establishes an early filing date but does not mature into an issued patent without further action.
• Nonprovisional Application: A regular patent application that can be examined and potentially result in an issued patent.

Key differences include:

• Provisional applications have a pendency of 12 months from the filing date.
• Nonprovisional applications undergo examination, while provisional applications do not.
• A nonprovisional application must be filed within 12 months of the provisional to claim its filing date benefit.

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

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

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

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

Yes, a legal representative can file a national patent application in certain circumstances. The Manual of Patent Examining Procedure (MPEP) 201.01 states:

‘A national application may be filed under 35 U.S.C. 111(a) in the U.S. Patent and Trademark Office (USPTO) by… (B) the legal representative (35 U.S.C. 117) of a deceased or legally incapacitated inventor.’

This provision allows for the continuity of the patent application process when the inventor is unable to file themselves. The legal representative must be authorized under 35 U.S.C. 117, which typically includes executors, administrators, or other legal representatives of deceased inventors, or guardians or conservators of incapacitated inventors.

For more information on legal representative, visit: legal representative.

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

No, provisional patent applications are not examined for patentability. The MPEP explicitly states:

Provisional applications will not be examined for patentability.

This is one of the key differences between provisional and nonprovisional applications. The purpose of a provisional application is to:

• Establish an early filing date
• Allow the term ‘Patent Pending’ to be applied
• Provide a 12-month period to further develop the invention

Since provisional applications are not examined, they do not require formal patent claims or an oath or declaration. This simplifies the filing process and allows inventors to quickly secure a priority date for their invention.

To obtain patent protection, a nonprovisional application must be filed, which will then undergo examination for patentability.

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

For patent applications, prior U.S. application data should be provided as follows:

• For applications filed on or after September 16, 2012: In an application data sheet
• For applications filed before September 16, 2012: In either the first sentence(s) of the specification or in an application data sheet

MPEP 202 states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.”

When claiming the benefit of a provisional application filed in a language other than English, additional requirements must be met. The MPEP states:

“If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application.”

If these documents were not filed in the provisional application, the applicant will be notified and given a period to:

1. File the translation and statement in the provisional application
2. Submit a confirmation in the nonprovisional application that the translation and statement were filed in the provisional application

Failure to respond to this notice in a pending nonprovisional application will result in abandonment. For more details, see MPEP § 211.01(a).

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

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

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

To claim benefit to a non-English language provisional application, you must provide:

• An English translation of the non-English language provisional application
• A statement that the translation is accurate

These documents must be filed in the provisional application itself. As stated in MPEP ¶ 2.38: “An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the present (non-provisional) application, you must confirm that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

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

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

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

When presenting any paper to the USPTO, the party (whether a practitioner or non-practitioner) is making important certifications as outlined in 37 CFR 11.18(b):

1. All statements made of the party’s own knowledge are true.
2. Statements made on information and belief are believed to be true.
3. The paper is not being presented for any improper purpose (e.g., harassment, delay).
4. Legal contentions are warranted by existing law or non-frivolous arguments for changes in the law.
5. Factual contentions have or are likely to have evidentiary support.
6. Denials of factual contentions are warranted or based on lack of information or belief.

The MPEP notes: “37 CFR 11.18(b) provides that, by presenting any paper to the Office, the party presenting such paper (whether a practitioner or non-practitioner) is: (1) certifying that the statements made therein are subject to the declaration clause of 37 CFR 1.68; and (2) making the certifications required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure.”

To learn more:

• USPTO Certifications
• Patent Filing
• Legal Responsibilities
• Practitioner Duties

Yes, registered attorneys or agents not of record can file papers in patent applications and reexamination proceedings under 37 CFR 1.34. The MPEP states:

Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.

This means that by filing papers, the attorney or agent is implicitly declaring their authority to represent the applicant.

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

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

Yes, registered attorneys or agents not of record can file papers in patent applications and reexamination proceedings under 37 CFR 1.34. The MPEP states:

Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.

This means that by filing papers, the attorney or agent is implicitly declaring their authority to represent the applicant.

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

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

As of July 28, 2013, the United States Postal Service (USPS) renamed ‘Express Mail’ to ‘Priority Mail Express’. According to MPEP 511:

“Effective July 28, 2013, the United States Postal Service (USPS) changed the name of ‘Express Mail’ to ‘Priority Mail Express.’ All characteristics of the ‘Priority Mail Express’ service are the same as those of the former ‘Express Mail’ service (although the mailing labels differ).”

This change is important for patent applicants to note, as the USPTO’s rules and procedures now refer to ‘Priority Mail Express’ instead of ‘Express Mail’. However, the service characteristics and benefits for patent filings remain the same. When using this service for USPTO correspondence, ensure you use the correct addresses as specified in 37 CFR 1.1 and avoid using the ‘Hold for Pickup’ option, as the USPTO does not pick up mail.

To learn more:

• Express Mail
• Priority Mail Express
• USPS
• Patent Filing

In the event of a postal interruption or emergency, the USPTO will take the following actions:

• Place an announcement on the USPTO website at www.uspto.gov
• Publish a notice in the Official Gazette

These communications will provide instructions about filing patent applications and other patent-related papers. As stated in MPEP 511:

“In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

This ensures that applicants have clear guidance on how to proceed during such circumstances.

To learn more:

• Postal Service
• Patent Filing
• Emergency Procedures
• USPTO Announcements

As of July 28, 2013, the United States Postal Service (USPS) renamed ‘Express Mail’ to ‘Priority Mail Express’. According to MPEP 511:

“Effective July 28, 2013, the United States Postal Service (USPS) changed the name of ‘Express Mail’ to ‘Priority Mail Express.’ All characteristics of the ‘Priority Mail Express’ service are the same as those of the former ‘Express Mail’ service (although the mailing labels differ).”

This change is important for patent applicants to note, as the USPTO’s rules and procedures now refer to ‘Priority Mail Express’ instead of ‘Express Mail’. However, the service characteristics and benefits for patent filings remain the same. When using this service for USPTO correspondence, ensure you use the correct addresses as specified in 37 CFR 1.1 and avoid using the ‘Hold for Pickup’ option, as the USPTO does not pick up mail.

