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.

Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.

Key points to note:

1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.

2. Filing a continuation or CIP does not automatically abandon the parent application.

3. Prosecution can continue in both the parent and child applications simultaneously.

The MPEP states: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements:

1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application.

2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.

The MPEP states for continuation applications: “The inventorship in the continuation application must include at least one inventor named in the prior-filed application.”

For CIP applications, the MPEP notes: “A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”

Any changes in inventorship must be properly documented and may require a request under 37 CFR 1.48.

Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:

1. Continuations: A design application can be a continuation of a prior design application.

2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.

3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.

The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”

It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.

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

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

Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.

Key points to note:

1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.

2. Filing a continuation or CIP does not automatically abandon the parent application.

3. Prosecution can continue in both the parent and child applications simultaneously.

The MPEP states: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements:

1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application.

2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.

The MPEP states for continuation applications: “The inventorship in the continuation application must include at least one inventor named in the prior-filed application.”

For CIP applications, the MPEP notes: “A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”

Any changes in inventorship must be properly documented and may require a request under 37 CFR 1.48.

Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:

1. Continuations: A design application can be a continuation of a prior design application.

2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.

3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.

The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”

It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.

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

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

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.

Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.

Key points to note:

1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.

2. Filing a continuation or CIP does not automatically abandon the parent application.

3. Prosecution can continue in both the parent and child applications simultaneously.

The MPEP states: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements:

1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application.

2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.

The MPEP states for continuation applications: “The inventorship in the continuation application must include at least one inventor named in the prior-filed application.”

For CIP applications, the MPEP notes: “A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”

Any changes in inventorship must be properly documented and may require a request under 37 CFR 1.48.

Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:

1. Continuations: A design application can be a continuation of a prior design application.

2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.

3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.

The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”

It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.

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

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

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.

Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application.

Key points to note:

1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as a patent.

2. Filing a continuation or CIP does not automatically abandon the parent application.

3. Prosecution can continue in both the parent and child applications simultaneously.

The MPEP states: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

However, applicants should be aware of potential double patenting issues that may arise between the parent and child applications.

Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks:

1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art.

2. Reduced Patent Term: The patent term is measured from the filing date of the earliest application to which the CIP claims priority, potentially reducing the overall protection period for new matter.

3. Double Patenting Issues: Claims in the CIP may be subject to obviousness-type double patenting rejections based on the claims of the parent application.

4. Complexity in Litigation: The varying effective filing dates can complicate patent litigation, particularly when determining relevant prior art.

5. Difficulty in Claiming Priority: International applications may have difficulty claiming priority to a CIP due to the new matter.

While not explicitly stated in the provided MPEP section, these are important considerations derived from patent law and practice. The MPEP does note: “The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.”

Applicants should carefully consider these factors when deciding whether to file a CIP or a new application.

Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements:

1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application.

2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.

The MPEP states for continuation applications: “The inventorship in the continuation application must include at least one inventor named in the prior-filed application.”

For CIP applications, the MPEP notes: “A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.”

Any changes in inventorship must be properly documented and may require a request under 37 CFR 1.48.

Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations:

1. Continuations: A design application can be a continuation of a prior design application.

2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter.

3. Relationship to Utility Applications: A design application can also be a continuation or CIP of a utility application, provided the drawings in the utility application sufficiently disclose the claimed design.

The MPEP states: “A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d).”

It’s important to note that while not explicitly stated for continuations and CIPs, the same principle applies – the earlier application must sufficiently disclose the claimed design.

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

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