Patent Law FAQ

A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:

Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

This means:

• For CIP applications filed before September 16, 2012: A new assignment is always required.
• For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.

The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.

A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:

Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

This means:

• For CIP applications filed before September 16, 2012: A new assignment is always required.
• For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.

The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.

If an assignee of a part interest refuses to join in an application for reissue, the reissue may still be applied for by the assignee of the entire interest. This is outlined in MPEP 1410. The assignee of the entire interest can file the reissue application as the sole applicant. However, the assignee must comply with the requirements of 37 CFR 1.172, which includes submitting an oath or declaration by the assignee.

No, an assignee of a part interest alone cannot file a reissue application. According to MPEP 1410, a reissue application must be applied for by all of the inventors, unless the application is accompanied by a petition under 37 CFR 1.182 for waiver of the requirement. Alternatively, the assignee of the entire interest can file the reissue application. An assignee of only a part interest is not entitled to file a reissue application on his or her own.

The USPTO has specific procedures for handling foreign language provisional applications during the screening process. According to the MPEP:

Provisional applications filed in a foreign language are also screened under these provisions. The Office will make an attempt to determine the subject matter of the application, but the applicant may be required to provide at least an English language abstract of the information for screening purposes.

To avoid potential delays in the screening process, the MPEP strongly recommends:

It is strongly recommended that if the applicant is in possession of an English language description of the technology, it should be filed with the provisional application to prevent screening delays.

This recommendation helps ensure that the USPTO can efficiently review the application for national security and property rights issues without language barriers impeding the process.

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

Can a patent application under secrecy order be appealed?

Yes, patent applications under secrecy orders can be appealed, but with certain restrictions. MPEP 120 states: ‘Appeals to the Patent Trial and Appeal Board and petitions to the Director under 37 CFR 1.181 are available to the applicant in secrecy order cases, but those actions will not set aside the secrecy order.‘ This means that while you can appeal decisions related to the patentability of your application, such appeals cannot challenge or remove the secrecy order itself. The secrecy order remains in effect regardless of the appeal process.

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

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

For more information on patent trial and appeal board, visit: patent trial and appeal board.

There are several ways to obtain a foreign filing license:

1. File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
2. File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
3. Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).

As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”

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

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

For more information on USPTO, visit: USPTO.

If inventorship changes after filing a property rights statement, MPEP 151 provides specific guidance:

“If a request under 37 CFR 1.48 for correction of inventorship is granted during pendency of an application in which a property rights statement has been filed, a supplemental statement executed by any added inventor(s) is required and should promptly be filed with Licensing and Review.”

This means that if new inventors are added to the application, they must file a supplemental statement to ensure compliance with the Atomic Energy Act and NASA Act requirements. It’s important to file this supplemental statement promptly to maintain proper documentation.

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

For more information on property rights statement, visit: property rights statement.

When an inventor is unable to provide a statement due to death, incapacitation, or unavailability, MPEP 151 offers alternative solutions:

“When an inventor applicant is deceased or legally incapacitated, or where it is shown to the satisfaction of this Office that he or she refuses to furnish a statement or cannot be reached after diligent efforts, declarations or statements under oath setting forth the information required by the statutes may be accepted from an officer or employee of the assignee who has sufficient knowledge of the facts.”

Additionally, for joint inventions, “Where it is shown that one of the joint inventors is deceased or unavailable, a statement by all of the other inventor(s) may be accepted.” It’s important to note that these alternatives should only be used when the inventor is truly unavailable, not merely for convenience.

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

For a non-English provisional application, the English translation and accuracy statement must be filed in the provisional application itself, not in the non-provisional application claiming its benefit. MPEP ¶ 2.38 clearly states:

“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 non-provisional application claiming benefit, you must provide confirmation that these documents were filed in the provisional application. This two-step process ensures proper documentation and compliance with 37 CFR 1.78.

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

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

According to the MPEP, a petition to restore the benefit of a provisional application should be addressed to:

“Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

It’s important to note that this petition must be filed in the subsequent nonprovisional application or international application designating the United States, not in the provisional application itself. Always ensure you’re following the most current USPTO guidelines for petition submissions, as procedures may be updated over time.

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

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

A separate written request is required in specific situations, as outlined in MPEP 215.01:

A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired.

Additionally, a separate request is needed when:

• The foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating office.
• The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

To learn more:

• PDX
• Written Requests
• Foreign Applications
• Patent Procedure

A continuation application can be filed at various times during the patent application process. According to MPEP 201.07:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

This means you can file a continuation application:

• Before the parent application is granted a patent
• Before the parent application is abandoned
• Before proceedings on the parent application are terminated

However, for Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), there are additional timing restrictions:

A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

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

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

If you miss the 12-month deadline for claiming the benefit of a provisional application, you have two main options:

1. Delete the claim to the benefit of the prior-filed provisional application.
2. File a petition to restore the benefit of the provisional application.

The MPEP states:

“Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This petition must be filed in the subsequent application and include specific requirements, such as a reference to the provisional application, a petition fee, and a statement that the delay was unintentional.

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

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

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

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

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

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

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

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

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

What is the significance of the term ‘copending’ in continuation applications?

The term ‘copending’ is crucial in the context of continuation applications. According to MPEP 201.07:

A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.

The significance of ‘copending’ is as follows:

• Timing: It means that the continuation application must be filed before the prior application is patented, abandoned, or terminated.
• Continuous chain: It ensures a continuous chain of pending applications, maintaining the priority date of the original filing.
• Benefit claims: Copendency is required for a continuation to claim the benefit of the earlier filing date of the parent application.

If applications are not copending, the continuation may lose the benefit of the earlier filing date, potentially affecting patentability if intervening prior art exists.

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

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

The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:

“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”

The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.

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

For more information on CPA, visit: CPA.

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

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

The proper procedure for correcting inventorship in a Continued Prosecution Application (CPA) is to file a request under 37 CFR 1.48. This applies whether you’re adding or removing an inventor. The MPEP guidance states: ‘Any request to add an inventor must be in the form of a request under 37 CFR 1.48.’ This formal request ensures that the USPTO properly processes and recognizes the change in inventorship.

For more information on CPA, visit: CPA.

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

What is the filing date requirement for a divisional application?

A divisional application must be filed before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.”

This means that the divisional application must be filed while the parent application is still pending, ensuring continuity in the examination process.

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

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

The process for correcting inventorship in a Continued Prosecution Application (CPA) differs depending on when the correction is requested:

• At CPA filing: Inventorship can be corrected by submitting a statement requesting deletion of a named inventor along with the CPA filing. This process is straightforward and does not require additional procedures.
• After CPA filing: The MPEP states, Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48. This means additional documentation and possibly fees are required for post-filing inventorship changes.

It’s generally simpler to correct inventorship at the time of CPA filing if possible.

For more information on CPA, visit: CPA.

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

When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:

1. A clear statement requesting the deletion of the inventor(s)
2. The name(s) of the inventor(s) to be deleted
3. The filing date of the CPA

The MPEP provides a template for acknowledging such requests:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

For more information on USPTO, visit: USPTO.

The notice of Continued Prosecution Application (CPA) establishment includes specific information as outlined in MPEP ¶ 2.30. The key elements are:

• The filing date of the CPA request
• The parent application number
• A statement that the CPA is acceptable and has been established
• An indication that an action on the CPA will follow

The exact language used by the examiner is: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.

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

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

What happens to a provisional application after one year?

A provisional application automatically becomes abandoned 12 months after its filing date. The MPEP 201.04 states:

‘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 that after the 12-month period, the provisional application cannot be revived or extended. To maintain the benefit of the provisional filing date, you must file a nonprovisional application claiming priority to the provisional within this 12-month window. If you fail to do so, you lose the benefit of the earlier filing date, and the subject matter of the provisional becomes part of the prior art.

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

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

For more information on USPTO, visit: USPTO.

If the required translation and statement are not filed for a non-English provisional application, serious consequences can occur. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that if you fail to provide the English translation and accuracy statement in the provisional application, and fail to confirm their filing in the present application, your current application may be abandoned. It’s crucial to comply with these requirements within the specified time frame to maintain your application’s active status.

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

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

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

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

If you don’t file a petition to restore the benefit of a provisional application after missing the 12-month deadline, you will lose the right to claim the earlier filing date of the provisional application. The MPEP states:

“Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application.”

This means your application will be treated as if it was filed on the date of the nonprovisional application, potentially affecting your ability to secure patent rights if intervening prior art exists. It’s crucial to either meet the original 12-month deadline or file a timely petition to restore the benefit to maintain your earlier filing date.

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

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

If copendency is not established between patent applications, the benefit claim to the prior-filed application becomes improper. The MPEP clearly states:

Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

In such cases, the applicant must either prove that copendency exists or remove the benefit claim. Failure to do so may result in the loss of the earlier priority date, potentially affecting the patentability of the invention.

For more information on copendency, visit: copendency.

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

What happens if a divisional application is filed after the parent application is patented or abandoned?

If a divisional application is filed after the parent application has been patented or abandoned, it will not be entitled to the benefit of the parent application’s filing date. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.“

Filing a divisional application after the parent application has been patented or abandoned means:

• The application will not be considered a proper divisional application
• It will not receive the benefit of the parent application’s filing date
• It may be treated as a new, independent application
• Prior art that was not applicable to the parent application may now be applicable
• The application may face potential statutory bars under 35 U.S.C. 102

To avoid these issues, it’s crucial to file divisional applications before the patenting, abandonment, or termination of proceedings on the parent application.

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

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

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

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

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

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

For more information on unintentional delay, visit: unintentional delay.

The time limits for filing an interim copy of a foreign application are specified in 37 CFR 1.55(j). According to the MPEP:

37 CFR 1.55(j) also provides that the interim copy of the foreign application and cover sheet must be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in an application entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e) or (f).

In summary, the interim copy must be filed within:

• 16 months from the filing date of the foreign application, or
• 4 months from the U.S. application filing date under 35 U.S.C. 111(a), or
• 4 months from the national stage commencement or initial submission date under 35 U.S.C. 371, or
• With a petition under 37 CFR 1.55(e) or (f)

To learn more:

• interim copy
• foreign application
• time limits
• filing deadlines
• patent procedure

According to MPEP 211, a petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include:

1. The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted)
2. The petition fee set forth in 37 CFR 1.17(m)
3. A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional

The MPEP further states:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to note that this petition must be filed in the subsequent application, not the provisional application itself.

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

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

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

To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:

• The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The CIP must contain or be amended to contain a specific reference to the earlier filed application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
• The CIP must have at least one common inventor with the prior-filed application.

Additionally, the MPEP notes:

“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”

It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.

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

For more information on prior-filed application, visit: prior-filed application.

The filing requirements for an interim copy of a foreign application are specified in 37 CFR 1.55(j). They include:

• Filing a copy of the original foreign application clearly labeled as ‘Interim Copy’
• Including a separate cover sheet identifying the foreign application details
• Filing within specified time limits

The MPEP states:

’37 CFR 1.55(j) also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority).’

It’s crucial to adhere to these requirements to ensure proper processing of the interim copy.

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

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

For more information on interim copy, visit: interim copy.

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

For delayed priority claims filed more than two years after the due date, additional explanation is required. The MPEP states:

“A person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e).”

This additional explanation helps the USPTO determine if the delay was truly unintentional, as required for acceptance of the delayed claim. Applicants should be prepared to provide a detailed account of the circumstances leading to the delay.

To learn more:

• delayed priority claim
• two-year delay
• unintentional delay
• patent procedure

If a benefit claim is improper due to lack of copendency, the MPEP ¶ 2.11 outlines the required action:

Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

This means the applicant has two options:

1. Delete the benefit claim to the prior-filed application, or
2. Provide evidence to establish that copendency actually exists between the applications.

If the applicant cannot prove copendency, they must remove the benefit claim to avoid potential issues with the application’s validity or examination process.

For more information on copendency, visit: copendency.

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

When the required documents for a non-English provisional application are missing, the USPTO takes specific actions to notify the applicant. According to MPEP ¶ 2.38:

“Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.”

