How 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 potential risks or drawbacks of filing a continuation-in-part application?
Filing a continuation-in-part (CIP) application can present several risks and potential drawbacks: 1. Different Effective Filing Dates: New matter in the CIP only gets the benefit of the CIP filing date, potentially exposing those claims to more prior art. 2. Reduced Patent Term: The patent term is measured from the filing date of the earliest…
Read MoreWhat are the requirements for claiming benefit of a prior-filed application in a continuation or continuation-in-part application?
To claim the benefit of a prior-filed application in a continuation or continuation-in-part application, several requirements must be met: 1. The application must be filed before the patenting, abandonment, or termination of proceedings on the prior application. 2. The application must contain or be amended to contain a specific reference to the prior application. For…
Read MoreWhen is a newly executed inventor’s oath or declaration required in a continuing application?
For continuing applications (continuation, divisional, continuation-in-part) filed on or after September 16, 2012 under 37 CFR 1.53(b), a newly executed inventor’s oath or declaration is generally not required if: An oath or declaration complying with 35 U.S.C. 115 and 37 CFR 1.63 (or substitute statement under 37 CFR 1.64) was filed in the earlier-filed application…
Read MoreCan the inventorship in a continuation or continuation-in-part application differ from the parent application?
Yes, the inventorship in a continuation or continuation-in-part (CIP) application can differ from the parent application, but there are specific requirements: 1. For continuation applications: The inventorship must include at least one inventor named in the prior-filed application. 2. For CIP applications: The inventorship can change more significantly due to the addition of new matter.…
Read MoreWhat is the effect of filing a continuation or continuation-in-part application on the parent application?
Filing a continuation or continuation-in-part (CIP) application does not automatically affect the status of the parent application. The parent application continues to be examined or remains patented (if already issued) independently of the child application. Key points to note: 1. The parent application remains pending unless expressly abandoned, allowed to go abandoned, or issued as…
Read MoreCan a design patent application be filed as a continuation or continuation-in-part?
Yes, design patent applications can be filed as continuations or continuations-in-part (CIPs), but with some specific considerations: 1. Continuations: A design application can be a continuation of a prior design application. 2. Continuations-in-part: A design application can be a CIP of a prior design application if it adds new matter. 3. Relationship to Utility Applications:…
Read MoreCan a continuation-in-part application be filed as a continued prosecution application (CPA)?
No, a continuation-in-part (CIP) application cannot be filed as a continued prosecution application (CPA). The MPEP explicitly states: “A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).” Continuation-in-part applications may only be filed under 37 CFR 1.53(b). This is an important distinction to remember when considering different types…
Read MoreWhat is the difference in assignment between division/continuation and substitute/CIP applications?
The key difference in assignment between division/continuation applications and substitute/continuation-in-part (CIP) applications lies in how prior assignments are applied: Division/Continuation Applications: Prior assignments recorded against the original application automatically apply to these applications. As stated in MPEP 306: In the case of a division or continuation application, a prior assignment recorded against the original application…
Read MoreWhen is a new assignment required for a continuation-in-part (CIP) application?
A new assignment is generally required for a continuation-in-part (CIP) application, with one exception. According to MPEP 306: Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee, unless the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee…
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