What is the difference between an ‘allowed’ application and an application ‘in issue’?
According to the MPEP, there is no substantial difference between an ‘allowed’ application and an application ‘in issue’. The MPEP uses these terms interchangeably: “An ‘allowed’ nonprovisional application or an application ‘in issue’ is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been…
Read MoreDoes filing an amendment change the status of a ‘new’ application?
No, filing an amendment does not change the status of a ‘new’ application. The MPEP 203.01 explicitly states: An amendment filed prior to the first Office Action does not alter the status of a ‘new’ application. This means that even if you submit changes or corrections to your application before receiving any feedback from the…
Read MoreWhat information must be included in the application data sheet for a foreign priority claim?
When claiming foreign priority, the application data sheet (ADS) must include specific information to meet the requirements of 37 CFR 1.55(i)(2). The MPEP states that the claim for priority must be presented in an ADS: identifying the foreign application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day,…
Read MoreWhat types of applications can claim benefit under 35 U.S.C. 386(c)?
According to the MPEP, specific types of applications can claim benefit under 35 U.S.C. 386(c). The relevant passage states: 37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13,…
Read MoreAre there any applications still processed under former 37 CFR 1.62?
Yes, certain applications are still processed under former 37 CFR 1.62. Specifically, all continuation, divisional, and continuation-in-part (CIP) applications filed under former 37 CFR 1.62 prior to December 1, 1997, continue to be processed and examined under the procedures set forth in that regulation. The MPEP clarifies this point: All continuation, divisional and CIP applications…
Read MoreWhat are the inventorship requirements for claiming foreign priority?
The inventorship requirements for claiming foreign priority are specific and important. Here are the key points: The U.S. and foreign applications must name the same inventor or have at least one joint inventor in common. Priority rights do not exist if the foreign and U.S. applications have completely different sole inventors. Joint inventors can each…
Read MoreWhat happens if a certified copy of the priority document is not filed within the time limit in a U.S. national stage application?
If a certified copy of the priority document is not filed within the time limit in a U.S. national stage application, the following consequences may occur: The right to priority may be lost if the certified copy is not filed within the time period set in 37 CFR 1.55. However, if the certified copy is…
Read MoreWhat is the legal basis for claiming the benefit of an international design application designating the United States?
The legal basis for claiming the benefit of an international design application designating the United States is found in 35 U.S.C. 386(c). This statute allows a nonprovisional application to claim the benefit of a prior international design application, subject to the conditions and requirements of 35 U.S.C. 120. As stated in the MPEP: Pursuant to…
Read MoreHow do I mark changes in a corrected ADS for benefit claims?
How do I mark changes in a corrected Application Data Sheet (ADS) for benefit claims? When submitting a corrected Application Data Sheet (ADS) to add or correct a benefit claim, it’s crucial to properly mark the changes. According to MPEP 211.02(a): The corrected ADS must identify the information that is being changed with underlining for…
Read MoreHow should priority papers be marked to ensure proper processing?
To ensure proper processing of priority papers, the MPEP recommends marking them with specific information. According to MPEP 215.03: It is suggested that a notation of the application number of the corresponding U.S. application be placed on the priority papers when such papers are not submitted via a priority document exchange program. Such notation should…
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