The USPTO will issue an Office action informing the applicant of the missing documents and setting a time period for their submission. The applicant must then provide the missing translation and/or accuracy statement in the provisional application and confirm their filing in the present application. Failure to do so within the specified time period may result in the abandonment of the present application.

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

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

Yes, there is an exception for certain applications filed before November 25, 2005. According to the Examiner Note in MPEP ¶ 2.38:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This means that for non-provisional applications filed before November 25, 2005, it was acceptable to file the English translation and accuracy statement in the non-provisional application itself, rather than in the provisional application. For applications filed after this date, the current rules requiring filing in the provisional application apply.

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

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

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

Yes, there is a time limit for filing a petition to restore the benefit of a provisional application. According to MPEP 211:

“Applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This means you have a two-month grace period after the expiration of the initial 12-month period to file the petition. It’s crucial to act quickly if you miss the original deadline and wish to restore the benefit of your provisional application.

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

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

Yes, there is a deadline for filing the English translation and accuracy statement for a non-English provisional application. While MPEP ¶ 2.38 doesn’t specify an exact timeframe, it indicates that the USPTO will set a time period in an Office action:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that when the USPTO notices that the required documents are missing, they will issue an Office action with a specific deadline. It’s crucial to comply with this deadline to avoid abandonment of your application. As a best practice, it’s advisable to file these documents as soon as possible after filing the non-English provisional application to avoid any potential issues.

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

Submitting an interim copy of a foreign application electronically involves specific procedures. The MPEP provides guidance:

‘If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a “Sequence Listing” (see MPEP § 2421.01), a “Sequence Listing XML” (see MPEP § 2412), “Large Tables” (see MPEP § 608.05(b)), or a “Computer Program Listing Appendix” (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.’

Key points for electronic submission:

• File as a single PDF image file when possible
• Use the document description ‘Interim Copy of the Foreign Priority Application’ when indexing
• For plain text files, use the description ‘Interim Copy of the Foreign Priority (text file)’
• XML files, like Standard ST.26 Sequence Listings, should be filed on a read-only optical disc

Proper indexing and file format selection are crucial for successful electronic submission.

For more information on electronic submission, visit: electronic submission.

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

For more information on interim copy, visit: interim copy.

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

An interim copy of a foreign application serves as a temporary substitute for a certified copy but does not replace the requirement for a certified copy. The key differences are:

• An interim copy can be from the applicant’s own records, while a certified copy must be from the foreign patent office.
• An interim copy satisfies the initial time requirement in 37 CFR 1.55(f), but a certified copy is still required.
• An interim copy is labeled as ‘Interim Copy,’ while a certified copy has official certification from the foreign patent office.

The MPEP clarifies:

‘Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.’

In essence, the interim copy is a temporary measure to meet deadlines, while the certified copy remains a formal requirement.

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

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

For more information on interim copy, visit: interim copy.

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

A substitute application has a significant impact on the filing date of a patent application. According to MPEP 201.02:

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

This means that if an applicant files a substitute application, it will receive a new filing date based on when it was submitted, rather than inheriting the filing date of the original application it’s replacing. This can have important implications for patent priority and the determination of prior art.

It’s crucial for applicants to understand this distinction, as the filing date can significantly affect the patentability of an invention, especially in fast-moving technological fields.

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

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

A Patent Cooperation Treaty (PCT) application can become a national application in the United States when certain conditions are met. According to MPEP 201.01:

‘An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid’ becomes a national application.

This process, known as ‘national stage entry,’ involves the following steps:

• Filing the appropriate documents with the USPTO
• Paying the required national fee
• Providing an English translation if the international application was not filed in English

Once these requirements are fulfilled, the international application effectively becomes a U.S. national application and is processed accordingly.

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

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

For more information on USPTO, visit: USPTO.

To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):

Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under §1.1023.

For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.

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

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

For more information on prior-filed application, visit: prior-filed application.

Inventorship in a Continued Prosecution Application (CPA) for design patents can be corrected by filing a statement requesting the deletion of a named inventor along with the CPA filing. The MPEP states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This process allows for immediate correction of inventorship when filing a CPA. However, it’s important to note that any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.

For more information on CPA, visit: CPA.

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

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

Filing an interim copy of a foreign application electronically can be done through the USPTO patent electronic filing system. The MPEP provides guidance on how to file different parts of the application:

• Main parts (Abstract, Drawings, Specification, Claims) and the cover sheet can be filed as a single PDF file.
• Text-only files (e.g., Sequence Listings, Large Tables) can be filed as .txt files.
• XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc.

The MPEP states: If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a ‘Sequence Listing’ (see MPEP § 2421.01 a ‘Sequence Listing XML’ (see MPEP § 2412), ‘Large Tables’ (see MPEP § 608.05(b)), or a ‘Computer Program Listing Appendix’ (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.

For more information on electronic filing, refer to MPEP § 502.05.

To learn more:

• interim copy
• foreign application
• electronic filing
• USPTO
• patent procedure

When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

When filing a Continued Prosecution Application (CPA) for a design patent, you can request the deletion of a named inventor by submitting a statement with your CPA filing. The MPEP ¶ 2.32 states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This means that you should include a clear statement requesting the deletion of the specific inventor(s) when you file your CPA. The USPTO will then acknowledge this request and correct the inventorship accordingly.

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

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

To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”

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

For more information on CPA, visit: CPA.

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

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

The handling of delayed priority claims in design applications has evolved. The MPEP provides the following information:

“Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application.”

This change allows design patent applicants and holders to rectify unintentionally delayed priority claims, aligning the process more closely with that of utility patents. As with utility patents, a petition under 37 CFR 1.55(e) may be filed along with a request for a certificate of correction after the design patent has been granted.

To learn more:

• design patent
• delayed priority claim
• unintentional delay
• patent procedure

Delayed benefit claims in international applications have specific procedures. According to MPEP 211.04:

A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) are required to add a benefit claim under 35 U.S.C. 120 and 365(c) in an abandoned international application designating the United States, even when the international application did not enter the national stage under 35 U.S.C. 371.

For international applications not filed with the U.S. Receiving Office and not a nonprovisional application, the petition may be filed in the earliest nonprovisional application claiming benefit to the international application. This petition will be treated as if filed in the international application itself.

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

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

No, MPEP ¶ 2.11 does not apply to benefit claims for provisional applications. The MPEP explicitly states:

Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.

This means that the copendency requirements and procedures outlined in MPEP ¶ 2.11 are specifically for non-provisional applications claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c). Provisional applications have different rules and procedures for claiming benefit, which are covered under 35 U.S.C. 119(e) and other sections of the MPEP.

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

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

No, filing an interim copy does not replace the need for a certified copy of the foreign application. While an interim copy satisfies the timeliness requirement, a certified copy is still required. The MPEP clarifies this point:

Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.

In essence, the interim copy allows applicants to meet initial deadlines, but they must still provide a certified copy of the foreign application during the pendency of the U.S. application, unless they file a specific petition.

To learn more:

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

No, the English translation and accuracy statement for a non-English provisional application cannot be filed in the non-provisional application. They must be filed in the provisional application itself. MPEP ¶ 2.38 is explicit about this requirement:

“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.[3].”

However, there is an exception to this rule. The MPEP states:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This means that for applications filed before November 25, 2005, it was acceptable to file these documents in the non-provisional application. For all applications after this date, the translation and statement must be filed in the provisional application, with a confirmation in the non-provisional application that this has been done.

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

No, you cannot file a petition to restore the benefit of a provisional application in the provisional application itself. According to the MPEP:

“A petition to restore the benefit of a provisional application must be filed in the subsequent application.”

This means you must file the petition in the nonprovisional application or the international application designating the United States that is seeking to claim the benefit of the provisional application. This is because the provisional application itself is not examined and automatically expires after 12 months. The petition is a request to restore the right to claim the benefit in a subsequent application, not to extend the life of the provisional application.

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

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

The MPEP ¶ 2.32 specifically addresses the process of deleting named inventors when filing a Continued Prosecution Application (CPA) for design patents. However, it does not explicitly mention adding or substituting inventors at the time of CPA filing.

If you need to add or substitute inventors, rather than just delete them, you should follow the general procedures for correction of inventorship outlined in 37 CFR 1.48. This regulation provides the requirements for adding, deleting, or substituting inventors in patent applications.

It’s advisable to consult with a patent attorney or contact the USPTO directly for guidance on the proper procedure for adding or substituting inventors when filing a CPA, as this may require additional documentation or fees beyond a simple deletion request.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

The MPEP ¶ 2.32 specifically addresses the deletion of inventors in a Continued Prosecution Application (CPA) for design patents, but it does not directly discuss adding inventors. However, changes to inventorship in patent applications are generally governed by 37 CFR 1.48.

If you need to add an inventor when filing a CPA, it’s advisable to:

• Include a clear statement requesting the addition of the new inventor
• Provide the new inventor’s oath or declaration
• Submit any required fees

For specific guidance on adding inventors to a CPA, it’s recommended to consult with a patent attorney or contact the USPTO directly, as the process may differ from deleting inventors and could require additional documentation.

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

Yes, a delayed priority claim can be filed after a patent has been granted. The MPEP provides for this possibility:

“Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application). Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant.”

This provision allows patent holders to rectify priority claims even after their patent has been issued, ensuring that important priority rights are not lost due to unintentional delays.

To learn more:

• delayed priority claim
• post-grant correction
• certificate of correction
• patent procedure

No, applicants are not separately notified when their parent application is abandoned due to the filing of a Continued Prosecution Application (CPA). This is implied in the examiner’s note in MPEP ¶ 2.35:

This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

The establishment of a CPA automatically results in the abandonment of the parent application. Applicants should be aware that by filing a CPA, they are effectively abandoning the parent application in favor of continuing prosecution through the CPA.

For more information on CPA, visit: CPA.

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

To ensure proper correlation between priority papers and U.S. applications, the MPEP suggests: “It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data.” This practice helps prevent separation of cover letters and priority papers, which can cause severe problems for both the Office and applicant.

A continuation application can be filed at various times during the patent application process. According to MPEP 201.07:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

This means you can file a continuation application:

• Before the parent application is granted a patent
• Before the parent application is abandoned
• Before proceedings on the parent application are terminated

However, for Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), there are additional timing restrictions:

A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

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

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

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

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

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

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

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

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

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

What is the significance of the term ‘copending’ in continuation applications?

The term ‘copending’ is crucial in the context of continuation applications. According to MPEP 201.07:

A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.

The significance of ‘copending’ is as follows:

• Timing: It means that the continuation application must be filed before the prior application is patented, abandoned, or terminated.
• Continuous chain: It ensures a continuous chain of pending applications, maintaining the priority date of the original filing.
• Benefit claims: Copendency is required for a continuation to claim the benefit of the earlier filing date of the parent application.

If applications are not copending, the continuation may lose the benefit of the earlier filing date, potentially affecting patentability if intervening prior art exists.

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

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

The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:

“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”

The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.

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

For more information on CPA, visit: CPA.

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

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

The proper procedure for correcting inventorship in a Continued Prosecution Application (CPA) is to file a request under 37 CFR 1.48. This applies whether you’re adding or removing an inventor. The MPEP guidance states: ‘Any request to add an inventor must be in the form of a request under 37 CFR 1.48.’ This formal request ensures that the USPTO properly processes and recognizes the change in inventorship.

For more information on CPA, visit: CPA.

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

What is the filing date requirement for a divisional application?

A divisional application must be filed before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.”

This means that the divisional application must be filed while the parent application is still pending, ensuring continuity in the examination process.

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

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

The process for correcting inventorship in a Continued Prosecution Application (CPA) differs depending on when the correction is requested:

• At CPA filing: Inventorship can be corrected by submitting a statement requesting deletion of a named inventor along with the CPA filing. This process is straightforward and does not require additional procedures.
• After CPA filing: The MPEP states, Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48. This means additional documentation and possibly fees are required for post-filing inventorship changes.

It’s generally simpler to correct inventorship at the time of CPA filing if possible.

For more information on CPA, visit: CPA.

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

When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:

1. A clear statement requesting the deletion of the inventor(s)
2. The name(s) of the inventor(s) to be deleted
3. The filing date of the CPA

The MPEP provides a template for acknowledging such requests:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

For more information on USPTO, visit: USPTO.