To learn more:

• Express Mail
• Priority Mail Express
• USPS
• Patent Filing

In the event of a postal interruption or emergency, the USPTO will take the following actions:

• Place an announcement on the USPTO website at www.uspto.gov
• Publish a notice in the Official Gazette

These communications will provide instructions about filing patent applications and other patent-related papers. As stated in MPEP 511:

“In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

This ensures that applicants have clear guidance on how to proceed during such circumstances.

To learn more:

• Postal Service
• Patent Filing
• Emergency Procedures
• USPTO Announcements

Under 35 U.S.C. 111(a), two types of national applications can be filed:

• Nonprovisional applications: These are regular patent applications that, if granted, can result in an issued patent.
• Provisional applications: These provide a priority date but do not mature into patents without further action.

The MPEP 201.01 states: ‘National applications may be filed under 35 U.S.C. 111(a) as provisional applications under 35 U.S.C. 111(b) or as nonprovisional applications under 35 U.S.C. 111(a).’ Each type has specific requirements and serves different purposes in the patent application process.

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

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

For more information on USPTO, visit: USPTO.

What is the significance of the term ‘carved out’ in relation to divisional applications?

The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.”

The significance of ‘carved out’ includes:

• It implies that the divisional application is derived from a portion of the parent application.
• The divisional application focuses on a specific invention or set of claims that are distinct from those in the parent application.
• The subject matter in the divisional is entirely based on the disclosure in the parent application.
• No new matter can be added to the divisional application beyond what was disclosed in the parent.

This term emphasizes that while the divisional application is separate, it is intrinsically linked to the parent application’s original disclosure, ensuring that the applicant doesn’t gain an unfair advantage by introducing new subject matter.

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

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

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

What is the required oath or declaration for a divisional application?

For a divisional application, a new oath or declaration is generally required. However, there are exceptions:

• If the application is filed on or after September 16, 2012, a copy of the oath or declaration from the prior nonprovisional application may be used, provided that it complies with 37 CFR 1.63, 1.64, or 1.67 for the divisional application.
• If the divisional application was filed before September 16, 2012, and the prior application was filed on or after September 16, 2012, a copy of the oath or declaration from the prior application can be used in the divisional application.

As stated in MPEP 201.06: “A new oath or declaration is required in a divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior nonprovisional application is used in the divisional application, unless the divisional application is filed on or after September 16, 2012.”

To learn more:

• divisional application
• oath
• declaration
• patent filing

What is the relationship between a provisional application and a nonprovisional application?

A provisional application serves as a placeholder for a later-filed nonprovisional application. According to MPEP 201.04:

“A provisional application may serve as a basis for claiming benefit under 35 U.S.C. 119(e) in a later filed nonprovisional application or an international application designating the United States.”

This means that a provisional application can establish an earlier filing date for a subsequent nonprovisional application, provided the nonprovisional is filed within 12 months of the provisional and properly claims benefit to it.

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

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

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

What is the purpose of a divisional application under 37 CFR 1.53(b)?

A divisional application under 37 CFR 1.53(b) serves to pursue claims to a distinct invention that was disclosed but not claimed in a parent application. According to the MPEP:

“A divisional application is often filed as a result of a restriction requirement made by the examiner.”

This allows inventors to protect multiple inventions that may have been included in a single original application but were deemed to be separate and distinct by the USPTO. Divisional applications maintain the benefit of the filing date of the parent application for the common subject matter.

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

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

According to MPEP 201.02, there are important distinctions between ‘original’ and ‘substitute’ applications:

Original Application: This term is used in patent statutes and rules to refer to an application that is not a reissue application. An original application can be either a first filing or a continuing application.

Substitute Application: The MPEP defines a substitute application as follows:

A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. […] A substitute application does not obtain the benefit of the filing date of the prior application.

The key difference is that a substitute application does not retain the filing date of the prior application, unlike certain types of continuing applications.

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

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

As of July 28, 2013, the United States Postal Service (USPS) renamed ‘Express Mail’ to ‘Priority Mail Express’. According to MPEP 511:

“Effective July 28, 2013, the United States Postal Service (USPS) changed the name of ‘Express Mail’ to ‘Priority Mail Express.’ All characteristics of the ‘Priority Mail Express’ service are the same as those of the former ‘Express Mail’ service (although the mailing labels differ).”

This change is important for patent applicants to note, as the USPTO’s rules and procedures now refer to ‘Priority Mail Express’ instead of ‘Express Mail’. However, the service characteristics and benefits for patent filings remain the same. When using this service for USPTO correspondence, ensure you use the correct addresses as specified in 37 CFR 1.1 and avoid using the ‘Hold for Pickup’ option, as the USPTO does not pick up mail.

To learn more:

• Express Mail
• Priority Mail Express
• USPS
• Patent Filing

What is the benefit of filing a divisional application under 37 CFR 1.53(b)?

Filing a divisional application under 37 CFR 1.53(b) offers several benefits:

• It allows you to pursue claims to an invention that was not elected in a previous application due to a restriction requirement.
• You can file the divisional application without a new oath or declaration if you meet certain conditions.
• The divisional application can claim the benefit of the filing date of the prior application.

As stated in the MPEP: “A divisional application is often filed as a result of a restriction requirement made by the examiner.” This means you can protect additional aspects of your invention that weren’t covered in the original application.

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

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

When claiming the benefit of a provisional application filed in a language other than English, additional requirements must be met. The MPEP states:

“If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application.”

If these documents were not filed in the provisional application, the applicant will be notified and given a period to:

1. File the translation and statement in the provisional application
2. Submit a confirmation in the nonprovisional application that the translation and statement were filed in the provisional application

Failure to respond to this notice in a pending nonprovisional application will result in abandonment. For more details, see MPEP § 211.01(a).

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

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

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

An incomplete patent application is one that is not entitled to a filing date because it lacks some of the essential parts required by the United States Patent and Trademark Office (USPTO). As stated in MPEP 203.06:

An application that is not entitled to a filing date (e.g., for lacking some of the essential parts) is termed an incomplete application.

