What 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…
Read MoreCan a continuation application add new matter to the original disclosure?
Can a continuation application add new matter to the original disclosure? No, a continuation application cannot add new matter to the original disclosure. This is a fundamental characteristic 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…
Read MoreHow can an applicant file a continuation or divisional application using a copy of an oath or declaration from a prior application?
For applications filed on or after September 16, 2012, an applicant can file a continuation or divisional application using a copy of an oath or declaration from a prior application if: The oath or declaration complies with 35 U.S.C. 115 as revised effective September 16, 2012 It was executed by or with respect to the…
Read MoreWhat is the effect of incorporating by reference a prior application in a continuation or divisional application?
Incorporating by reference a prior application in a continuation or divisional application can provide important benefits: It allows the applicant to amend the continuing application to include subject matter from the prior application without the need for a petition, provided the continuing application is entitled to a filing date. For applications filed on or after…
Read MoreWhat happens to affidavits or declarations from a prior application when filing a continuation or divisional application?
Affidavits or declarations from a prior application do not automatically become part of a continuation or divisional application filed under 37 CFR 1.53(b). If an applicant wants to rely on these documents, they must take specific actions: Make remarks of record in the new application referring to the affidavit or declaration. Include a copy of…
Read MoreHow does filing a continuation or divisional application affect the status of the prior application?
Filing a continuation or divisional application under 37 CFR 1.53(b) does not automatically abandon the prior application. The status of the prior application depends on the actions taken by the applicant: The prior application remains pending unless expressly abandoned. To expressly abandon the prior application, a separate paper must be filed and signed in accordance…
Read MoreWhat is the effect of a preliminary amendment filed with a continuation or divisional application?
A preliminary amendment filed with a continuation or divisional application can have significant effects: If present on the filing date, it is considered part of the original disclosure. It must comply with the requirements of 37 CFR 1.121 for amendments. The Office may require a substitute specification for extensive preliminary amendments. The application will be…
Read MoreHow does the micro entity status carry over to continuation or divisional applications?
Micro entity status does not automatically carry over to continuation or divisional applications. A new certification is required for each new application: A new assertion of entitlement to micro entity status is required for any continuation, divisional, or continuation-in-part application. This applies even if micro entity status was properly claimed in the parent application. The…
Read MoreWhat are the requirements for filing a CPA in a design application?
To file a Continued Prosecution Application (CPA) in a design application, the following requirements must be met: The application must be a design application. The prior application must be a nonprovisional application. The application must be filed before the earliest of: Payment of the issue fee on the prior application, unless a petition under §…
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