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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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 time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:

“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”

It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.

To learn more:

• ex parte reexamination
• petition timeframe
• reexamination denial
• patent procedure

The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:

“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”

It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.

To learn more:

• ex parte reexamination
• petition timeframe
• reexamination denial
• 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.

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.

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.

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.

The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:

“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”

It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.

To learn more:

• ex parte reexamination
• petition timeframe
• reexamination denial
• 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.

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

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.

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-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.

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.

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.

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.

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.

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.

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

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.

The time limit for filing a petition after denial of reexamination is strictly defined. According to MPEP 2248:

“The requester may seek review by a petition to the Director under § 1.181 within one month of the mailing date of the examiner’s determination refusing ex parte reexamination.”

It’s important to note that this one-month period is strictly enforced. Any request for an extension of this time period “can only be entertained by filing a petition under 37 CFR 1.183 with appropriate fee to waive the time provisions of 37 CFR 1.515(c).” Missing this deadline without proper extension can result in the reexamination file being processed as concluded.

To learn more:

• ex parte reexamination
• petition timeframe
• reexamination denial
• 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.

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

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.

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-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.

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.

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.

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.

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.

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.

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