This means that the application is missing crucial components necessary for it to be considered a complete submission and to receive an official filing date from the USPTO.

To learn more:

• incomplete application
• patent filing
• essential parts
• filing date

An ‘original’ application in patent law refers to an application that is not a reissue application. The MPEP states:

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

This means that an original application can be either:

• The first filing of a patent application for an invention
• A continuing application (continuation, divisional, or continuation-in-part) filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78

To learn more:

• original application
• patent filing
• continuing application

An ‘interim copy’ is a mechanism provided by 37 CFR 1.55(j) that allows applicants to meet the timeliness requirement for submitting a certified copy of a foreign application. It’s a copy of the original foreign application that the applicant can provide from their own records when they cannot obtain a certified copy within the time limit set by 37 CFR 1.55(f).

The MPEP states: 37 CFR 1.55(j) permits an applicant to provide an ‘interim copy’ of the original foreign application from the applicant’s own records to provide for the situation in which the applicant cannot obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f), although there is no requirement that an applicant be unable to obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f) to use 37 CFR 1.55(j).

To learn more:

• interim copy
• foreign application
• patent filing
• certified copy
• timeliness requirement

A substitute application is a type of national application that is filed to replace a previously filed non-provisional or provisional application. It is used when an applicant wants to start over with a new application while maintaining the benefit of the earlier filing date for common subject matter.

Key points about substitute applications:

• They are treated as new applications and receive a new application number.
• The previously filed application is considered to be abandoned as of the filing date of the substitute application.
• Substitute applications can claim the benefit of the earlier application’s filing date for common subject matter.
• They must be filed while the earlier application is still pending.
• Applicants must file a copy of the original application, specification, drawings, and amendments, if any, and a new oath or declaration.

For more information, see MPEP 201.09 and 37 CFR 1.53.

A provisional patent application is a type of U.S. patent application that allows inventors to establish an early filing date for their invention without the need for a formal patent claim or oath/declaration. According to MPEP 201.04, a provisional application is defined as:

“A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).”

Provisional applications are simpler and less expensive to file than regular nonprovisional applications, but they are not examined for patentability and automatically expire after 12 months.

To learn more:

• provisional application
• patent filing
• USPTO
• early filing date

A provisional application for patent is a type of U.S. patent application that allows inventors to establish an early filing date for their invention without filing a formal patent claim or any information disclosure statement. Key points about provisional applications include:

1. They provide a 12-month pendency from the date of filing.
2. They cannot be extended beyond 12 months.
3. They are not examined on their merits.
4. They can serve as a priority document in foreign filing.
5. They require a specification and drawing(s) if necessary to understand the invention.
6. They do not require formal patent claims or an oath or declaration.

Inventors must file a corresponding nonprovisional application within 12 months to claim the benefit of the provisional application’s filing date. For more details, see USPTO’s Provisional Application for Patent and MPEP 201.04(b).

A continuation-in-part (CIP) application is a type of patent application that builds upon a previously filed application by including new matter not disclosed in the original application. Key points about CIP applications include:

• They are filed while the parent application is still pending.
• They contain a portion or all of the disclosure of the parent application.
• They introduce new matter not present in the original application.
• The new matter is not entitled to the priority date of the parent application.

The MPEP 201.01 states: National applications include […] continuation-in-part applications (which may be filed under 37 CFR 1.53(b)). CIP applications allow inventors to expand on their original invention while maintaining the priority date for the previously disclosed material.

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

For more information on USPTO, visit: USPTO.

In the event of a postal interruption or emergency, the USPTO will take the following actions:

• Place an announcement on the USPTO website at www.uspto.gov
• Publish a notice in the Official Gazette

These communications will provide instructions about filing patent applications and other patent-related papers. As stated in MPEP 511:

“In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

This ensures that applicants have clear guidance on how to proceed during such circumstances.

To learn more:

• Postal Service
• Patent Filing
• Emergency Procedures
• USPTO Announcements

Introducing new matter in a divisional application is not allowed and can have serious consequences. According to MPEP 201.06:

“A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.”

This means that a divisional application must not contain any new matter beyond what was disclosed in the parent application. If new matter is introduced:

• The new matter will not be entitled to the benefit of the parent application’s filing date.
• Claims relying on the new matter may be rejected under 35 U.S.C. 112(a) for lack of written description or enablement.
• The application may lose its status as a proper divisional, potentially affecting its ability to overcome certain types of double patenting rejections.

To avoid these issues:

1. Carefully review the divisional application before filing to ensure it only contains subject matter from the parent application.
2. If new subject matter is necessary, consider filing it as a continuation-in-part (CIP) application instead of a divisional.
3. Consult with a patent attorney or agent to ensure compliance with MPEP guidelines.

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

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

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

What happens if joint inventors can’t agree on filing a patent application?

If joint inventors cannot agree on filing a patent application, it can lead to complications. According to MPEP 602.09, ‘Each joint inventor may make the application for patent on behalf of himself and the other joint inventors.’ This means that any one of the joint inventors can file the application without the consent of the others. However, this situation may lead to disputes and potential legal issues. It’s generally recommended that joint inventors try to reach an agreement or seek legal counsel to resolve any disagreements before filing.

To learn more:

• Joint inventors
• Patent application
• Inventor disagreements
• Patent filing

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

If you file a provisional application but do not file a corresponding nonprovisional application within 12 months, the provisional application will automatically be abandoned. As stated in the MPEP 201.04: “A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter.” This means you lose the benefit of the provisional filing date and cannot claim priority to it in future applications. To maintain the priority benefit, you must file a nonprovisional application claiming benefit of the provisional within the 12-month period.

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

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

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

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

According to MPEP 203.01, a ‘new’ application is defined as follows:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner.

This means that a patent application is considered ‘new’ from the time it is filed until the patent examiner issues their first official response or action on the application.