The notice of Continued Prosecution Application (CPA) establishment includes specific information as outlined in MPEP ¶ 2.30. The key elements are:

• The filing date of the CPA request
• The parent application number
• A statement that the CPA is acceptable and has been established
• An indication that an action on the CPA will follow

The exact language used by the examiner is: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.

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

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

What happens to a provisional application after one year?

A provisional application automatically becomes abandoned 12 months after its filing date. The MPEP 201.04 states:

‘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 that after the 12-month period, the provisional application cannot be revived or extended. To maintain the benefit of the provisional filing date, you must file a nonprovisional application claiming priority to the provisional within this 12-month window. If you fail to do so, you lose the benefit of the earlier filing date, and the subject matter of the provisional becomes part of the prior art.

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

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

For more information on USPTO, visit: USPTO.

What happens if a divisional application is filed after the parent application is patented or abandoned?

If a divisional application is filed after the parent application has been patented or abandoned, it will not be entitled to the benefit of the parent application’s filing date. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.“

Filing a divisional application after the parent application has been patented or abandoned means:

• The application will not be considered a proper divisional application
• It will not receive the benefit of the parent application’s filing date
• It may be treated as a new, independent application
• Prior art that was not applicable to the parent application may now be applicable
• The application may face potential statutory bars under 35 U.S.C. 102

To avoid these issues, it’s crucial to file divisional applications before the patenting, abandonment, or termination of proceedings on the parent application.

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

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

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

To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:

• The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The CIP must contain or be amended to contain a specific reference to the earlier filed application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
• The CIP must have at least one common inventor with the prior-filed application.

Additionally, the MPEP notes:

“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”

It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.

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

For more information on prior-filed application, visit: prior-filed application.

A substitute application has a significant impact on the filing date of a patent application. According to MPEP 201.02:

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

This means that if an applicant files a substitute application, it will receive a new filing date based on when it was submitted, rather than inheriting the filing date of the original application it’s replacing. This can have important implications for patent priority and the determination of prior art.

It’s crucial for applicants to understand this distinction, as the filing date can significantly affect the patentability of an invention, especially in fast-moving technological fields.

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

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

A Patent Cooperation Treaty (PCT) application can become a national application in the United States when certain conditions are met. According to MPEP 201.01:

‘An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid’ becomes a national application.

This process, known as ‘national stage entry,’ involves the following steps:

• Filing the appropriate documents with the USPTO
• Paying the required national fee
• Providing an English translation if the international application was not filed in English

Once these requirements are fulfilled, the international application effectively becomes a U.S. national application and is processed accordingly.

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

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

For more information on USPTO, visit: USPTO.

To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):

Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under §1.1023.

For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.

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

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

For more information on prior-filed application, visit: prior-filed application.

Inventorship in a Continued Prosecution Application (CPA) for design patents can be corrected by filing a statement requesting the deletion of a named inventor along with the CPA filing. The MPEP states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This process allows for immediate correction of inventorship when filing a CPA. However, it’s important to note that any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.

For more information on CPA, visit: CPA.

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

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

When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

When filing a Continued Prosecution Application (CPA) for a design patent, you can request the deletion of a named inventor by submitting a statement with your CPA filing. The MPEP ¶ 2.32 states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This means that you should include a clear statement requesting the deletion of the specific inventor(s) when you file your CPA. The USPTO will then acknowledge this request and correct the inventorship accordingly.

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

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

To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”

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

For more information on CPA, visit: CPA.

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

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

The MPEP ¶ 2.32 specifically addresses the process of deleting named inventors when filing a Continued Prosecution Application (CPA) for design patents. However, it does not explicitly mention adding or substituting inventors at the time of CPA filing.

If you need to add or substitute inventors, rather than just delete them, you should follow the general procedures for correction of inventorship outlined in 37 CFR 1.48. This regulation provides the requirements for adding, deleting, or substituting inventors in patent applications.

It’s advisable to consult with a patent attorney or contact the USPTO directly for guidance on the proper procedure for adding or substituting inventors when filing a CPA, as this may require additional documentation or fees beyond a simple deletion request.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

The MPEP ¶ 2.32 specifically addresses the deletion of inventors in a Continued Prosecution Application (CPA) for design patents, but it does not directly discuss adding inventors. However, changes to inventorship in patent applications are generally governed by 37 CFR 1.48.

If you need to add an inventor when filing a CPA, it’s advisable to:

• Include a clear statement requesting the addition of the new inventor
• Provide the new inventor’s oath or declaration
• Submit any required fees

For specific guidance on adding inventors to a CPA, it’s recommended to consult with a patent attorney or contact the USPTO directly, as the process may differ from deleting inventors and could require additional documentation.

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

No, applicants are not separately notified when their parent application is abandoned due to the filing of a Continued Prosecution Application (CPA). This is implied in the examiner’s note in MPEP ¶ 2.35:

This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

The establishment of a CPA automatically results in the abandonment of the parent application. Applicants should be aware that by filing a CPA, they are effectively abandoning the parent application in favor of continuing prosecution through the CPA.

For more information on CPA, visit: CPA.

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

For a non-English provisional application, the English translation and accuracy statement must be filed in the provisional application itself, not in the non-provisional application claiming its benefit. MPEP ¶ 2.38 clearly states:

“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 non-provisional application claiming benefit, you must provide confirmation that these documents were filed in the provisional application. This two-step process ensures proper documentation and compliance with 37 CFR 1.78.

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

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

According to the MPEP, a petition to restore the benefit of a provisional application should be addressed to:

“Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

It’s important to note that this petition must be filed in the subsequent nonprovisional application or international application designating the United States, not in the provisional application itself. Always ensure you’re following the most current USPTO guidelines for petition submissions, as procedures may be updated over time.

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

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

If you miss the 12-month deadline for claiming the benefit of a provisional application, you have two main options:

1. Delete the claim to the benefit of the prior-filed provisional application.
2. File a petition to restore the benefit of the provisional application.

The MPEP states:

“Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This petition must be filed in the subsequent application and include specific requirements, such as a reference to the provisional application, a petition fee, and a statement that the delay was unintentional.

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

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

If the required translation and statement are not filed for a non-English provisional application, serious consequences can occur. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that if you fail to provide the English translation and accuracy statement in the provisional application, and fail to confirm their filing in the present application, your current application may be abandoned. It’s crucial to comply with these requirements within the specified time frame to maintain your application’s active status.

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

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

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

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

If you don’t file a petition to restore the benefit of a provisional application after missing the 12-month deadline, you will lose the right to claim the earlier filing date of the provisional application. The MPEP states:

“Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application.”

This means your application will be treated as if it was filed on the date of the nonprovisional application, potentially affecting your ability to secure patent rights if intervening prior art exists. It’s crucial to either meet the original 12-month deadline or file a timely petition to restore the benefit to maintain your earlier filing date.

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

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

If copendency is not established between patent applications, the benefit claim to the prior-filed application becomes improper. The MPEP clearly states:

Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

In such cases, the applicant must either prove that copendency exists or remove the benefit claim. Failure to do so may result in the loss of the earlier priority date, potentially affecting the patentability of the invention.

For more information on copendency, visit: copendency.

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

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

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

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

For more information on unintentional delay, visit: unintentional delay.

According to MPEP 211, a petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include:

1. The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted)
2. The petition fee set forth in 37 CFR 1.17(m)
3. A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional

The MPEP further states:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to note that this petition must be filed in the subsequent application, not the provisional application itself.

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

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

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

If a benefit claim is improper due to lack of copendency, the MPEP ¶ 2.11 outlines the required action:

Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

This means the applicant has two options:

1. Delete the benefit claim to the prior-filed application, or
2. Provide evidence to establish that copendency actually exists between the applications.

If the applicant cannot prove copendency, they must remove the benefit claim to avoid potential issues with the application’s validity or examination process.

For more information on copendency, visit: copendency.

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

When the required documents for a non-English provisional application are missing, the USPTO takes specific actions to notify the applicant. According to MPEP ¶ 2.38:

“Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.”

The USPTO will issue an Office action informing the applicant of the missing documents and setting a time period for their submission. The applicant must then provide the missing translation and/or accuracy statement in the provisional application and confirm their filing in the present application. Failure to do so within the specified time period may result in the abandonment of the present application.

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

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

Yes, there is an exception for certain applications filed before November 25, 2005. According to the Examiner Note in MPEP ¶ 2.38:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This means that for non-provisional applications filed before November 25, 2005, it was acceptable to file the English translation and accuracy statement in the non-provisional application itself, rather than in the provisional application. For applications filed after this date, the current rules requiring filing in the provisional application apply.

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

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

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

Yes, there is a time limit for filing a petition to restore the benefit of a provisional application. According to MPEP 211:

“Applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This means you have a two-month grace period after the expiration of the initial 12-month period to file the petition. It’s crucial to act quickly if you miss the original deadline and wish to restore the benefit of your provisional application.

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

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

Yes, there is a deadline for filing the English translation and accuracy statement for a non-English provisional application. While MPEP ¶ 2.38 doesn’t specify an exact timeframe, it indicates that the USPTO will set a time period in an Office action:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that when the USPTO notices that the required documents are missing, they will issue an Office action with a specific deadline. It’s crucial to comply with this deadline to avoid abandonment of your application. As a best practice, it’s advisable to file these documents as soon as possible after filing the non-English provisional application to avoid any potential issues.

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

Delayed benefit claims in international applications have specific procedures. According to MPEP 211.04:

A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) are required to add a benefit claim under 35 U.S.C. 120 and 365(c) in an abandoned international application designating the United States, even when the international application did not enter the national stage under 35 U.S.C. 371.

For international applications not filed with the U.S. Receiving Office and not a nonprovisional application, the petition may be filed in the earliest nonprovisional application claiming benefit to the international application. This petition will be treated as if filed in the international application itself.

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

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

No, MPEP ¶ 2.11 does not apply to benefit claims for provisional applications. The MPEP explicitly states:

Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.

This means that the copendency requirements and procedures outlined in MPEP ¶ 2.11 are specifically for non-provisional applications claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c). Provisional applications have different rules and procedures for claiming benefit, which are covered under 35 U.S.C. 119(e) and other sections of the MPEP.

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

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

No, the English translation and accuracy statement for a non-English provisional application cannot be filed in the non-provisional application. They must be filed in the provisional application itself. MPEP ¶ 2.38 is explicit about this requirement:

“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.[3].”

However, there is an exception to this rule. The MPEP states:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This means that for applications filed before November 25, 2005, it was acceptable to file these documents in the non-provisional application. For all applications after this date, the translation and statement must be filed in the provisional application, with a confirmation in the non-provisional application that this has been done.

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

No, you cannot file a petition to restore the benefit of a provisional application in the provisional application itself. According to the MPEP:

“A petition to restore the benefit of a provisional application must be filed in the subsequent application.”

This means you must file the petition in the nonprovisional application or the international application designating the United States that is seeking to claim the benefit of the provisional application. This is because the provisional application itself is not examined and automatically expires after 12 months. The petition is a request to restore the right to claim the benefit in a subsequent application, not to extend the life of the provisional application.

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

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

The filing requirements for an interim copy of a foreign application are specified in 37 CFR 1.55(j). They include:

• Filing a copy of the original foreign application clearly labeled as ‘Interim Copy’
• Including a separate cover sheet identifying the foreign application details
• Filing within specified time limits

The MPEP states:

’37 CFR 1.55(j) also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority).’

It’s crucial to adhere to these requirements to ensure proper processing of the interim copy.

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

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

For more information on interim copy, visit: interim copy.

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

To ensure proper correlation between priority papers and U.S. applications, the MPEP suggests: “It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data.” This practice helps prevent separation of cover letters and priority papers, which can cause severe problems for both the Office and applicant.

Submitting an interim copy of a foreign application electronically involves specific procedures. The MPEP provides guidance:

‘If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a “Sequence Listing” (see MPEP § 2421.01), a “Sequence Listing XML” (see MPEP § 2412), “Large Tables” (see MPEP § 608.05(b)), or a “Computer Program Listing Appendix” (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.’

