Patent Law FAQ

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

However, there is an exception for applications filed on or after September 16, 2012: 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.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

However, there is an exception for applications filed on or after September 16, 2012: 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.

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

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

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

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

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

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

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

A ‘substitute’ application in patent law is essentially a duplicate of an earlier application that was abandoned before the filing of the later application. The MPEP provides the following definition:

A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application.

Key points about substitute applications:

• It does not obtain the benefit of the filing date of the prior application
• Current practice does not require applicants to insert references to the earlier application in the specification
• Applicants should call attention to the earlier application

The USPTO uses a specific form paragraph (2.07) to remind applicants of possible substitute status:

Applicant refers to this application as a “substitute” of Application No. [1], filed [2]. The term “substitute” is used to designate an application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. A “substitute” does not obtain the benefit of the filing date of the prior application.

To learn more:

• substitute application
• abandoned application
• duplicate filing

A substitute application is distinct from a continuing application in several ways. According to MPEP 201.02:

‘A substitute application is an application which is filed to take the place of a prior application and which is identified as such and discloses and claims only subject matter disclosed in the prior application.’

Key differences include:

• A substitute application replaces the prior application entirely, while a continuing application coexists with the prior application.
• Substitute applications only claim subject matter from the prior application, whereas continuing applications may introduce new matter (in the case of continuation-in-part applications).
• The filing of a substitute application typically results in the abandonment of the prior application, which is not necessarily the case with continuing applications.

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

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

Key points about substitute applications:

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

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

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

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

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

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

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

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

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

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

Key points about substitute applications:

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

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

A substitute application is distinct from a continuing application in several ways. According to MPEP 201.02:

‘A substitute application is an application which is filed to take the place of a prior application and which is identified as such and discloses and claims only subject matter disclosed in the prior application.’

Key differences include:

• A substitute application replaces the prior application entirely, while a continuing application coexists with the prior application.
• Substitute applications only claim subject matter from the prior application, whereas continuing applications may introduce new matter (in the case of continuation-in-part applications).
• The filing of a substitute application typically results in the abandonment of the prior application, which is not necessarily the case with continuing applications.

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

For more information on substitute application, visit: substitute 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.

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

However, there is an exception for applications filed on or after September 16, 2012: 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.

No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office. (MPEP 406)

No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office. (MPEP 406)

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

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

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

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

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

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

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

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

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

Key points about substitute applications:

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

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

A ‘substitute’ application in patent law is essentially a duplicate of an earlier application that was abandoned before the filing of the later application. The MPEP provides the following definition:

A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application.

Key points about substitute applications:

• It does not obtain the benefit of the filing date of the prior application
• Current practice does not require applicants to insert references to the earlier application in the specification
• Applicants should call attention to the earlier application

The USPTO uses a specific form paragraph (2.07) to remind applicants of possible substitute status:

Applicant refers to this application as a “substitute” of Application No. [1], filed [2]. The term “substitute” is used to designate an application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. A “substitute” does not obtain the benefit of the filing date of the prior application.

To learn more:

• substitute application
• abandoned application
• duplicate filing

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

A substitute application is distinct from a continuing application in several ways. According to MPEP 201.02:

‘A substitute application is an application which is filed to take the place of a prior application and which is identified as such and discloses and claims only subject matter disclosed in the prior application.’

Key differences include:

• A substitute application replaces the prior application entirely, while a continuing application coexists with the prior application.
• Substitute applications only claim subject matter from the prior application, whereas continuing applications may introduce new matter (in the case of continuation-in-part applications).
• The filing of a substitute application typically results in the abandonment of the prior application, which is not necessarily the case with continuing applications.

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

For more information on substitute application, visit: substitute 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.

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

However, there is an exception for applications filed on or after September 16, 2012: 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.

No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office. (MPEP 406)

The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied:

• Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application is applied (effective) to the division or continuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications.
• Substitute/CIP Applications: Prior assignments do not automatically apply. MPEP 306 states: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This difference is due to the nature of these application types. Division and continuation applications contain only subject matter from the original application, while substitute and CIP applications may contain new subject matter not present in the original application.

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

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

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

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

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

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

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

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

Key points about substitute applications:

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

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

A ‘substitute’ application in patent law is essentially a duplicate of an earlier application that was abandoned before the filing of the later application. The MPEP provides the following definition:

A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application.

Key points about substitute applications:

• It does not obtain the benefit of the filing date of the prior application
• Current practice does not require applicants to insert references to the earlier application in the specification
• Applicants should call attention to the earlier application

The USPTO uses a specific form paragraph (2.07) to remind applicants of possible substitute status:

Applicant refers to this application as a “substitute” of Application No. [1], filed [2]. The term “substitute” is used to designate an application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. A “substitute” does not obtain the benefit of the filing date of the prior application.

To learn more:

• substitute application
• abandoned application
• duplicate filing

The assignment rules for substitute and continuation-in-part applications differ from those for division and continuation applications. As per the MPEP, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

This means that for substitute or continuation-in-part applications, a new assignment must be recorded if they are to be issued to an assignee. However, there’s an exception: unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein.

For more detailed information, refer to MPEP § 307 and MPEP § 308.

For more information on continuation-in-part application, visit: continuation-in-part application.

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

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

A substitute application is distinct from a continuing application in several ways. According to MPEP 201.02:

‘A substitute application is an application which is filed to take the place of a prior application and which is identified as such and discloses and claims only subject matter disclosed in the prior application.’

Key differences include:

• A substitute application replaces the prior application entirely, while a continuing application coexists with the prior application.
• Substitute applications only claim subject matter from the prior application, whereas continuing applications may introduce new matter (in the case of continuation-in-part applications).
• The filing of a substitute application typically results in the abandonment of the prior application, which is not necessarily the case with continuing applications.

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

For more information on substitute application, visit: substitute 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.

Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications.

However, there is an exception for applications filed on or after September 16, 2012: 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.

No, a patent practitioner cannot appoint a substitute whose power would survive their own death. The MPEP clearly states: The patent practitioner may not appoint a ‘substitute’ and any attempt by the patent practitioner to appoint a ‘substitute’ patent practitioner whose power is intended to survive his or her own will not be recognized by the Office. (MPEP 406)