To learn more:

• new application
• patent examination
• nonprovisional application
• patent filing

When presenting any paper to the USPTO, the party (whether a practitioner or non-practitioner) is making important certifications as outlined in 37 CFR 11.18(b):

1. All statements made of the party’s own knowledge are true.
2. Statements made on information and belief are believed to be true.
3. The paper is not being presented for any improper purpose (e.g., harassment, delay).
4. Legal contentions are warranted by existing law or non-frivolous arguments for changes in the law.
5. Factual contentions have or are likely to have evidentiary support.
6. Denials of factual contentions are warranted or based on lack of information or belief.

The MPEP notes: “37 CFR 11.18(b) provides that, by presenting any paper to the Office, the party presenting such paper (whether a practitioner or non-practitioner) is: (1) certifying that the statements made therein are subject to the declaration clause of 37 CFR 1.68; and (2) making the certifications required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure.”

To learn more:

• USPTO Certifications
• Patent Filing
• Legal Responsibilities
• Practitioner Duties

For continuation or divisional applications filed before September 16, 2012 under 37 CFR 1.53(b) (excluding continuation-in-part applications), applicants could file using a copy of the oath or declaration from the prior nonprovisional application. This is supported by the MPEP, which states:

“A continuation or divisional application filed before September 16, 2012 under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application.”

This provision simplified the filing process for certain types of continuing applications by allowing the use of previously submitted documents.

To learn more:

• continuation application
• divisional application
• oath
• declaration
• patent filing

To claim benefit to a non-English language provisional application, you must provide:

• An English translation of the non-English language provisional application
• A statement that the translation is accurate

These documents must be filed in the provisional application itself. As stated in MPEP ¶ 2.38: “An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the present (non-provisional) application, you must confirm that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

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

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

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

What are the consequences of not converting a provisional application within 12 months?

If you do not convert a provisional application to a nonprovisional application within 12 months, there are significant consequences:

• The provisional application will automatically expire.
• You will lose the benefit of the provisional filing date.
• The subject matter disclosed in the provisional may become prior art against future applications.

According to MPEP 201.04: “A provisional application will automatically become abandoned 12 months after its filing date pursuant to 35 U.S.C. 111(b)(5).” This means that after 12 months, if no corresponding nonprovisional application has been filed, the provisional application cannot be revived or extended. It’s crucial to file a nonprovisional application or a PCT application within this 12-month period to maintain the benefit of the provisional filing date.

To learn more:

• provisional application
• expiration
• conversion deadline
• patent filing

For patent applications, prior U.S. application data should be provided as follows:

• For applications filed on or after September 16, 2012: In an application data sheet
• For applications filed before September 16, 2012: In either the first sentence(s) of the specification or in an application data sheet

MPEP 202 states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.”

How does the oath or declaration requirement differ for divisional applications?

For divisional applications, the oath or declaration requirement can be simplified under certain conditions. According to MPEP 201.06(c):

“The divisional application may be filed under 37 CFR 1.53(b) using all or part of a copy of the oath or declaration filed in the prior nonprovisional application under 37 CFR 1.63(d), as long as the oath or declaration is still applicable to the subject matter of the divisional application.”

This means that if the original oath or declaration from the parent application still covers the subject matter in the divisional application, it can be reused. However, if new matter is introduced or the inventors change, a new oath or declaration may be required.

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

For more information on oath or declaration, visit: oath or declaration.

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

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

“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. 37 CFR 1.53(d)(4).”

If an inventor needs to be added or deleted, a request under 37 CFR 1.48 must be filed, along with the required fee. The examiner will notify the applicant if there are any inventorship discrepancies in the first Office action.

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

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

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

According to MPEP 201.01, original applications are defined as follows:

‘Original applications include applications filed under 35 U.S.C. 111(a) and provisional applications filed under 35 U.S.C. 111(b).’

This definition encompasses two distinct types of applications:

• Non-provisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)

Understanding this distinction is crucial for inventors and patent practitioners when deciding which type of application to file based on their specific needs and circumstances.

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

How does a U.S. national stage application differ from a regular national application?

A U.S. national stage application is derived from an international application, while a regular national application is filed directly with the USPTO. The key differences lie in their origins and the legal provisions governing them.

As stated in MPEP 201.01:

A national application may be a U.S. national application filed under 35 U.S.C. 111(a), or a national stage application under 35 U.S.C. 371 of an international application.

Regular national applications are filed under 35 U.S.C. 111(a), while national stage applications enter the U.S. national phase from an international PCT application under 35 U.S.C. 371. National stage applications must meet specific requirements for entering the national phase, such as time limits and submission of necessary documents.

For more information on national stage application, visit: national stage application.

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

For more information on USPTO, visit: USPTO.

While the MPEP 201.02 doesn’t provide detailed definitions, it references 37 CFR 1.9(a) for the definitions of provisional and nonprovisional applications:

• Provisional Application: A temporary application that establishes an early filing date but does not mature into an issued patent without further action.
• Nonprovisional Application: A regular patent application that can be examined and potentially result in an issued patent.

Key differences include:

• Provisional applications have a pendency of 12 months from the filing date.
• Nonprovisional applications undergo examination, while provisional applications do not.
• A nonprovisional application must be filed within 12 months of the provisional to claim its filing date benefit.

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

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

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

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

Can I file a provisional application in a language other than English?

Yes, you can file a provisional application in a language other than English. However, there are important considerations:

• The USPTO accepts provisional applications in any language.
• An English translation is not required at the time of filing.
• If a nonprovisional application is later filed claiming benefit of the provisional, an English translation may be required.

The MPEP 201.04 states: “If a provisional application is filed in a language other than English, an English-language translation of the non-English language provisional application will not be required in the provisional application.” However, it’s important to note that if you later file a nonprovisional application claiming benefit of the provisional, you may need to provide an English translation at that time, along with a statement that the translation is accurate.

To learn more:

• provisional application
• foreign language
• English translation
• patent filing

No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:

“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”

This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.

To learn more:

• provisional application priority
• patent filing
• USPTO
• priority claim

Yes, a provisional patent application can be converted to a nonprovisional application. According to MPEP 201.04:

“A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application.”