Key points for electronic submission:

• File as a single PDF image file when possible
• Use the document description ‘Interim Copy of the Foreign Priority Application’ when indexing
• For plain text files, use the description ‘Interim Copy of the Foreign Priority (text file)’
• XML files, like Standard ST.26 Sequence Listings, should be filed on a read-only optical disc

Proper indexing and file format selection are crucial for successful electronic submission.

For more information on electronic submission, visit: electronic submission.

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

For more information on interim copy, visit: interim copy.

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

An interim copy of a foreign application serves as a temporary substitute for a certified copy but does not replace the requirement for a certified copy. The key differences are:

• An interim copy can be from the applicant’s own records, while a certified copy must be from the foreign patent office.
• An interim copy satisfies the initial time requirement in 37 CFR 1.55(f), but a certified copy is still required.
• An interim copy is labeled as ‘Interim Copy,’ while a certified copy has official certification from the foreign patent office.

The MPEP clarifies:

‘Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.’

In essence, the interim copy is a temporary measure to meet deadlines, while the certified copy remains a formal requirement.

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

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

For more information on interim copy, visit: interim copy.

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

A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:

Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

This means:

• For CIP applications filed before September 16, 2012: A new assignment is always required.
• For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.

The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.

Expungement of assignment records is a rare and complex process. According to MPEP 323.01(d), petitions to expunge assignment records are granted only under specific conditions:

• Normal corrective procedures (outlined in MPEP § 323.01(a) through § 323.01(c)) are inadequate for providing relief.
• The integrity of the assignment records will not be affected by granting the petition.

It’s important to note that expungement does not result in the complete removal of a document from assignment records. Instead, a redacted version of the ‘expunged’ document is recorded and replaces the original in the assignment records.

To learn more:

• expungement
• assignment records
• patent procedure
• USPTO

The USPTO provides normal corrective procedures for assignment records, which are outlined in MPEP 323.01(a) through 323.01(c). These procedures are typically the first course of action for addressing issues in assignment records. The expungement process, as described in MPEP 323.01(d), is only considered when:

the normal corrective procedures outlined in MPEP § 323.01(a) through § 323.01(c) will not provide the petitioner with adequate relief

The normal corrective procedures may include:

• Filing a corrective document
• Requesting a correction to the cover sheet
• Submitting evidence to correct clerical errors

It’s important for patent applicants and attorneys to be familiar with these procedures and to exhaust these options before considering a petition for expungement.

To learn more:

• corrective procedures
• assignment records
• USPTO
• patent procedure

If your assignment document is returned by the USPTO Assignment Division, you can correct it as follows:

• The returned document will be stamped with the original receipt date.
• It will come with a letter specifying a time period for correction and resubmission.
• If resubmitted within this period, the original receipt date may be considered the recording date.
• You can use the certification procedure (37 CFR 1.8) or “Priority Mail Express” (37 CFR 1.10) for resubmission.
• If not corrected within the specified period, the new submission date will be the recording date.

MPEP 317.02 states: “If the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of receipt of the papers as the date of recording of the document.”

If your assignment document is returned by the USPTO Assignment Division, you can correct it as follows:

• The returned document will be stamped with the original receipt date.
• It will come with a letter specifying a time period for correction and resubmission.
• If resubmitted within this period, the original receipt date may be considered the recording date.
• You can use the certification procedure (37 CFR 1.8) or “Priority Mail Express” (37 CFR 1.10) for resubmission.
• If not corrected within the specified period, the new submission date will be the recording date.

MPEP 317.02 states: “If the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of receipt of the papers as the date of recording of the document.”

An Application Data Sheet (ADS) is a document that provides bibliographic data for a patent application. For applications filed by assignees, obligated assignees, or those with sufficient proprietary interest, the ADS is crucial. According to MPEP 409.05:

‘The applicant under 37 CFR 1.46 (assignees and obligated assignees) must record the assignment, or submit the documentary evidence to the Office, preferably before issuing the filing receipt.’

The ADS must include:

• The name of the inventor(s)
• A statement that the application is being filed by the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest
• If filed by an obligated assignee, a statement that the application is being filed by a party who has a contractual obligation to assign or is under an obligation to assign the invention

The ADS serves as the official record of the applicant’s status and helps ensure that the USPTO properly recognizes the applicant’s right to file the application.

To learn more:

• Application Data Sheet
• ADS
• assignee-filed application
• patent procedure

For continuation or divisional applications filed under 37 CFR 1.53(b) of an application previously accorded status under pre-AIA 37 CFR 1.47, the process is simplified. The MPEP states: In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration from a prior application and a copy of a decision according status under pre-AIA 37 CFR 1.47 are filed as permitted by pre-AIA 37 CFR 1.63(d)(3)(i), the notice will not be repeated.

This means that if the proper documentation from the original application is provided, the USPTO won’t repeat the notification process for nonsigning inventors. This streamlines the application process for related applications.

To learn more:

• pre-AIA
• 37 CFR 1.47
• continuation application
• divisional application
• patent procedure

To learn more:

• 37 CFR 1.47

Yes, a Pre-AIA 37 CFR 1.47 application can be converted to a regular application if the previously non-signing inventor later submits an executed oath or declaration. The MPEP 409.03(j) states:

‘If a 37 CFR 1.47 applicant submits an executed oath or declaration of the nonsigning inventor, the executed oath or declaration should be accepted by the Office and the application no longer treated under 37 CFR 1.47.’

This means that once the missing oath or declaration is submitted, the application will be processed as a regular application, removing the special 37 CFR 1.47 status.

To learn more:

• Pre-AIA 37 CFR 1.47
• application conversion
• oath or declaration
• patent procedure

To learn more:

• Pre-AIA 37 CFR 1.47

The revocation of a power of attorney must be done in writing and cannot be accomplished through informal means such as telephone or email. The MPEP 402.05 states:

A power of attorney may not be revoked by a telephone call.

While this quote specifically mentions telephone calls, the same principle applies to emails or other informal communications. To properly revoke a power of attorney, applicants must submit a written revocation document or a new power of attorney that complies with the requirements set forth in MPEP 402. This ensures that the revocation is properly documented and effective in the patent application process.

To learn more:

• power of attorney
• revocation
• communication methods
• patent procedure

If OPAP objects to the drawings in a patent application, there is a specific process for submitting corrected drawings. The MPEP states:

“If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.”

It’s important to note that the corrected drawings must be submitted in paper form to the specific mailing address provided in the Notice. Applicants should ensure they meet the deadline (typically two months) to avoid potential abandonment of their application.

For more information on corrected drawings, visit: corrected drawings.

For more information on OPAP, visit: OPAP.

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

When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.

This rule applies to various USPTO actions, including:

• Filing responses to Office Actions
• Paying maintenance fees
• Submitting other time-sensitive documents

It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.

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

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

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.

This rule applies to various USPTO actions, including:

• Filing responses to Office Actions
• Paying maintenance fees
• Submitting other time-sensitive documents

It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.

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

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

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

If OPAP objects to the drawings in a patent application, there is a specific process for submitting corrected drawings. The MPEP states:

“If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.”

It’s important to note that the corrected drawings must be submitted in paper form to the specific mailing address provided in the Notice. Applicants should ensure they meet the deadline (typically two months) to avoid potential abandonment of their application.

For more information on corrected drawings, visit: corrected drawings.

For more information on OPAP, visit: OPAP.

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

For a non-English provisional application, the English translation and accuracy statement must be filed in the provisional application itself, not in the non-provisional application claiming its benefit. MPEP ¶ 2.38 clearly states:

“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 non-provisional application claiming benefit, you must provide confirmation that these documents were filed in the provisional application. This two-step process ensures proper documentation and compliance with 37 CFR 1.78.

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

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

According to the MPEP, a petition to restore the benefit of a provisional application should be addressed to:

“Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

It’s important to note that this petition must be filed in the subsequent nonprovisional application or international application designating the United States, not in the provisional application itself. Always ensure you’re following the most current USPTO guidelines for petition submissions, as procedures may be updated over time.

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

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

A separate written request is required in specific situations, as outlined in MPEP 215.01:

A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired.

Additionally, a separate request is needed when:

• The foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating office.
• The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

To learn more:

• PDX
• Written Requests
• Foreign Applications
• Patent Procedure

A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:

Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

This means:

• For CIP applications filed before September 16, 2012: A new assignment is always required.
• For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.

The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.

A continuation application can be filed at various times during the patent application process. According to MPEP 201.07:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

This means you can file a continuation application:

• Before the parent application is granted a patent
• Before the parent application is abandoned
• Before proceedings on the parent application are terminated

However, for Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), there are additional timing restrictions:

A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

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

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

If inventorship changes after filing a property rights statement, MPEP 151 provides specific guidance:

“If a request under 37 CFR 1.48 for correction of inventorship is granted during pendency of an application in which a property rights statement has been filed, a supplemental statement executed by any added inventor(s) is required and should promptly be filed with Licensing and Review.”

This means that if new inventors are added to the application, they must file a supplemental statement to ensure compliance with the Atomic Energy Act and NASA Act requirements. It’s important to file this supplemental statement promptly to maintain proper documentation.

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

For more information on property rights statement, visit: property rights statement.

If you miss the 12-month deadline for claiming the benefit of a provisional application, you have two main options:

1. Delete the claim to the benefit of the prior-filed provisional application.
2. File a petition to restore the benefit of the provisional application.

The MPEP states:

“Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This petition must be filed in the subsequent application and include specific requirements, such as a reference to the provisional application, a petition fee, and a statement that the delay was unintentional.

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

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

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

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

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

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

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

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

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

What is the significance of the term ‘copending’ in continuation applications?

The term ‘copending’ is crucial in the context of continuation applications. According to MPEP 201.07:

A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.

The significance of ‘copending’ is as follows:

• Timing: It means that the continuation application must be filed before the prior application is patented, abandoned, or terminated.
• Continuous chain: It ensures a continuous chain of pending applications, maintaining the priority date of the original filing.
• Benefit claims: Copendency is required for a continuation to claim the benefit of the earlier filing date of the parent application.

If applications are not copending, the continuation may lose the benefit of the earlier filing date, potentially affecting patentability if intervening prior art exists.

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

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

The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:

“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”

The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.

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

For more information on CPA, visit: CPA.

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

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

The proper procedure for correcting inventorship in a Continued Prosecution Application (CPA) is to file a request under 37 CFR 1.48. This applies whether you’re adding or removing an inventor. The MPEP guidance states: ‘Any request to add an inventor must be in the form of a request under 37 CFR 1.48.’ This formal request ensures that the USPTO properly processes and recognizes the change in inventorship.

For more information on CPA, visit: CPA.

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

If OPAP objects to the drawings in a patent application, there is a specific process for submitting corrected drawings. The MPEP states:

“If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.”

It’s important to note that the corrected drawings must be submitted in paper form to the specific mailing address provided in the Notice. Applicants should ensure they meet the deadline (typically two months) to avoid potential abandonment of their application.

For more information on corrected drawings, visit: corrected drawings.

For more information on OPAP, visit: OPAP.

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

Expungement of assignment records is a rare and complex process. According to MPEP 323.01(d), petitions to expunge assignment records are granted only under specific conditions:

• Normal corrective procedures (outlined in MPEP § 323.01(a) through § 323.01(c)) are inadequate for providing relief.
• The integrity of the assignment records will not be affected by granting the petition.

It’s important to note that expungement does not result in the complete removal of a document from assignment records. Instead, a redacted version of the ‘expunged’ document is recorded and replaces the original in the assignment records.

To learn more:

• expungement
• assignment records
• patent procedure
• USPTO

What is the filing date requirement for a divisional application?

A divisional application must be filed before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.”

This means that the divisional application must be filed while the parent application is still pending, ensuring continuity in the examination process.

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

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

The process for correcting inventorship in a Continued Prosecution Application (CPA) differs depending on when the correction is requested:

• At CPA filing: Inventorship can be corrected by submitting a statement requesting deletion of a named inventor along with the CPA filing. This process is straightforward and does not require additional procedures.
• After CPA filing: The MPEP states, Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48. This means additional documentation and possibly fees are required for post-filing inventorship changes.

