How does an examiner inform an applicant about a non-compliant CPA request?
When a Continued Prosecution Application (CPA) request for a design patent application is not compliant with the regulations, the examiner informs the applicant using a specific form paragraph. The MPEP provides guidance on this: Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance…
Read MoreHow can I delete a named inventor in a Continued Prosecution Application (CPA) for design applications?
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…
Read MoreWhat is the role of an examiner in processing a request to delete a named inventor in a CPA?
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:…
Read MoreWhat happens if a new inventor is identified in a CPA for a design application?
If a new inventor is identified in a Continued Prosecution Application (CPA) for a design application, specific steps must be taken to properly add them to the application. MPEP ¶ 2.33 states: “It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2],…
Read MoreHow is inventorship handled in a Continued Prosecution Application (CPA)?
Inventorship in a Continued Prosecution Application (CPA) is generally maintained from the prior application. However, if there’s a need to add or change inventors, specific procedures must be followed. According to MPEP ¶ 2.33: “Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inventorship…
Read MoreWhat are the consequences of not filing a 37 CFR 1.48 request when adding a new inventor to a CPA?
Failing to file a 37 CFR 1.48 request when adding a new inventor to a Continued Prosecution Application (CPA) can have significant consequences. MPEP ¶ 2.33 states: “Otherwise, the inventorship in the CPA shall be the same as in the prior application.” This means that without a proper 37 CFR 1.48 request: The new inventor…
Read MoreWhat is the specific reference required by 35 U.S.C. 120 for a CPA?
For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7). According to MPEP ¶ 2.34: “As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every…
Read MoreHow does a patent examiner respond to an amendment referencing a prior application in a CPA?
When a patent examiner encounters an amendment attempting to reference a prior application in a Continued Prosecution Application (CPA), they should not enter the amendment and inform the applicant of this decision. According to MPEP ¶ 2.34, examiners should use the following language: “The amendment filed [1] requesting that the specification be amended to refer…
Read MoreWhen should an inventor consider filing a continuation application?
An inventor might consider filing a continuation application in several scenarios. The MPEP 201.07 provides guidance on timing: At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a…
Read MoreHow do you claim the benefit of a prior application in a continuation?
Claiming the benefit of a prior application in a continuation is a crucial step that must be done correctly. The MPEP 201.07 provides specific guidance: If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§1.76(b)(5)). The reference also must identify the relationship…
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