However, there are specific requirements and considerations for this conversion:

• The request for conversion must be accompanied by the fee set forth in 37 CFR 1.17(i)
• An amendment including at least one claim as prescribed by 35 U.S.C. 112(b) must be submitted
• The request must be filed before the abandonment of the provisional application or the expiration of 12 months after its filing date
• Additional fees for nonprovisional applications will be required

It’s important to note that converting a provisional to a nonprovisional application may result in a shorter patent term. Therefore, filing a new nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) is often preferable.

To learn more:

• provisional application conversion
• nonprovisional application
• USPTO
• patent filing

Yes, registered attorneys or agents not of record can file papers in patent applications and reexamination proceedings under 37 CFR 1.34. The MPEP states:

Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.

This means that by filing papers, the attorney or agent is implicitly declaring their authority to represent the applicant.

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

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

Yes, a legal representative can file a national patent application in certain circumstances. The Manual of Patent Examining Procedure (MPEP) 201.01 states:

‘A national application may be filed under 35 U.S.C. 111(a) in the U.S. Patent and Trademark Office (USPTO) by… (B) the legal representative (35 U.S.C. 117) of a deceased or legally incapacitated inventor.’

This provision allows for the continuity of the patent application process when the inventor is unable to file themselves. The legal representative must be authorized under 35 U.S.C. 117, which typically includes executors, administrators, or other legal representatives of deceased inventors, or guardians or conservators of incapacitated inventors.

For more information on legal representative, visit: legal representative.

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

Yes, a divisional application can claim priority to a provisional application under certain conditions. According to MPEP 201.06:

‘A divisional application may claim the benefit of a provisional application under 35 U.S.C. 119(e) if the divisional application is filed within twelve months of the provisional application filing date (or an appropriate later date in accordance with 37 CFR 1.78).’

To claim this benefit, the divisional application must:

• Be filed within 12 months of the provisional application’s filing date (or later if permitted under 37 CFR 1.78)
• Include a proper reference to the provisional application
• Have at least one common inventor with the provisional application

To learn more:

• divisional application
• provisional application
• priority claim
• 35 U.S.C. 119(e)
• 37 CFR 1.78

To learn more:

• patent filing

No, provisional patent applications are not examined for patentability. The MPEP explicitly states:

Provisional applications will not be examined for patentability.

This is one of the key differences between provisional and nonprovisional applications. The purpose of a provisional application is to:

• Establish an early filing date
• Allow the term ‘Patent Pending’ to be applied
• Provide a 12-month period to further develop the invention

Since provisional applications are not examined, they do not require formal patent claims or an oath or declaration. This simplifies the filing process and allows inventors to quickly secure a priority date for their invention.

To obtain patent protection, a nonprovisional application must be filed, which will then undergo examination for patentability.

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

Under 35 U.S.C. 111(a), two types of national applications can be filed:

• Nonprovisional applications: These are regular patent applications that, if granted, can result in an issued patent.
• Provisional applications: These provide a priority date but do not mature into patents without further action.

The MPEP 201.01 states: ‘National applications may be filed under 35 U.S.C. 111(a) as provisional applications under 35 U.S.C. 111(b) or as nonprovisional applications under 35 U.S.C. 111(a).’ Each type has specific requirements and serves different purposes in the patent application process.

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

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

For more information on USPTO, visit: USPTO.

What is the significance of the term ‘carved out’ in relation to divisional applications?

The term ‘carved out’ is significant in understanding the nature of divisional applications. According to MPEP 201.06: ‘A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or ‘division.”

The significance of ‘carved out’ includes:

• It implies that the divisional application is derived from a portion of the parent application.
• The divisional application focuses on a specific invention or set of claims that are distinct from those in the parent application.
• The subject matter in the divisional is entirely based on the disclosure in the parent application.
• No new matter can be added to the divisional application beyond what was disclosed in the parent.

This term emphasizes that while the divisional application is separate, it is intrinsically linked to the parent application’s original disclosure, ensuring that the applicant doesn’t gain an unfair advantage by introducing new subject matter.

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

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

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

What is the required oath or declaration for a divisional application?

For a divisional application, a new oath or declaration is generally required. However, there are exceptions:

• If the application is filed on or after September 16, 2012, a copy of the oath or declaration from the prior nonprovisional application may be used, provided that it complies with 37 CFR 1.63, 1.64, or 1.67 for the divisional application.
• If the divisional application was filed before September 16, 2012, and the prior application was filed on or after September 16, 2012, a copy of the oath or declaration from the prior application can be used in the divisional application.

As stated in MPEP 201.06: “A new oath or declaration is required in a divisional application filed under 37 CFR 1.53(b), regardless of whether a copy of the oath or declaration from the prior nonprovisional application is used in the divisional application, unless the divisional application is filed on or after September 16, 2012.”

To learn more:

• divisional application
• oath
• declaration
• patent filing

What is the relationship between a provisional application and a nonprovisional application?

A provisional application serves as a placeholder for a later-filed nonprovisional application. According to MPEP 201.04:

“A provisional application may serve as a basis for claiming benefit under 35 U.S.C. 119(e) in a later filed nonprovisional application or an international application designating the United States.”

This means that a provisional application can establish an earlier filing date for a subsequent nonprovisional application, provided the nonprovisional is filed within 12 months of the provisional and properly claims benefit to it.

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

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

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

What is the purpose of a divisional application under 37 CFR 1.53(b)?

A divisional application under 37 CFR 1.53(b) serves to pursue claims to a distinct invention that was disclosed but not claimed in a parent application. According to the MPEP:

“A divisional application is often filed as a result of a restriction requirement made by the examiner.”

This allows inventors to protect multiple inventions that may have been included in a single original application but were deemed to be separate and distinct by the USPTO. Divisional applications maintain the benefit of the filing date of the parent application for the common subject matter.

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

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

According to MPEP 201.02, there are important distinctions between ‘original’ and ‘substitute’ applications:

Original Application: This term is used in patent statutes and rules to refer to an application that is not a reissue application. An original application can be either a first filing or a continuing application.

Substitute Application: The MPEP defines a substitute application as follows:

A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. […] A substitute application does not obtain the benefit of the filing date of the prior application.

