How 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…
Read MoreHow does a CIP application differ from a regular continuation application?
A continuation-in-part (CIP) application differs from a regular continuation application in that it adds new disclosure not present in the prior application. While both types of applications repeat substantial portions of a prior application, only a CIP introduces new subject matter. The MPEP states: This application repeats a substantial portion of prior Application No.[1], filed[2],…
Read MoreHow does new matter affect continuing applications?
The treatment of new matter varies depending on the type of continuing application: Continuation and Divisional Applications: Must not contain any new matter. The disclosure must be the same as the prior application. Continuation-in-Part (CIP) Applications: Can include new matter not disclosed in the parent application. Continued Prosecution Applications (CPAs): Cannot contain new matter. For…
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 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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