It’s generally simpler to correct inventorship at the time of CPA filing if possible.

For more information on CPA, visit: CPA.

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

An Application Data Sheet (ADS) is a document that provides bibliographic data for a patent application. For applications filed by assignees, obligated assignees, or those with sufficient proprietary interest, the ADS is crucial. According to MPEP 409.05:

‘The applicant under 37 CFR 1.46 (assignees and obligated assignees) must record the assignment, or submit the documentary evidence to the Office, preferably before issuing the filing receipt.’

The ADS must include:

• The name of the inventor(s)
• A statement that the application is being filed by the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest
• If filed by an obligated assignee, a statement that the application is being filed by a party who has a contractual obligation to assign or is under an obligation to assign the invention

The ADS serves as the official record of the applicant’s status and helps ensure that the USPTO properly recognizes the applicant’s right to file the application.

To learn more:

• Application Data Sheet
• ADS
• assignee-filed application
• patent procedure

When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:

1. A clear statement requesting the deletion of the inventor(s)
2. The name(s) of the inventor(s) to be deleted
3. The filing date of the CPA

The MPEP provides a template for acknowledging such requests:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

For more information on USPTO, visit: USPTO.

A power of attorney for patent applications must include the following information:

• The attorney’s or agent’s full mailing address, including ZIP Code
• It’s recommended to include the telephone and fax numbers of the attorney or agent

As stated in MPEP 601.02: “The attorney’s or agent’s full mailing address (including ZIP Code) must be given in every power of attorney. The telephone and fax numbers of the attorney or agent should also be included in the power of attorney.”

Including this information facilitates prompt delivery of communications.

To learn more:

• power of attorney
• patent application
• attorney information
• patent procedure

The notice of Continued Prosecution Application (CPA) establishment includes specific information as outlined in MPEP ¶ 2.30. The key elements are:

• The filing date of the CPA request
• The parent application number
• A statement that the CPA is acceptable and has been established
• An indication that an action on the CPA will follow

The exact language used by the examiner is: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.

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

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

What happens to a provisional application after one year?

A provisional application automatically becomes abandoned 12 months after its filing date. The MPEP 201.04 states:

‘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 that after the 12-month period, the provisional application cannot be revived or extended. To maintain the benefit of the provisional filing date, you must file a nonprovisional application claiming priority to the provisional within this 12-month window. If you fail to do so, you lose the benefit of the earlier filing date, and the subject matter of the provisional becomes part of the prior art.

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

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

For more information on USPTO, visit: USPTO.

If the required translation and statement are not filed for a non-English provisional application, serious consequences can occur. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that if you fail to provide the English translation and accuracy statement in the provisional application, and fail to confirm their filing in the present application, your current application may be abandoned. It’s crucial to comply with these requirements within the specified time frame to maintain your application’s active status.

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

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

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

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

If you don’t file a petition to restore the benefit of a provisional application after missing the 12-month deadline, you will lose the right to claim the earlier filing date of the provisional application. The MPEP states:

“Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application.”

This means your application will be treated as if it was filed on the date of the nonprovisional application, potentially affecting your ability to secure patent rights if intervening prior art exists. It’s crucial to either meet the original 12-month deadline or file a timely petition to restore the benefit to maintain your earlier filing date.

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

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

If copendency is not established between patent applications, the benefit claim to the prior-filed application becomes improper. The MPEP clearly states:

Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

In such cases, the applicant must either prove that copendency exists or remove the benefit claim. Failure to do so may result in the loss of the earlier priority date, potentially affecting the patentability of the invention.

For more information on copendency, visit: copendency.

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

If an assignee of a part interest refuses to join in an application for reissue, the reissue may still be applied for by the assignee of the entire interest. This is outlined in MPEP 1410. The assignee of the entire interest can file the reissue application as the sole applicant. However, the assignee must comply with the requirements of 37 CFR 1.172, which includes submitting an oath or declaration by the assignee.

When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.

This rule applies to various USPTO actions, including:

• Filing responses to Office Actions
• Paying maintenance fees
• Submitting other time-sensitive documents

It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.

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

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

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

What happens if a divisional application is filed after the parent application is patented or abandoned?

If a divisional application is filed after the parent application has been patented or abandoned, it will not be entitled to the benefit of the parent application’s filing date. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.“

Filing a divisional application after the parent application has been patented or abandoned means:

• The application will not be considered a proper divisional application
• It will not receive the benefit of the parent application’s filing date
• It may be treated as a new, independent application
• Prior art that was not applicable to the parent application may now be applicable
• The application may face potential statutory bars under 35 U.S.C. 102

To avoid these issues, it’s crucial to file divisional applications before the patenting, abandonment, or termination of proceedings on the parent application.

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

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

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

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

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

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

For more information on unintentional delay, visit: unintentional delay.

The time limits for filing an interim copy of a foreign application are specified in 37 CFR 1.55(j). According to the MPEP:

37 CFR 1.55(j) also provides that the interim copy of the foreign application and cover sheet must be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in an application entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e) or (f).

In summary, the interim copy must be filed within:

• 16 months from the filing date of the foreign application, or
• 4 months from the U.S. application filing date under 35 U.S.C. 111(a), or
• 4 months from the national stage commencement or initial submission date under 35 U.S.C. 371, or
• With a petition under 37 CFR 1.55(e) or (f)

To learn more:

• interim copy
• foreign application
• time limits
• filing deadlines
• patent procedure

According to MPEP 211, a petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include:

1. The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted)
2. The petition fee set forth in 37 CFR 1.17(m)
3. A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional

The MPEP further states:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to note that this petition must be filed in the subsequent application, not the provisional application itself.

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

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

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

To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:

• The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The CIP must contain or be amended to contain a specific reference to the earlier filed application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
• The CIP must have at least one common inventor with the prior-filed application.

Additionally, the MPEP notes:

“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”

It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.

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

For more information on prior-filed application, visit: prior-filed application.

What are the requirements for citing NPL documents in an IDS?

When citing Non-Patent Literature (NPL) documents in an Information Disclosure Statement (IDS), specific requirements must be met to ensure proper identification and consideration. According to MPEP 609.04(a):

“Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.”

The MPEP further clarifies:

• For publications obtained from the Internet, the uniform resource locator (URL) of the Web page that is the source of the publication must be provided for the place of publication (e.g., “www.uspto.gov”).
• The date of publication to be provided is the date the document was posted on the Internet. If no publication date is known, the applicant must specify in the IDS that no publication date is known.

Additionally:

• For NPL not in the English language, a concise explanation of the relevance is required unless a complete translation is provided.
• If citing a document that is only available as a scanned copy, include “(scanned copy)” after the document’s title in the citation.

Providing complete and accurate information for NPL citations helps examiners efficiently locate and consider these references during the examination process.

To learn more:

• IDS
• NPL
• Non-Patent Literature
• citation format
• patent procedure

When an inventor is unable to provide a statement due to death, incapacitation, or unavailability, MPEP 151 offers alternative solutions:

“When an inventor applicant is deceased or legally incapacitated, or where it is shown to the satisfaction of this Office that he or she refuses to furnish a statement or cannot be reached after diligent efforts, declarations or statements under oath setting forth the information required by the statutes may be accepted from an officer or employee of the assignee who has sufficient knowledge of the facts.”

Additionally, for joint inventions, “Where it is shown that one of the joint inventors is deceased or unavailable, a statement by all of the other inventor(s) may be accepted.” It’s important to note that these alternatives should only be used when the inventor is truly unavailable, not merely for convenience.

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

The USPTO provides normal corrective procedures for assignment records, which are outlined in MPEP 323.01(a) through 323.01(c). These procedures are typically the first course of action for addressing issues in assignment records. The expungement process, as described in MPEP 323.01(d), is only considered when:

the normal corrective procedures outlined in MPEP § 323.01(a) through § 323.01(c) will not provide the petitioner with adequate relief

The normal corrective procedures may include:

• Filing a corrective document
• Requesting a correction to the cover sheet
• Submitting evidence to correct clerical errors

It’s important for patent applicants and attorneys to be familiar with these procedures and to exhaust these options before considering a petition for expungement.

To learn more:

• corrective procedures
• assignment records
• USPTO
• patent procedure

The filing requirements for an interim copy of a foreign application are specified in 37 CFR 1.55(j). They include:

• Filing a copy of the original foreign application clearly labeled as ‘Interim Copy’
• Including a separate cover sheet identifying the foreign application details
• Filing within specified time limits

The MPEP states:

’37 CFR 1.55(j) also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority).’

It’s crucial to adhere to these requirements to ensure proper processing of the interim copy.

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

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

For more information on interim copy, visit: interim copy.

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

For delayed priority claims filed more than two years after the due date, additional explanation is required. The MPEP states:

“A person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e).”

This additional explanation helps the USPTO determine if the delay was truly unintentional, as required for acceptance of the delayed claim. Applicants should be prepared to provide a detailed account of the circumstances leading to the delay.

To learn more:

• delayed priority claim
• two-year delay
• unintentional delay
• patent procedure

If a benefit claim is improper due to lack of copendency, the MPEP ¶ 2.11 outlines the required action:

Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

This means the applicant has two options:

1. Delete the benefit claim to the prior-filed application, or
2. Provide evidence to establish that copendency actually exists between the applications.

If the applicant cannot prove copendency, they must remove the benefit claim to avoid potential issues with the application’s validity or examination process.

For more information on copendency, visit: copendency.

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

When the required documents for a non-English provisional application are missing, the USPTO takes specific actions to notify the applicant. According to MPEP ¶ 2.38:

“Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.”

The USPTO will issue an Office action informing the applicant of the missing documents and setting a time period for their submission. The applicant must then provide the missing translation and/or accuracy statement in the provisional application and confirm their filing in the present application. Failure to do so within the specified time period may result in the abandonment of the present application.

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

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

Yes, there is an exception for certain applications filed before November 25, 2005. According to the Examiner Note in MPEP ¶ 2.38:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This means that for non-provisional applications filed before November 25, 2005, it was acceptable to file the English translation and accuracy statement in the non-provisional application itself, rather than in the provisional application. For applications filed after this date, the current rules requiring filing in the provisional application apply.

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

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

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

Yes, there is a time limit for filing a petition to restore the benefit of a provisional application. According to MPEP 211:

“Applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This means you have a two-month grace period after the expiration of the initial 12-month period to file the petition. It’s crucial to act quickly if you miss the original deadline and wish to restore the benefit of your provisional application.

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

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

Yes, there is a deadline for filing the English translation and accuracy statement for a non-English provisional application. While MPEP ¶ 2.38 doesn’t specify an exact timeframe, it indicates that the USPTO will set a time period in an Office action:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that when the USPTO notices that the required documents are missing, they will issue an Office action with a specific deadline. It’s crucial to comply with this deadline to avoid abandonment of your application. As a best practice, it’s advisable to file these documents as soon as possible after filing the non-English provisional application to avoid any potential issues.

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

To ensure proper correlation between priority papers and U.S. applications, the MPEP suggests: “It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should be placed directly on the priority papers themselves even where a cover letter is attached bearing the U.S. application data.” This practice helps prevent separation of cover letters and priority papers, which can cause severe problems for both the Office and applicant.

How should pending U.S. patent applications be listed in an IDS?

When listing pending U.S. patent applications in an Information Disclosure Statement (IDS), applicants must provide specific information to ensure proper identification. According to MPEP 609.04(a):

“Each U.S. application listed in an information disclosure statement must be identified by the inventor, application number, and filing date.”

Additionally, the MPEP states:

“Where the application is cited only in a pending U.S. application, the cited application should be identified by application number (application number without series code) or patent application publication number, if applicable.”

It’s important to note that:

• The series code (e.g., 08/, 09/, 10/, etc.) should not be included when citing a pending U.S. application.
• If a patent application publication exists for the pending application, you may include that number instead of or in addition to the application number.
• Providing accurate and complete information helps examiners efficiently locate and consider the cited applications during the examination process.