The key difference is that a substitute application does not retain the filing date of the prior application, unlike certain types of continuing applications.

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

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

As of July 28, 2013, the United States Postal Service (USPS) renamed ‘Express Mail’ to ‘Priority Mail Express’. According to MPEP 511:

“Effective July 28, 2013, the United States Postal Service (USPS) changed the name of ‘Express Mail’ to ‘Priority Mail Express.’ All characteristics of the ‘Priority Mail Express’ service are the same as those of the former ‘Express Mail’ service (although the mailing labels differ).”

This change is important for patent applicants to note, as the USPTO’s rules and procedures now refer to ‘Priority Mail Express’ instead of ‘Express Mail’. However, the service characteristics and benefits for patent filings remain the same. When using this service for USPTO correspondence, ensure you use the correct addresses as specified in 37 CFR 1.1 and avoid using the ‘Hold for Pickup’ option, as the USPTO does not pick up mail.

To learn more:

• Express Mail
• Priority Mail Express
• USPS
• Patent Filing

What is the benefit of filing a divisional application under 37 CFR 1.53(b)?

Filing a divisional application under 37 CFR 1.53(b) offers several benefits:

• It allows you to pursue claims to an invention that was not elected in a previous application due to a restriction requirement.
• You can file the divisional application without a new oath or declaration if you meet certain conditions.
• The divisional application can claim the benefit of the filing date of the prior application.

As stated in the MPEP: “A divisional application is often filed as a result of a restriction requirement made by the examiner.” This means you can protect additional aspects of your invention that weren’t covered in the original application.

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

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

When claiming the benefit of a provisional application filed in a language other than English, additional requirements must be met. The MPEP states:

“If benefit is being claimed to a provisional application which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed in the provisional application.”

If these documents were not filed in the provisional application, the applicant will be notified and given a period to:

1. File the translation and statement in the provisional application
2. Submit a confirmation in the nonprovisional application that the translation and statement were filed in the provisional application

Failure to respond to this notice in a pending nonprovisional application will result in abandonment. For more details, see MPEP § 211.01(a).

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

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

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

An incomplete patent application is one that is not entitled to a filing date because it lacks some of the essential parts required by the United States Patent and Trademark Office (USPTO). As stated in MPEP 203.06:

An application that is not entitled to a filing date (e.g., for lacking some of the essential parts) is termed an incomplete application.

This means that the application is missing crucial components necessary for it to be considered a complete submission and to receive an official filing date from the USPTO.

To learn more:

• incomplete application
• patent filing
• essential parts
• filing date

An ‘original’ application in patent law refers to an application that is not a reissue application. The MPEP states:

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

This means that an original application can be either:

• The first filing of a patent application for an invention
• A continuing application (continuation, divisional, or continuation-in-part) filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78

To learn more:

• original application
• patent filing
• continuing application

An ‘interim copy’ is a mechanism provided by 37 CFR 1.55(j) that allows applicants to meet the timeliness requirement for submitting a certified copy of a foreign application. It’s a copy of the original foreign application that the applicant can provide from their own records when they cannot obtain a certified copy within the time limit set by 37 CFR 1.55(f).

The MPEP states: 37 CFR 1.55(j) permits an applicant to provide an ‘interim copy’ of the original foreign application from the applicant’s own records to provide for the situation in which the applicant cannot obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f), although there is no requirement that an applicant be unable to obtain a certified copy of the foreign application within the time limit set forth in 37 CFR 1.55(f) to use 37 CFR 1.55(j).

To learn more:

• interim copy
• foreign application
• patent filing
• certified copy
• timeliness requirement

A substitute application is a type of national application that is filed to replace a previously filed non-provisional or provisional application. It is used when an applicant wants to start over with a new application while maintaining the benefit of the earlier filing date for common subject matter.

Key points about substitute applications:

• They are treated as new applications and receive a new application number.
• The previously filed application is considered to be abandoned as of the filing date of the substitute application.
• Substitute applications can claim the benefit of the earlier application’s filing date for common subject matter.
• They must be filed while the earlier application is still pending.
• Applicants must file a copy of the original application, specification, drawings, and amendments, if any, and a new oath or declaration.

For more information, see MPEP 201.09 and 37 CFR 1.53.

A provisional patent application is a type of U.S. patent application that allows inventors to establish an early filing date for their invention without the need for a formal patent claim or oath/declaration. According to MPEP 201.04, a provisional application is defined as:

“A provisional application as used in this chapter means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(b).”

Provisional applications are simpler and less expensive to file than regular nonprovisional applications, but they are not examined for patentability and automatically expire after 12 months.

To learn more:

• provisional application
• patent filing
• USPTO
• early filing date

A provisional application for patent is a type of U.S. patent application that allows inventors to establish an early filing date for their invention without filing a formal patent claim or any information disclosure statement. Key points about provisional applications include:

1. They provide a 12-month pendency from the date of filing.
2. They cannot be extended beyond 12 months.
3. They are not examined on their merits.
4. They can serve as a priority document in foreign filing.
5. They require a specification and drawing(s) if necessary to understand the invention.
6. They do not require formal patent claims or an oath or declaration.

Inventors must file a corresponding nonprovisional application within 12 months to claim the benefit of the provisional application’s filing date. For more details, see USPTO’s Provisional Application for Patent and MPEP 201.04(b).

A continuation-in-part (CIP) application is a type of patent application that builds upon a previously filed application by including new matter not disclosed in the original application. Key points about CIP applications include:

• They are filed while the parent application is still pending.
• They contain a portion or all of the disclosure of the parent application.
• They introduce new matter not present in the original application.
• The new matter is not entitled to the priority date of the parent application.

The MPEP 201.01 states: National applications include […] continuation-in-part applications (which may be filed under 37 CFR 1.53(b)). CIP applications allow inventors to expand on their original invention while maintaining the priority date for the previously disclosed material.

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

For more information on USPTO, visit: USPTO.

