Patent Law FAQ

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. 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“If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned.”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 suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

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

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

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

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

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

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

For more information on USPTO, visit: USPTO.

Can a continuation-in-part application claim priority to a provisional application?

Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.

Key points to understand:

• Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
• New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
• One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
• Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.

Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.

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

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

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

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

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

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

For more information on USPTO, visit: USPTO.

Can a continuation-in-part application claim priority to a provisional application?

Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.

Key points to understand:

• Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
• New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
• One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
• Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.

Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.

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

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

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. 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 suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

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

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

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

To correct inventorship in a provisional application, you must follow the procedure outlined in 37 CFR 1.48(d). The requirements include:

• A request signed by a party set forth in 37 CFR 1.33(b) to correct the inventorship, identifying each inventor by their legal name
• The processing fee set forth in 37 CFR 1.17(q)

The MPEP advises, When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors.

To learn more:

• inventorship correction
• provisional application
• processing fee
• cover sheet

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. 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 suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

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

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

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

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

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

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

For more information on USPTO, visit: USPTO.

Can a continuation-in-part application claim priority to a provisional application?

Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.

Key points to understand:

• Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
• New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
• One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
• Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.

Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.

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

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

To correct inventorship in a provisional patent application, the following steps must be taken:

• Submit a request signed by a party set forth in 37 CFR 1.33(b)
• Identify each inventor by their legal name in the request
• Pay the processing fee set forth in 37 CFR 1.17(q)
• When adding an inventor, file a corrected application data sheet or a new cover sheet with the residence of all inventors

The MPEP states: 37 CFR 1.48(d) provides a procedure for adding or deleting or correcting or updating the name of an inventor in a provisional application. 37 CFR 1.48(d) requires that the submission include: (1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship that identifies each inventor by their legal name; and (2) the fee set forth in 37 CFR 1.17(q).

To learn more:

• provisional application
• inventorship correction
• processing fee
• cover sheet

No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:

Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.

The government license rights statement must be included within the specification itself, not just on the cover sheet.

To correct inventorship in a provisional application, you must follow the procedure outlined in 37 CFR 1.48(d). The requirements include:

• A request signed by a party set forth in 37 CFR 1.33(b) to correct the inventorship, identifying each inventor by their legal name
• The processing fee set forth in 37 CFR 1.17(q)

The MPEP advises, When an inventor is being added, applicants should also file a corrected application data sheet or a new cover sheet providing the residence of all inventors.

To learn more:

• inventorship correction
• provisional application
• processing fee
• cover sheet

The MPEP does not specify a fixed deadline for submitting the English translation of a non-English provisional application. However, it indicates that the translation must be provided within a time period set by the USPTO. 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 suggests that the USPTO will set a specific deadline in an Office action, and you must comply with this deadline to avoid abandonment of your application.

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

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

Divisional applications and provisional applications are distinct types of patent applications with different purposes and characteristics:

• Divisional Application: Claims subject matter from a prior non-provisional application that is independent and distinct from the original claims.
• Provisional Application: A temporary application that establishes a priority date but does not mature into an issued patent.

The MPEP explicitly states in MPEP ¶ 2.01:

“An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the prior application.”

This distinction is important because divisional applications claim the benefit under 35 U.S.C. 120, while provisional applications are claimed under 35 U.S.C. 119(e).

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

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

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

For more information on USPTO, visit: USPTO.

Can a continuation-in-part application claim priority to a provisional application?

Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.

Key points to understand:

• Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
• New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
• One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
• Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.

Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.

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

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

To correct inventorship in a provisional patent application, the following steps must be taken:

• Submit a request signed by a party set forth in 37 CFR 1.33(b)
• Identify each inventor by their legal name in the request
• Pay the processing fee set forth in 37 CFR 1.17(q)
• When adding an inventor, file a corrected application data sheet or a new cover sheet with the residence of all inventors

The MPEP states: 37 CFR 1.48(d) provides a procedure for adding or deleting or correcting or updating the name of an inventor in a provisional application. 37 CFR 1.48(d) requires that the submission include: (1) a request, signed by a party set forth in 37 CFR 1.33(b), to correct the inventorship that identifies each inventor by their legal name; and (2) the fee set forth in 37 CFR 1.17(q).

To learn more:

• provisional application
• inventorship correction
• processing fee
• cover sheet