To learn more:

• IDS
• pending applications
• U.S. patent applications
• citation format
• patent procedure

To learn more:

• U.S. patent applications

How should foreign patent documents be cited in an IDS?

When citing foreign patent documents in an Information Disclosure Statement (IDS), specific information must be provided to ensure proper identification. According to MPEP 609.04(a):

“Each foreign patent or published foreign patent application listed in an information disclosure statement must be identified by the country or patent office which issued the patent or published the application, an appropriate document number, and the publication date indicated on the patent or published application.”

Additionally, the MPEP provides guidance on citing specific types of foreign patent documents:

• Published applications: Provide the application number, the publication date, and the name of the patent office.
• Patents: Include the name of the patentee, the date of the patent, the country, and the patent number.
• Abstract-only citations: If only the abstract is being cited, clearly indicate this fact.

For non-English language foreign patent documents:

• A concise explanation of relevance is required unless a complete translation is provided.
• If a search report cites the document, submitting an English-language version of the search report indicating the degree of relevance can satisfy the explanation requirement.

Providing accurate and complete information for foreign patent documents helps examiners efficiently locate and consider these references during the examination process.

To learn more:

• IDS
• foreign patent documents
• citation format
• patent procedure

Submitting an interim copy of a foreign application electronically involves specific procedures. The MPEP provides guidance:

‘If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a “Sequence Listing” (see MPEP § 2421.01), a “Sequence Listing XML” (see MPEP § 2412), “Large Tables” (see MPEP § 608.05(b)), or a “Computer Program Listing Appendix” (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.’

Key points for electronic submission:

• File as a single PDF image file when possible
• Use the document description ‘Interim Copy of the Foreign Priority Application’ when indexing
• For plain text files, use the description ‘Interim Copy of the Foreign Priority (text file)’
• XML files, like Standard ST.26 Sequence Listings, should be filed on a read-only optical disc

Proper indexing and file format selection are crucial for successful electronic submission.

For more information on electronic submission, visit: electronic submission.

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

For more information on interim copy, visit: interim copy.

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

An interim copy of a foreign application serves as a temporary substitute for a certified copy but does not replace the requirement for a certified copy. The key differences are:

• An interim copy can be from the applicant’s own records, while a certified copy must be from the foreign patent office.
• An interim copy satisfies the initial time requirement in 37 CFR 1.55(f), but a certified copy is still required.
• An interim copy is labeled as ‘Interim Copy,’ while a certified copy has official certification from the foreign patent office.

The MPEP clarifies:

‘Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.’

In essence, the interim copy is a temporary measure to meet deadlines, while the certified copy remains a formal requirement.

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

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

For more information on interim copy, visit: interim copy.

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

The USPTO has specific procedures for handling foreign language provisional applications during the screening process. According to the MPEP:

Provisional applications filed in a foreign language are also screened under these provisions. The Office will make an attempt to determine the subject matter of the application, but the applicant may be required to provide at least an English language abstract of the information for screening purposes.

To avoid potential delays in the screening process, the MPEP strongly recommends:

It is strongly recommended that if the applicant is in possession of an English language description of the technology, it should be filed with the provisional application to prevent screening delays.

This recommendation helps ensure that the USPTO can efficiently review the application for national security and property rights issues without language barriers impeding the process.

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

A substitute application has a significant impact on the filing date of a patent application. According to MPEP 201.02:

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

This means that if an applicant files a substitute application, it will receive a new filing date based on when it was submitted, rather than inheriting the filing date of the original application it’s replacing. This can have important implications for patent priority and the determination of prior art.

It’s crucial for applicants to understand this distinction, as the filing date can significantly affect the patentability of an invention, especially in fast-moving technological fields.

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

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

A Patent Cooperation Treaty (PCT) application can become a national application in the United States when certain conditions are met. According to MPEP 201.01:

‘An international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid’ becomes a national application.

This process, known as ‘national stage entry,’ involves the following steps:

• Filing the appropriate documents with the USPTO
• Paying the required national fee
• Providing an English translation if the international application was not filed in English

Once these requirements are fulfilled, the international application effectively becomes a U.S. national application and is processed accordingly.

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

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

For more information on USPTO, visit: USPTO.

The requirements for power of attorney in patent applications differ based on the filing date:

• For applications filed on or after September 16, 2012: Refer to MPEP § 402.02(a) for detailed information and relevant forms.
• For applications filed before September 16, 2012: Consult MPEP § 402.02(b) for specific details and applicable forms.

The MPEP 601.02 states: “See MPEP § 402.02(a) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed on or after September 16, 2012. See MPEP § 402.02(b) for detailed information and relevant forms pertaining to appointment of a power of attorney in applications filed before September 16, 2012.”

This distinction is important as it affects the specific procedures and forms required for appointing a power of attorney.

To learn more:

• power of attorney
• patent application
• filing date
• patent procedure

To claim the benefit of a prior-filed application in a continuation application, you must include a reference to the prior-filed application in the new application. According to 37 CFR 1.78(d)(2):

Any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under §1.1023.

For nonprovisional applications, this reference must be included in an application data sheet (ADS) as specified in 37 CFR 1.76(b)(5). The reference should also identify the relationship between the applications, stating whether it’s a continuation, divisional, or continuation-in-part.

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

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

For more information on prior-filed application, visit: prior-filed application.

Inventorship in a Continued Prosecution Application (CPA) for design patents can be corrected by filing a statement requesting the deletion of a named inventor along with the CPA filing. The MPEP states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This process allows for immediate correction of inventorship when filing a CPA. However, it’s important to note that any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.

For more information on CPA, visit: CPA.

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

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

There are several ways to obtain a foreign filing license:

1. File a US patent application, which is considered an implicit petition for a license. The filing receipt will indicate if a license is granted.
2. File an explicit petition for a license under 37 CFR 5.12(b) if no US application has been filed.
3. Wait 6 months after filing a US application, at which point a license is no longer required (unless a Secrecy Order has been imposed).

As stated in the MPEP: “There are two ways in which permission to file an application abroad may be obtained: either a petition for a foreign filing license may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing an application in the USPTO (35 U.S.C. 184) at which time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed.”

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

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

For more information on USPTO, visit: USPTO.

Filing an interim copy of a foreign application electronically can be done through the USPTO patent electronic filing system. The MPEP provides guidance on how to file different parts of the application:

• Main parts (Abstract, Drawings, Specification, Claims) and the cover sheet can be filed as a single PDF file.
• Text-only files (e.g., Sequence Listings, Large Tables) can be filed as .txt files.
• XML files (e.g., Standard ST.26 Sequence Listing) should be filed on a read-only optical disc.

The MPEP states: If not provided as a single paper document, the main parts of the interim copy of the foreign priority application, i.e., Abstract, Drawings, Specification, Claims, and where applicable, the foreign patent office’s equivalent to a ‘Sequence Listing’ (see MPEP § 2421.01 a ‘Sequence Listing XML’ (see MPEP § 2412), ‘Large Tables’ (see MPEP § 608.05(b)), or a ‘Computer Program Listing Appendix’ (see MPEP § 608.05(a)), along with the separate cover sheet required by 37 CFR 1.55(j), may be filed as a single PDF image file via the USPTO patent electronic filing system.

For more information on electronic filing, refer to MPEP § 502.05.

To learn more:

• interim copy
• foreign application
• electronic filing
• USPTO
• patent procedure

When filing a Continued Prosecution Application (CPA) for a design patent, you can delete a named inventor by including a statement with your CPA filing. The MPEP ¶ 2.32 states:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

This means you should provide a clear statement identifying the inventor(s) to be deleted when submitting your CPA. The USPTO will then acknowledge and process this request, correcting the inventorship accordingly.

For more information on CPA, visit: CPA.

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

For more information on inventorship, visit: inventorship.

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

When filing a Continued Prosecution Application (CPA) for a design patent, you can request the deletion of a named inventor by submitting a statement with your CPA filing. The MPEP ¶ 2.32 states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

This means that you should include a clear statement requesting the deletion of the specific inventor(s) when you file your CPA. The USPTO will then acknowledge this request and correct the inventorship accordingly.

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

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

To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP states:

“Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.”

It’s important to note that this process is specific to CPA filings for design applications. If you need to delete a named inventor after the CPA has been filed, you must follow a different procedure, as outlined in MPEP ¶ 2.32: “Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48.”

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

For more information on CPA, visit: CPA.

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

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

If your assignment document is returned by the USPTO Assignment Division, you can correct it as follows:

• The returned document will be stamped with the original receipt date.
• It will come with a letter specifying a time period for correction and resubmission.
• If resubmitted within this period, the original receipt date may be considered the recording date.
• You can use the certification procedure (37 CFR 1.8) or “Priority Mail Express” (37 CFR 1.10) for resubmission.
• If not corrected within the specified period, the new submission date will be the recording date.

MPEP 317.02 states: “If the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of receipt of the papers as the date of recording of the document.”

The handling of delayed priority claims in design applications has evolved. The MPEP provides the following information:

“Before May 13, 2015, no procedures were established for accepting an unintentionally delayed priority claim in a design application. Effective May 13, 2015, 37 CFR 1.55(e) provides for the filing of a petition for acceptance of an unintentionally delayed priority claim in a design application where the foreign priority claim was not submitted during the pendency of the design application.”

This change allows design patent applicants and holders to rectify unintentionally delayed priority claims, aligning the process more closely with that of utility patents. As with utility patents, a petition under 37 CFR 1.55(e) may be filed along with a request for a certificate of correction after the design patent has been granted.

To learn more:

• design patent
• delayed priority claim
• unintentional delay
• patent procedure

Delayed benefit claims in international applications have specific procedures. According to MPEP 211.04:

A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) are required to add a benefit claim under 35 U.S.C. 120 and 365(c) in an abandoned international application designating the United States, even when the international application did not enter the national stage under 35 U.S.C. 371.

For international applications not filed with the U.S. Receiving Office and not a nonprovisional application, the petition may be filed in the earliest nonprovisional application claiming benefit to the international application. This petition will be treated as if filed in the international application itself.

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

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

For continuation or divisional applications filed under 37 CFR 1.53(b) of an application previously accorded status under pre-AIA 37 CFR 1.47, the process is simplified. The MPEP states: In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration from a prior application and a copy of a decision according status under pre-AIA 37 CFR 1.47 are filed as permitted by pre-AIA 37 CFR 1.63(d)(3)(i), the notice will not be repeated.

This means that if the proper documentation from the original application is provided, the USPTO won’t repeat the notification process for nonsigning inventors. This streamlines the application process for related applications.

To learn more:

• pre-AIA
• 37 CFR 1.47
• continuation application
• divisional application
• patent procedure

To learn more:

• 37 CFR 1.47

No, MPEP ¶ 2.11 does not apply to benefit claims for provisional applications. The MPEP explicitly states:

Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.

This means that the copendency requirements and procedures outlined in MPEP ¶ 2.11 are specifically for non-provisional applications claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c). Provisional applications have different rules and procedures for claiming benefit, which are covered under 35 U.S.C. 119(e) and other sections of the MPEP.

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

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

No, filing an interim copy does not replace the need for a certified copy of the foreign application. While an interim copy satisfies the timeliness requirement, a certified copy is still required. The MPEP clarifies this point:

Thus, providing an interim copy of a foreign application under 37 CFR 1.55(j) satisfies the requirement for a certified copy of the foreign application to be filed within the time limit set forth in 37 CFR 1.55(f), but a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate.

In essence, the interim copy allows applicants to meet initial deadlines, but they must still provide a certified copy of the foreign application during the pendency of the U.S. application, unless they file a specific petition.

To learn more:

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

No, the English translation and accuracy statement for a non-English provisional application cannot be filed in the non-provisional application. They must be filed in the provisional application itself. MPEP ¶ 2.38 is explicit about this requirement:

“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.[3].”

However, there is an exception to this rule. The MPEP states:

“Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.”

This means that for applications filed before November 25, 2005, it was acceptable to file these documents in the non-provisional application. For all applications after this date, the translation and statement must be filed in the provisional application, with a confirmation in the non-provisional application that this has been done.