In the event of a postal interruption or emergency, the USPTO will take the following actions:

• Place an announcement on the USPTO website at www.uspto.gov
• Publish a notice in the Official Gazette

These communications will provide instructions about filing patent applications and other patent-related papers. As stated in MPEP 511:

“In the event of a postal interruption or emergency, an announcement will be placed on the USPTO website at www.uspto.gov and a notice will be published in the Official Gazette, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.”

This ensures that applicants have clear guidance on how to proceed during such circumstances.

To learn more:

• Postal Service
• Patent Filing
• Emergency Procedures
• USPTO Announcements

Introducing new matter in a divisional application is not allowed and can have serious consequences. According to MPEP 201.06:

“A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.”

This means that a divisional application must not contain any new matter beyond what was disclosed in the parent application. If new matter is introduced:

• The new matter will not be entitled to the benefit of the parent application’s filing date.
• Claims relying on the new matter may be rejected under 35 U.S.C. 112(a) for lack of written description or enablement.
• The application may lose its status as a proper divisional, potentially affecting its ability to overcome certain types of double patenting rejections.

To avoid these issues:

1. Carefully review the divisional application before filing to ensure it only contains subject matter from the parent application.
2. If new subject matter is necessary, consider filing it as a continuation-in-part (CIP) application instead of a divisional.
3. Consult with a patent attorney or agent to ensure compliance with MPEP guidelines.

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

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

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

What happens if joint inventors can’t agree on filing a patent application?

If joint inventors cannot agree on filing a patent application, it can lead to complications. According to MPEP 602.09, ‘Each joint inventor may make the application for patent on behalf of himself and the other joint inventors.’ This means that any one of the joint inventors can file the application without the consent of the others. However, this situation may lead to disputes and potential legal issues. It’s generally recommended that joint inventors try to reach an agreement or seek legal counsel to resolve any disagreements before filing.

To learn more:

• Joint inventors
• Patent application
• Inventor disagreements
• Patent filing

What happens if I file a provisional application and don’t file a nonprovisional within 12 months?

If you file a provisional application but do not file a corresponding nonprovisional application within 12 months, the provisional application will automatically be abandoned. As stated in the MPEP 201.04: “A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter.” This means you lose the benefit of the provisional filing date and cannot claim priority to it in future applications. To maintain the priority benefit, you must file a nonprovisional application claiming benefit of the provisional within the 12-month period.

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

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

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

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

According to MPEP 203.01, a ‘new’ application is defined as follows:

A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner.

This means that a patent application is considered ‘new’ from the time it is filed until the patent examiner issues their first official response or action on the application.

To learn more:

• new application
• patent examination
• nonprovisional application
• patent filing

When presenting any paper to the USPTO, the party (whether a practitioner or non-practitioner) is making important certifications as outlined in 37 CFR 11.18(b):

1. All statements made of the party’s own knowledge are true.
2. Statements made on information and belief are believed to be true.
3. The paper is not being presented for any improper purpose (e.g., harassment, delay).
4. Legal contentions are warranted by existing law or non-frivolous arguments for changes in the law.
5. Factual contentions have or are likely to have evidentiary support.
6. Denials of factual contentions are warranted or based on lack of information or belief.

The MPEP notes: “37 CFR 11.18(b) provides that, by presenting any paper to the Office, the party presenting such paper (whether a practitioner or non-practitioner) is: (1) certifying that the statements made therein are subject to the declaration clause of 37 CFR 1.68; and (2) making the certifications required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure.”

To learn more:

• USPTO Certifications
• Patent Filing
• Legal Responsibilities
• Practitioner Duties

For continuation or divisional applications filed before September 16, 2012 under 37 CFR 1.53(b) (excluding continuation-in-part applications), applicants could file using a copy of the oath or declaration from the prior nonprovisional application. This is supported by the MPEP, which states:

“A continuation or divisional application filed before September 16, 2012 under 37 CFR 1.53(b) (other than a continuation-in-part (CIP)) may be filed with a copy of the oath or declaration from the prior nonprovisional application.”

This provision simplified the filing process for certain types of continuing applications by allowing the use of previously submitted documents.

To learn more:

• continuation application
• divisional application
• oath
• declaration
• patent filing

To claim benefit to a non-English language provisional application, you must provide:

• An English translation of the non-English language provisional application
• A statement that the translation is accurate

These documents must be filed in the provisional application itself. As stated in MPEP ¶ 2.38: “An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No.[…]”

Additionally, in the present (non-provisional) application, you must confirm that the translation and statement were filed in the provisional application.

For more information on non-English language, visit: non-English language.

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

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

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

What are the consequences of not converting a provisional application within 12 months?

If you do not convert a provisional application to a nonprovisional application within 12 months, there are significant consequences:

• The provisional application will automatically expire.
• You will lose the benefit of the provisional filing date.
• The subject matter disclosed in the provisional may become prior art against future applications.

According to MPEP 201.04: “A provisional application will automatically become abandoned 12 months after its filing date pursuant to 35 U.S.C. 111(b)(5).” This means that after 12 months, if no corresponding nonprovisional application has been filed, the provisional application cannot be revived or extended. It’s crucial to file a nonprovisional application or a PCT application within this 12-month period to maintain the benefit of the provisional filing date.

To learn more:

• provisional application
• expiration
• conversion deadline
• patent filing

For patent applications, prior U.S. application data should be provided as follows:

• For applications filed on or after September 16, 2012: In an application data sheet
• For applications filed before September 16, 2012: In either the first sentence(s) of the specification or in an application data sheet

MPEP 202 states: “The identifying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012.”

How does the oath or declaration requirement differ for divisional applications?

For divisional applications, the oath or declaration requirement can be simplified under certain conditions. According to MPEP 201.06(c):

“The divisional application may be filed under 37 CFR 1.53(b) using all or part of a copy of the oath or declaration filed in the prior nonprovisional application under 37 CFR 1.63(d), as long as the oath or declaration is still applicable to the subject matter of the divisional application.”

This means that if the original oath or declaration from the parent application still covers the subject matter in the divisional application, it can be reused. However, if new matter is introduced or the inventors change, a new oath or declaration may be required.

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

For more information on oath or declaration, visit: oath or declaration.

