What should patent examiners consider when determining if an application is a continuation?
Patent examiners should consider several factors when determining if an application may be a continuation. The MPEP ¶ 2.05 provides guidance: “This form paragraph should only be used if it appears that the application may be a continuation, but a benefit claim has not been properly established.” Examiners should look for: Disclosure of only subject…
Read MoreHow should the specific reference to a prior-filed application be made?
The method for making a specific reference to a prior-filed application depends on when the application was filed: For applications filed before September 16, 2012: The specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76.…
Read MoreWhat happens if a continuation or divisional application contains new matter?
If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter. As stated in MPEP ¶ 2.10.01: “Applicant is required to…
Read MoreHow does an examiner determine if new matter is present in a continuation or divisional application?
Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant. The MPEP ¶ 2.10.01 instructs examiners: “In bracket 1, provide an example of the matter not…
Read MoreHow does the presence of new matter affect the filing date of a continuation or divisional application?
The presence of new matter in a continuation or divisional application can significantly affect its filing date. If new matter is found, the application may lose the benefit of the earlier filing date for the new subject matter. According to MPEP ¶ 2.10.01: “Applicant is required to delete the benefit claim or change the relationship…
Read MoreWhat are the requirements for claiming domestic benefit in a patent application?
What are the requirements for claiming domestic benefit in a patent application? Claiming domestic benefit in a patent application allows an applicant to rely on the filing date of an earlier-filed US application. The MPEP 216 outlines the requirements for claiming domestic benefit, which are based on 35 U.S.C. 120. The key requirements include: The…
Read MoreWhat is the procedure for filing a continuation or divisional application without a new oath or declaration?
What is the procedure for filing a continuation or divisional application without a new oath or declaration? When filing a continuation or divisional application, a new oath or declaration is not always required. According to MPEP 602.05, the following procedure can be followed: File a copy of the oath or declaration from the prior application.…
Read MoreWhat is the filing date for a divisional or continuation application under 37 CFR 1.53(b)?
According to MPEP 201.06(c), the filing date for a divisional or continuation application filed under 37 CFR 1.53(b) is determined as follows: ‘The filing date of an application filed under 37 CFR 1.53(b) is the date on which a specification, with or without claims, is received in the Office.’ This means that the filing date…
Read MoreWhat are the requirements for filing a divisional or continuation application without an executed oath or declaration?
The MPEP 201.06(c) outlines the requirements for filing a divisional or continuation application without an executed oath or declaration: ’37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional…
Read MoreHow does the USPTO assign application numbers to continuation or divisional applications?
How does the USPTO assign application numbers to continuation or divisional applications? The USPTO assigns application numbers to continuation or divisional applications in the same manner as new applications. According to MPEP 503: A continuation or divisional application (including a continued prosecution application) filed under 37 CFR 1.53(b) is assigned a new application number. This…
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