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

No, extensions of time are not permitted for submitting corrected drawings in response to a notice of allowability. The MPEP clearly states:

Extensions of time to provide acceptable drawings in response to a notice of allowability are not permitted.

This strict policy ensures that the patent granting process is not unnecessarily delayed and encourages applicants to submit corrected drawings promptly after receiving the notice of allowability.

To learn more:

• corrected drawings
• notice of allowability
• extension of time
• patent procedure

No, you cannot file a petition to restore the benefit of a provisional application in the provisional application itself. According to the MPEP:

“A petition to restore the benefit of a provisional application must be filed in the subsequent application.”

This means you must file the petition in the nonprovisional application or the international application designating the United States that is seeking to claim the benefit of the provisional application. This is because the provisional application itself is not examined and automatically expires after 12 months. The petition is a request to restore the right to claim the benefit in a subsequent application, not to extend the life of the provisional application.

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

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

The MPEP ¶ 2.32 specifically addresses the process of deleting named inventors when filing a Continued Prosecution Application (CPA) for design patents. However, it does not explicitly mention adding or substituting inventors at the time of CPA filing.

If you need to add or substitute inventors, rather than just delete them, you should follow the general procedures for correction of inventorship outlined in 37 CFR 1.48. This regulation provides the requirements for adding, deleting, or substituting inventors in patent applications.

It’s advisable to consult with a patent attorney or contact the USPTO directly for guidance on the proper procedure for adding or substituting inventors when filing a CPA, as this may require additional documentation or fees beyond a simple deletion request.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

The MPEP ¶ 2.32 specifically addresses the deletion of inventors in a Continued Prosecution Application (CPA) for design patents, but it does not directly discuss adding inventors. However, changes to inventorship in patent applications are generally governed by 37 CFR 1.48.

If you need to add an inventor when filing a CPA, it’s advisable to:

• Include a clear statement requesting the addition of the new inventor
• Provide the new inventor’s oath or declaration
• Submit any required fees

For specific guidance on adding inventors to a CPA, it’s recommended to consult with a patent attorney or contact the USPTO directly, as the process may differ from deleting inventors and could require additional documentation.

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

No, an assignee of a part interest alone cannot file a reissue application. According to MPEP 1410, a reissue application must be applied for by all of the inventors, unless the application is accompanied by a petition under 37 CFR 1.182 for waiver of the requirement. Alternatively, the assignee of the entire interest can file the reissue application. An assignee of only a part interest is not entitled to file a reissue application on his or her own.

Yes, a Pre-AIA 37 CFR 1.47 application can be converted to a regular application if the previously non-signing inventor later submits an executed oath or declaration. The MPEP 409.03(j) states:

‘If a 37 CFR 1.47 applicant submits an executed oath or declaration of the nonsigning inventor, the executed oath or declaration should be accepted by the Office and the application no longer treated under 37 CFR 1.47.’

This means that once the missing oath or declaration is submitted, the application will be processed as a regular application, removing the special 37 CFR 1.47 status.

To learn more:

• Pre-AIA 37 CFR 1.47
• application conversion
• oath or declaration
• patent procedure

To learn more:

• Pre-AIA 37 CFR 1.47

The revocation of a power of attorney must be done in writing and cannot be accomplished through informal means such as telephone or email. The MPEP 402.05 states:

A power of attorney may not be revoked by a telephone call.

While this quote specifically mentions telephone calls, the same principle applies to emails or other informal communications. To properly revoke a power of attorney, applicants must submit a written revocation document or a new power of attorney that complies with the requirements set forth in MPEP 402. This ensures that the revocation is properly documented and effective in the patent application process.

To learn more:

• power of attorney
• revocation
• communication methods
• patent procedure

Can a patent application under secrecy order be appealed?

Yes, patent applications under secrecy orders can be appealed, but with certain restrictions. MPEP 120 states: ‘Appeals to the Patent Trial and Appeal Board and petitions to the Director under 37 CFR 1.181 are available to the applicant in secrecy order cases, but those actions will not set aside the secrecy order.‘ This means that while you can appeal decisions related to the patentability of your application, such appeals cannot challenge or remove the secrecy order itself. The secrecy order remains in effect regardless of the appeal process.

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

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

For more information on patent trial and appeal board, visit: patent trial and appeal board.

Yes, a delayed priority claim can be filed after a patent has been granted. The MPEP provides for this possibility:

“Where a priority claim under 37 CFR 1.55(g) was not timely made, 37 CFR 1.55(g) allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application). Thus, a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant.”

This provision allows patent holders to rectify priority claims even after their patent has been issued, ensuring that important priority rights are not lost due to unintentional delays.

To learn more:

• delayed priority claim
• post-grant correction
• certificate of correction
• patent procedure

No, Information Disclosure Statements (IDSs) are not permitted in provisional patent applications. The MPEP clearly states:

Information Disclosure Statements (IDSs) are not permitted in provisional applications filed under 35 U.S.C. 111(b). See 37 CFR 1.51(d).

The reason for this is that provisional applications do not undergo substantive examination. As the MPEP explains:

Since no substantive examination is given in provisional applications, a disclosure of information is unnecessary.

If an IDS is filed with a provisional application, the USPTO will handle it as follows:

Any such statement filed in a provisional application will be returned or destroyed at the option of the Office.

To learn more:

• Provisional Patent Application
• IDS
• USPTO
• Patent Procedure

No, applicants are not separately notified when their parent application is abandoned due to the filing of a Continued Prosecution Application (CPA). This is implied in the examiner’s note in MPEP ¶ 2.35:

This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA.

The establishment of a CPA automatically results in the abandonment of the parent application. Applicants should be aware that by filing a CPA, they are effectively abandoning the parent application in favor of continuing prosecution through the CPA.

For more information on CPA, visit: CPA.

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

For a non-English provisional application, the English translation and accuracy statement must be filed in the provisional application itself, not in the non-provisional application claiming its benefit. MPEP ¶ 2.38 clearly states:

“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 non-provisional application claiming benefit, you must provide confirmation that these documents were filed in the provisional application. This two-step process ensures proper documentation and compliance with 37 CFR 1.78.

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

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

According to the MPEP, a petition to restore the benefit of a provisional application should be addressed to:

“Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.”

It’s important to note that this petition must be filed in the subsequent nonprovisional application or international application designating the United States, not in the provisional application itself. Always ensure you’re following the most current USPTO guidelines for petition submissions, as procedures may be updated over time.

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

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

A separate written request is required in specific situations, as outlined in MPEP 215.01:

A separate written request may be used when the applicant wishes the Office to retrieve a foreign application from a foreign intellectual property office that becomes a participating foreign intellectual property office after the foreign priority has been claimed, so long as the time period set in 37 CFR 1.55 has not expired.

Additionally, a separate request is needed when:

• The foreign application was not originally filed in a participating office, but a certified copy was filed in an application subsequently filed in a participating office.
• The applicant wants to use Form PTO/SB/38 (Request to Retrieve Electronic Priority Application(s)) to file such a request.

To learn more:

• PDX
• Written Requests
• Foreign Applications
• Patent Procedure

A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306:

Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

This means:

• For CIP applications filed before September 16, 2012: A new assignment is always required.
• For CIP applications filed on or after September 16, 2012: A new assignment is required unless the assignee is the original applicant in the CIP application.

The reason for this requirement is that CIP applications often contain new subject matter not present in the original application, and the original assignment may not cover this new material.

A continuation application can be filed at various times during the patent application process. According to MPEP 201.07:

At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office.

This means you can file a continuation application:

• Before the parent application is granted a patent
• Before the parent application is abandoned
• Before proceedings on the parent application are terminated

However, for Continued Prosecution Applications (CPAs) under 37 CFR 1.53(d), which are only available for design applications (excluding international design applications), there are additional timing restrictions:

A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application.

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

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

If inventorship changes after filing a property rights statement, MPEP 151 provides specific guidance:

“If a request under 37 CFR 1.48 for correction of inventorship is granted during pendency of an application in which a property rights statement has been filed, a supplemental statement executed by any added inventor(s) is required and should promptly be filed with Licensing and Review.”

This means that if new inventors are added to the application, they must file a supplemental statement to ensure compliance with the Atomic Energy Act and NASA Act requirements. It’s important to file this supplemental statement promptly to maintain proper documentation.

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

For more information on property rights statement, visit: property rights statement.

If you miss the 12-month deadline for claiming the benefit of a provisional application, you have two main options:

1. Delete the claim to the benefit of the prior-filed provisional application.
2. File a petition to restore the benefit of the provisional application.

The MPEP states:

“Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional.”

This petition must be filed in the subsequent application and include specific requirements, such as a reference to the provisional application, a petition fee, and a statement that the delay was unintentional.

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

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

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

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

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

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

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

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

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

What is the significance of the term ‘copending’ in continuation applications?

The term ‘copending’ is crucial in the context of continuation applications. According to MPEP 201.07:

A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States.

The significance of ‘copending’ is as follows:

• Timing: It means that the continuation application must be filed before the prior application is patented, abandoned, or terminated.
• Continuous chain: It ensures a continuous chain of pending applications, maintaining the priority date of the original filing.
• Benefit claims: Copendency is required for a continuation to claim the benefit of the earlier filing date of the parent application.

If applications are not copending, the continuation may lose the benefit of the earlier filing date, potentially affecting patentability if intervening prior art exists.

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

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

The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:

“Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application.”

The examiner must verify that the request was submitted with the CPA filing and use the appropriate form paragraph to acknowledge the correction of inventorship. If the request is made after the CPA filing, the examiner must ensure it’s accompanied by a request under 37 CFR 1.48, as per the MPEP instructions.

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

For more information on CPA, visit: CPA.

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

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

The proper procedure for correcting inventorship in a Continued Prosecution Application (CPA) is to file a request under 37 CFR 1.48. This applies whether you’re adding or removing an inventor. The MPEP guidance states: ‘Any request to add an inventor must be in the form of a request under 37 CFR 1.48.’ This formal request ensures that the USPTO properly processes and recognizes the change in inventorship.

For more information on CPA, visit: CPA.

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

If OPAP objects to the drawings in a patent application, there is a specific process for submitting corrected drawings. The MPEP states:

“If OPAP objects to the drawings and sends applicant a Notice requiring submission of corrected drawings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OPAP, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OPAP.”

It’s important to note that the corrected drawings must be submitted in paper form to the specific mailing address provided in the Notice. Applicants should ensure they meet the deadline (typically two months) to avoid potential abandonment of their application.

For more information on corrected drawings, visit: corrected drawings.

For more information on OPAP, visit: OPAP.

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

Expungement of assignment records is a rare and complex process. According to MPEP 323.01(d), petitions to expunge assignment records are granted only under specific conditions:

• Normal corrective procedures (outlined in MPEP § 323.01(a) through § 323.01(c)) are inadequate for providing relief.
• The integrity of the assignment records will not be affected by granting the petition.

It’s important to note that expungement does not result in the complete removal of a document from assignment records. Instead, a redacted version of the ‘expunged’ document is recorded and replaces the original in the assignment records.

To learn more:

• expungement
• assignment records
• patent procedure
• USPTO

What is the filing date requirement for a divisional application?

A divisional application must be filed before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.”

This means that the divisional application must be filed while the parent application is still pending, ensuring continuity in the examination process.

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

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

The process for correcting inventorship in a Continued Prosecution Application (CPA) differs depending on when the correction is requested:

• At CPA filing: Inventorship can be corrected by submitting a statement requesting deletion of a named inventor along with the CPA filing. This process is straightforward and does not require additional procedures.
• After CPA filing: The MPEP states, Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48. This means additional documentation and possibly fees are required for post-filing inventorship changes.

It’s generally simpler to correct inventorship at the time of CPA filing if possible.

For more information on CPA, visit: CPA.

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

An Application Data Sheet (ADS) is a document that provides bibliographic data for a patent application. For applications filed by assignees, obligated assignees, or those with sufficient proprietary interest, the ADS is crucial. According to MPEP 409.05:

‘The applicant under 37 CFR 1.46 (assignees and obligated assignees) must record the assignment, or submit the documentary evidence to the Office, preferably before issuing the filing receipt.’