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

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

“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. 37 CFR 1.53(d)(4).”

If an inventor needs to be added or deleted, a request under 37 CFR 1.48 must be filed, along with the required fee. The examiner will notify the applicant if there are any inventorship discrepancies in the first Office action.

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

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

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

According to MPEP 201.01, original applications are defined as follows:

‘Original applications include applications filed under 35 U.S.C. 111(a) and provisional applications filed under 35 U.S.C. 111(b).’

This definition encompasses two distinct types of applications:

• Non-provisional applications filed under 35 U.S.C. 111(a)
• Provisional applications filed under 35 U.S.C. 111(b)

Understanding this distinction is crucial for inventors and patent practitioners when deciding which type of application to file based on their specific needs and circumstances.

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

How does a U.S. national stage application differ from a regular national application?

A U.S. national stage application is derived from an international application, while a regular national application is filed directly with the USPTO. The key differences lie in their origins and the legal provisions governing them.

As stated in MPEP 201.01:

A national application may be a U.S. national application filed under 35 U.S.C. 111(a), or a national stage application under 35 U.S.C. 371 of an international application.

Regular national applications are filed under 35 U.S.C. 111(a), while national stage applications enter the U.S. national phase from an international PCT application under 35 U.S.C. 371. National stage applications must meet specific requirements for entering the national phase, such as time limits and submission of necessary documents.

For more information on national stage application, visit: national stage application.

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

For more information on USPTO, visit: USPTO.

While the MPEP 201.02 doesn’t provide detailed definitions, it references 37 CFR 1.9(a) for the definitions of provisional and nonprovisional applications:

• Provisional Application: A temporary application that establishes an early filing date but does not mature into an issued patent without further action.
• Nonprovisional Application: A regular patent application that can be examined and potentially result in an issued patent.

Key differences include:

• Provisional applications have a pendency of 12 months from the filing date.
• Nonprovisional applications undergo examination, while provisional applications do not.
• A nonprovisional application must be filed within 12 months of the provisional to claim its filing date benefit.

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

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

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

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

Can I file a provisional application in a language other than English?

Yes, you can file a provisional application in a language other than English. However, there are important considerations:

• The USPTO accepts provisional applications in any language.
• An English translation is not required at the time of filing.
• If a nonprovisional application is later filed claiming benefit of the provisional, an English translation may be required.

The MPEP 201.04 states: “If a provisional application is filed in a language other than English, an English-language translation of the non-English language provisional application will not be required in the provisional application.” However, it’s important to note that if you later file a nonprovisional application claiming benefit of the provisional, you may need to provide an English translation at that time, along with a statement that the translation is accurate.

To learn more:

• provisional application
• foreign language
• English translation
• patent filing

No, a provisional patent application cannot claim priority to or benefit from other applications. The MPEP 201.04 clearly states:

“A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application.”

This means that a provisional application stands alone and cannot claim the filing date of any earlier U.S. or foreign application. However, it’s important to note that while a provisional application cannot claim priority, it can serve as a priority document for later-filed nonprovisional or foreign applications, provided they are filed within 12 months of the provisional application’s filing date.

To learn more:

• provisional application priority
• patent filing
• USPTO
• priority claim

Yes, a provisional patent application can be converted to a nonprovisional application. According to MPEP 201.04:

“A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application.”

However, there are specific requirements and considerations for this conversion:

• The request for conversion must be accompanied by the fee set forth in 37 CFR 1.17(i)
• An amendment including at least one claim as prescribed by 35 U.S.C. 112(b) must be submitted
• The request must be filed before the abandonment of the provisional application or the expiration of 12 months after its filing date
• Additional fees for nonprovisional applications will be required

It’s important to note that converting a provisional to a nonprovisional application may result in a shorter patent term. Therefore, filing a new nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) is often preferable.

To learn more:

• provisional application conversion
• nonprovisional application
• USPTO
• patent filing

Yes, registered attorneys or agents not of record can file papers in patent applications and reexamination proceedings under 37 CFR 1.34. The MPEP states:

Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a representative capacity on behalf of applicant.

This means that by filing papers, the attorney or agent is implicitly declaring their authority to represent the applicant.

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

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

Yes, a legal representative can file a national patent application in certain circumstances. The Manual of Patent Examining Procedure (MPEP) 201.01 states:

‘A national application may be filed under 35 U.S.C. 111(a) in the U.S. Patent and Trademark Office (USPTO) by… (B) the legal representative (35 U.S.C. 117) of a deceased or legally incapacitated inventor.’

This provision allows for the continuity of the patent application process when the inventor is unable to file themselves. The legal representative must be authorized under 35 U.S.C. 117, which typically includes executors, administrators, or other legal representatives of deceased inventors, or guardians or conservators of incapacitated inventors.

For more information on legal representative, visit: legal representative.

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

Yes, a divisional application can claim priority to a provisional application under certain conditions. According to MPEP 201.06:

‘A divisional application may claim the benefit of a provisional application under 35 U.S.C. 119(e) if the divisional application is filed within twelve months of the provisional application filing date (or an appropriate later date in accordance with 37 CFR 1.78).’

To claim this benefit, the divisional application must:

• Be filed within 12 months of the provisional application’s filing date (or later if permitted under 37 CFR 1.78)
• Include a proper reference to the provisional application
• Have at least one common inventor with the provisional application

To learn more:

• divisional application
• provisional application
• priority claim
• 35 U.S.C. 119(e)
• 37 CFR 1.78

To learn more:

• patent filing

No, provisional patent applications are not examined for patentability. The MPEP explicitly states:

Provisional applications will not be examined for patentability.

This is one of the key differences between provisional and nonprovisional applications. The purpose of a provisional application is to:

• Establish an early filing date
• Allow the term ‘Patent Pending’ to be applied
• Provide a 12-month period to further develop the invention

Since provisional applications are not examined, they do not require formal patent claims or an oath or declaration. This simplifies the filing process and allows inventors to quickly secure a priority date for their invention.

To obtain patent protection, a nonprovisional application must be filed, which will then undergo examination for patentability.

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