What is the proper procedure for correcting inventorship in a CPA?
The proper procedure for correcting inventorship in a Continued Prosecution Application (CPA) is to file a request under 37 CFR 1.48. This applies whether you’re adding or removing an inventor. The MPEP guidance states: ‘Any request to add an inventor must be in the form of a request under 37 CFR 1.48.’ This formal request…
Read MoreCan I amend the specification of a CPA to reference the prior application?
No, you cannot amend the specification of a Continued Prosecution Application (CPA) to reference the prior application. The USPTO explicitly states that such amendments are not necessary and will not be entered. As per MPEP ¶ 2.34: “Thus, there is no need to amend the first sentence(s) of the specification to refer back to the…
Read MoreWhat types of applications can be filed as a CPA?
Continued Prosecution Applications (CPAs) are specifically for design patent applications. The MPEP ¶ 2.34 refers to CPAs in the context of design applications. The MPEP ¶ 2.34 states: “In bracket 2, insert either –continuation– or –divisional–.” This indicates that a CPA can be filed as either a continuation or a divisional of a prior design…
Read MoreHow does a CPA reference the prior application?
A Continued Prosecution Application (CPA) automatically references the prior application without requiring any specific amendment to the specification. 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 application assigned the application number identified in such request.”…
Read MoreWhat happens if I submit an amendment to reference the prior application in a CPA?
If you submit an amendment to reference the prior application in a Continued Prosecution Application (CPA), it will not be entered by the USPTO. The MPEP ¶ 2.34 clearly states: “The amendment filed [1] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [2] application of Application…
Read MoreCan a continuation application be filed after the parent application is granted or abandoned?
Yes, a continuation application can be filed after the parent application is granted or abandoned, but there are timing restrictions. The MPEP states: 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…
Read MoreHow does a continuation application differ from a continuation-in-part (CIP) application?
While both continuation and continuation-in-part (CIP) applications are types of continuing applications, they have a key difference in terms of their disclosure. According to the MPEP: 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. The main differences…
Read MoreWhat happens to the parent application when a continuation is filed?
What happens to the parent application when a continuation is filed? Filing a continuation application does not automatically affect the status of the parent application. As stated in MPEP 201.07: ‘A continuation application may be filed under 35 U.S.C. 111(a) or 363 while the prior application is pending, or after the prosecution and patent term…
Read MoreWhat is the purpose of filing a continuation application?
Filing a continuation application serves several important purposes in patent prosecution. The MPEP indicates: 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 new set of claims…
Read MoreCan a continuation application claim the benefit of multiple parent applications?
Yes, a continuation application can claim the benefit of multiple parent applications, provided certain conditions are met. According to MPEP 201.07: ‘A continuation application may be filed under 35 U.S.C. 111(a) or 111(b) or 365(c) or filed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.53(b) or 1.53(d) as a continuation of…
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