The ADS must include:

• The name of the inventor(s)
• A statement that the application is being filed by the assignee, obligated assignee, or person who otherwise shows sufficient proprietary interest
• If filed by an obligated assignee, a statement that the application is being filed by a party who has a contractual obligation to assign or is under an obligation to assign the invention

The ADS serves as the official record of the applicant’s status and helps ensure that the USPTO properly recognizes the applicant’s right to file the application.

To learn more:

• Application Data Sheet
• ADS
• assignee-filed application
• patent procedure

When requesting to delete a named inventor in a Continued Prosecution Application (CPA) for a design patent, you should include specific information. According to MPEP ¶ 2.32, the request should contain:

1. A clear statement requesting the deletion of the inventor(s)
2. The name(s) of the inventor(s) to be deleted
3. The filing date of the CPA

The MPEP provides a template for acknowledging such requests:

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2].

In this template, [1] represents the name(s) of the inventor(s) to be deleted, and [2] is the filing date of the CPA. Ensure your request clearly specifies these details to facilitate proper processing by the USPTO.

For more information on CPA, visit: CPA.

For more information on inventorship, visit: inventorship.

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

For more information on USPTO, visit: USPTO.

A power of attorney for patent applications must include the following information:

• The attorney’s or agent’s full mailing address, including ZIP Code
• It’s recommended to include the telephone and fax numbers of the attorney or agent

As stated in MPEP 601.02: “The attorney’s or agent’s full mailing address (including ZIP Code) must be given in every power of attorney. The telephone and fax numbers of the attorney or agent should also be included in the power of attorney.”

Including this information facilitates prompt delivery of communications.

To learn more:

• power of attorney
• patent application
• attorney information
• patent procedure

The notice of Continued Prosecution Application (CPA) establishment includes specific information as outlined in MPEP ¶ 2.30. The key elements are:

• The filing date of the CPA request
• The parent application number
• A statement that the CPA is acceptable and has been established
• An indication that an action on the CPA will follow

The exact language used by the examiner is: The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.

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

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

What happens to a provisional application after one year?

A provisional application automatically becomes abandoned 12 months after its filing date. The MPEP 201.04 states:

‘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 that after the 12-month period, the provisional application cannot be revived or extended. To maintain the benefit of the provisional filing date, you must file a nonprovisional application claiming priority to the provisional within this 12-month window. If you fail to do so, you lose the benefit of the earlier filing date, and the subject matter of the provisional becomes part of the prior art.

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

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

For more information on USPTO, visit: USPTO.

If the required translation and statement are not filed for a non-English provisional application, serious consequences can occur. According to MPEP ¶ 2.38:

“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”

This means that if you fail to provide the English translation and accuracy statement in the provisional application, and fail to confirm their filing in the present application, your current application may be abandoned. It’s crucial to comply with these requirements within the specified time frame to maintain your application’s active status.

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

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

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

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

If you don’t file a petition to restore the benefit of a provisional application after missing the 12-month deadline, you will lose the right to claim the earlier filing date of the provisional application. The MPEP states:

“Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application.”

This means your application will be treated as if it was filed on the date of the nonprovisional application, potentially affecting your ability to secure patent rights if intervening prior art exists. It’s crucial to either meet the original 12-month deadline or file a timely petition to restore the benefit to maintain your earlier filing date.

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

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

If copendency is not established between patent applications, the benefit claim to the prior-filed application becomes improper. The MPEP clearly states:

Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

In such cases, the applicant must either prove that copendency exists or remove the benefit claim. Failure to do so may result in the loss of the earlier priority date, potentially affecting the patentability of the invention.

For more information on copendency, visit: copendency.

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

If an assignee of a part interest refuses to join in an application for reissue, the reissue may still be applied for by the assignee of the entire interest. This is outlined in MPEP 1410. The assignee of the entire interest can file the reissue application as the sole applicant. However, the assignee must comply with the requirements of 37 CFR 1.172, which includes submitting an oath or declaration by the assignee.

When a USPTO deadline falls on a weekend or holiday, the due date is automatically extended. According to MPEP 505, When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding business day.

This rule applies to various USPTO actions, including:

• Filing responses to Office Actions
• Paying maintenance fees
• Submitting other time-sensitive documents

It’s important to note that while the deadline is extended, the USPTO is still closed on these days for regular correspondence receipt.

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

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

If a patent application is filed with informal papers (e.g., typed on both sides of the paper, not permanent, legible, or reproducible), the USPTO will still accord a filing date if the application otherwise meets the requirements. The MPEP states:

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 CFR 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.53(b), but are informal because they do not comply with the rules or notices.

The USPTO will send a Notice requiring correction of the informality. Failure to correct the informality within the specified time will result in abandonment of the application.

What happens if a divisional application is filed after the parent application is patented or abandoned?

If a divisional application is filed after the parent application has been patented or abandoned, it will not be entitled to the benefit of the parent application’s filing date. The MPEP states:

“A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application) before the patenting or abandonment of or termination of proceedings on the original application or on an earlier-filed divisional application directed to the same elected invention.“

Filing a divisional application after the parent application has been patented or abandoned means:

• The application will not be considered a proper divisional application
• It will not receive the benefit of the parent application’s filing date
• It may be treated as a new, independent application
• Prior art that was not applicable to the parent application may now be applicable
• The application may face potential statutory bars under 35 U.S.C. 102

To avoid these issues, it’s crucial to file divisional applications before the patenting, abandonment, or termination of proceedings on the parent application.

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

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

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

‘Unintentional delay’ is a crucial concept when seeking to restore the benefit of a provisional application. The MPEP requires:

“A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional.”

While the MPEP doesn’t provide a specific definition of ‘unintentional delay’, it generally means that the failure to meet the 12-month deadline was not deliberate. The USPTO may require additional information to determine if the delay was truly unintentional:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to be prepared to explain the circumstances that led to the delay if requested.

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

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

For more information on unintentional delay, visit: unintentional delay.

The time limits for filing an interim copy of a foreign application are specified in 37 CFR 1.55(j). According to the MPEP:

37 CFR 1.55(j) also provides that the interim copy of the foreign application and cover sheet must be filed within the later of sixteen months from the filing date of the prior foreign application or four months from the actual filing date of an application under 35 U.S.C. 111(a), within four months from the later of the date of commencement (37 CFR 1.491(a)) or the date of the initial submission under 35 U.S.C. 371 in an application entering the national stage under 35 U.S.C. 371, or with a petition under 37 CFR 1.55(e) or (f).

In summary, the interim copy must be filed within:

• 16 months from the filing date of the foreign application, or
• 4 months from the U.S. application filing date under 35 U.S.C. 111(a), or
• 4 months from the national stage commencement or initial submission date under 35 U.S.C. 371, or
• With a petition under 37 CFR 1.55(e) or (f)

To learn more:

• interim copy
• foreign application
• time limits
• filing deadlines
• patent procedure

According to MPEP 211, a petition to restore the benefit of a provisional application under 37 CFR 1.78(b) must include:

1. The reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted)
2. The petition fee set forth in 37 CFR 1.17(m)
3. A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional

The MPEP further states:

“The Director may require additional information where there is a question whether the delay was unintentional.”

It’s important to note that this petition must be filed in the subsequent application, not the provisional application itself.

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

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

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

To claim the benefit of a prior-filed application in a continuation-in-part (CIP), several requirements must be met as outlined in MPEP 201.08 and 35 U.S.C. 120:

• The CIP must be filed before the patenting, abandonment, or termination of proceedings on the prior application.
• The CIP must contain or be amended to contain a specific reference to the earlier filed application.
• For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
• The CIP must have at least one common inventor with the prior-filed application.

Additionally, the MPEP notes:

“The continuation-in-part application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c).”

It’s important to note that the USPTO does not typically scrutinize whether the earlier application fully supports the CIP’s claims unless this becomes relevant in a proceeding before the Office.

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

For more information on prior-filed application, visit: prior-filed application.

What are the requirements for citing NPL documents in an IDS?

When citing Non-Patent Literature (NPL) documents in an Information Disclosure Statement (IDS), specific requirements must be met to ensure proper identification and consideration. According to MPEP 609.04(a):

“Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.”

The MPEP further clarifies:

• For publications obtained from the Internet, the uniform resource locator (URL) of the Web page that is the source of the publication must be provided for the place of publication (e.g., “www.uspto.gov”).
• The date of publication to be provided is the date the document was posted on the Internet. If no publication date is known, the applicant must specify in the IDS that no publication date is known.

Additionally:

• For NPL not in the English language, a concise explanation of the relevance is required unless a complete translation is provided.
• If citing a document that is only available as a scanned copy, include “(scanned copy)” after the document’s title in the citation.

Providing complete and accurate information for NPL citations helps examiners efficiently locate and consider these references during the examination process.

To learn more:

• IDS
• NPL
• Non-Patent Literature
• citation format
• patent procedure

When an inventor is unable to provide a statement due to death, incapacitation, or unavailability, MPEP 151 offers alternative solutions:

“When an inventor applicant is deceased or legally incapacitated, or where it is shown to the satisfaction of this Office that he or she refuses to furnish a statement or cannot be reached after diligent efforts, declarations or statements under oath setting forth the information required by the statutes may be accepted from an officer or employee of the assignee who has sufficient knowledge of the facts.”

Additionally, for joint inventions, “Where it is shown that one of the joint inventors is deceased or unavailable, a statement by all of the other inventor(s) may be accepted.” It’s important to note that these alternatives should only be used when the inventor is truly unavailable, not merely for convenience.

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

The USPTO provides normal corrective procedures for assignment records, which are outlined in MPEP 323.01(a) through 323.01(c). These procedures are typically the first course of action for addressing issues in assignment records. The expungement process, as described in MPEP 323.01(d), is only considered when:

the normal corrective procedures outlined in MPEP § 323.01(a) through § 323.01(c) will not provide the petitioner with adequate relief

The normal corrective procedures may include:

• Filing a corrective document
• Requesting a correction to the cover sheet
• Submitting evidence to correct clerical errors

It’s important for patent applicants and attorneys to be familiar with these procedures and to exhaust these options before considering a petition for expungement.

To learn more:

• corrective procedures
• assignment records
• USPTO
• patent procedure

The filing requirements for an interim copy of a foreign application are specified in 37 CFR 1.55(j). They include:

• Filing a copy of the original foreign application clearly labeled as ‘Interim Copy’
• Including a separate cover sheet identifying the foreign application details
• Filing within specified time limits

The MPEP states:

’37 CFR 1.55(j) also provides that the interim copy of the foreign application must be filed together with a separate cover sheet identifying the foreign application by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, and stating that the copy filed in the Office is a true copy of the original application as filed in the foreign country (or intellectual property authority).’

It’s crucial to adhere to these requirements to ensure proper processing of the interim copy.

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

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

For more information on interim copy, visit: interim copy.

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

For delayed priority claims filed more than two years after the due date, additional explanation is required. The MPEP states:

“A person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. This requirement is in addition to the requirement to provide a statement that the entire delay was unintentional in 37 CFR 1.55(e).”

This additional explanation helps the USPTO determine if the delay was truly unintentional, as required for acceptance of the delayed claim. Applicants should be prepared to provide a detailed account of the circumstances leading to the delay.

To learn more:

• delayed priority claim
• two-year delay
• unintentional delay
• patent procedure

If a benefit claim is improper due to lack of copendency, the MPEP ¶ 2.11 outlines the required action:

Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

This means the applicant has two options:

1. Delete the benefit claim to the prior-filed application, or
2. Provide evidence to establish that copendency actually exists between the applications.

If the applicant cannot prove copendency, they must remove the benefit claim to avoid potential issues with the application’s validity or examination process.

For more information on copendency, visit: copendency.

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

When the required documents for a non-English provisional application are missing, the USPTO takes specific actions to notify the applicant. According to MPEP ¶ 2.38:

“Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required.”

The USPTO will issue an Office action informing the applicant of the missing documents and setting a time period for their submission. The applicant must then provide the missing translation and/or accuracy statement in the provisional application and confirm their filing in the present application. Failure to do so within the specified time period may result in the abandonment of the present application.

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

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