What 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…
Read MoreCan new matter be added to a continuation application?
Can new matter be added to a continuation application? No, new matter cannot be added to a continuation application. A continuation application must disclose and claim only subject matter disclosed in the prior application. As stated in MPEP 201.07: “The disclosure presented in the continuation must not include any subject matter which would constitute new…
Read MoreWhat is the filing deadline for a continuation application?
What is the filing deadline for a continuation application? A continuation application must be filed before the patenting, abandonment, or termination of proceedings on the prior application. The MPEP 201.07 states: “To be entitled to the benefit of the filing date of an earlier-filed application, the later-filed application must be an application for a patent…
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