What is the purpose of MPEP ¶ 2.33 regarding new inventors in CPAs?
The purpose of MPEP ¶ 2.33 is to provide guidance to patent examiners when they encounter a situation where a new inventor is identified in a Continued Prosecution Application (CPA) for design applications. It states: Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were…
Read MoreHow does a CPA differ from other types of continuing applications?
A Continued Prosecution Application (CPA) differs from other types of continuing applications in several ways: CPAs are only available for design applications, not utility applications. Filing a CPA automatically establishes the necessary reference to the prior application under 35 U.S.C. 120, without needing to amend the specification. CPAs are processed differently from other continuing applications,…
Read MoreHow do I claim the benefit of a prior-filed application in a continuation 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…
Read MoreCan a continuation application include new matter?
No, a continuation application cannot include new matter. As stated in MPEP 201.07: The disclosure presented in the continuation must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application. This means that the continuation application must be based entirely on the disclosure of the prior-filed…
Read MoreWhen can I file a continuation application?
A continuation application can be filed at various times during the patent application process. According to MPEP 201.07: 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 MoreWhat is the difference between a continuation application and a provisional application?
Continuation applications and provisional applications are distinct types of patent applications with different purposes and requirements. A key difference is noted in MPEP 201.07: An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a ‘divisional’ of the provisional application. This guidance also applies to continuation applications. The…
Read MoreWhat is the significance of the term ‘copending’ in continuation applications?
What is the significance of the term ‘copending’ in continuation applications? The term ‘copending’ is crucial in the context of continuation applications. According to MPEP 201.07: A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United…
Read MoreWhat information should be included when citing a prior application in MPEP ¶ 2.05?
When citing a prior application using MPEP ¶ 2.05, specific information must be included. The MPEP instructs examiners: “In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.” This means that when referencing a prior application, the examiner should provide: The application number,…
Read MoreWhat are the requirements for claiming benefit of a prior-filed application in a continuation-in-part?
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…
Read MoreCan a sole inventor file a continuation-in-part based on a joint inventor application?
Yes, a sole inventor can file a continuation-in-part (CIP) application based on an earlier application with joint inventors, provided certain conditions are met. The MPEP 201.08 states: “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…
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