What are the key differences between a CPA and a regular continuation application?
Continued Prosecution Applications (CPAs) have several key differences from regular continuation applications filed under 37 CFR 1.53(b): CPAs are only available for design applications, not utility or plant applications CPAs use the same application number as the prior application CPAs do not require a new specification or drawings to be filed The filing requirements for…
Read MoreWhat happens if an improper CPA is filed for a utility or plant application?
Continued Prosecution Applications (CPAs) are only available for design patent applications. If an improper CPA is filed for a utility or plant application, the following occurs: For applications filed on or after June 8, 1995, the improper CPA is treated as a Request for Continued Examination (RCE) under 37 CFR 1.114 If the requirements for…
Read MoreWhat happens if new matter is introduced in a divisional application?
Introducing new matter in a divisional application is not allowed and can have serious consequences. According to MPEP 201.06: “A divisional application is a later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.” This means that…
Read MoreWhat should a patent examiner do if an application appears to be a divisional but lacks a proper benefit claim?
When a patent examiner encounters an application that appears to be a divisional but lacks a proper benefit claim, they should follow the guidance provided in MPEP ¶ 2.01. The MPEP states: “This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not…
Read MoreWhat is a continuation application under 37 CFR 1.53(b)?
A continuation application under 37 CFR 1.53(b) is a type of continuing application that discloses and claims only subject matter disclosed in a prior nonprovisional application. It is filed under 35 U.S.C. 111(a) and may be for a utility, design, or plant patent. According to the MPEP: A continuation or divisional application may be filed…
Read MoreWhat happens to continuation-in-part (CIP) applications filed under former 37 CFR 1.62 after December 1, 1997?
Continuation-in-part (CIP) applications filed under former 37 CFR 1.62 on or after December 1, 1997, are treated as improper applications. This also applies to continuation or divisional applications of applications filed before June 8, 1995. The MPEP states: “A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part…
Read MoreHow does filing a continuation application affect the prior application?
Filing a continuation application under 37 CFR 1.53(b) does not automatically abandon the prior application. The MPEP clearly states: Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application. However, applicants have several options regarding the status of the prior application: Express Abandonment: If desired, the…
Read MoreHow does incorporation by reference work in continuation applications?
Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic: For applications filed on or after September 21, 2004: An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that…
Read MoreHow are preliminary amendments handled in continuation applications?
Preliminary amendments in continuation applications are subject to specific rules and considerations. The MPEP provides guidance on this topic: Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure. This means that preliminary amendments submitted with the application are treated as…
Read MoreHow does small entity status carry over to continuation applications?
Small entity status does not automatically carry over from a parent application to a continuation application. The MPEP provides clear guidance on this matter: If small entity status has been established in a parent application and is still proper and desired in a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.53(b), a new…
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