Do substitute and continuation-in-part applications require new assignments?
Yes, substitute and continuation-in-part (CIP) applications generally require new assignments. As stated in MPEP 306: In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied (effective) to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only…
Read MoreWhat is a ‘bypass’ application and how does it relate to international applications?
A ‘bypass’ application is: A regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) It claims benefit of an international application’s filing date without entering the national stage under 35 U.S.C. 371 It can be filed as a continuation, divisional, or continuation-in-part of the international application MPEP 211.01(c) explains: “Rather than submitting…
Read MoreHow does the assignment process differ for continuations-in-part compared to other application types?
The assignment process for continuations-in-part (CIPs) differs from other application types due to the potential inclusion of new subject matter. The MPEP § 306.01 explains: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new…
Read MoreHow are continuation-in-part (CIP) applications filed under former 37 CFR 1.62 treated after its deletion?
For continuation-in-part (CIP) applications, the MPEP states: “A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application… will be treated as an improper application.” This means that after the deletion of 37 CFR 1.62, CIP applications can no longer be filed using the former File Wrapper…
Read MoreWhat are the filing requirements for a continuation-in-part (CIP) application?
A continuation-in-part (CIP) application has specific filing requirements. Key points include: A CIP application can only be filed under 37 CFR 1.53(b). It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance). The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or…
Read MoreHow do continuation, divisional, and continuation-in-part applications differ?
Continuation, divisional, and continuation-in-part (CIP) applications are all types of continuing applications, but they have key differences: Continuation application: Discloses and claims only subject matter disclosed in the prior application. No new matter is added. Divisional application: Results from a restriction requirement in the parent application. Claims an independent and distinct invention carved out of…
Read MoreWhat is a continuation-in-part (CIP) application?
A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application. As stated in the MPEP: A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international…
Read MoreWhen is a new oath or declaration required for a continuation-in-part application?
When is a new oath or declaration required for a continuation-in-part application? For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05: ‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing…
Read MoreWhat are the requirements for a new oath or declaration in a continuation-in-part application?
A new oath or declaration is required for a continuation-in-part (CIP) application, and it must acknowledge the duty to disclose information material to patentability as defined in 37 CFR 1.56. MPEP 602.02 states: ‘A new oath or declaration is required in a continuation-in-part application, which includes subject matter not disclosed in the prior nonprovisional application.…
Read MoreHow are continuation-in-part (CIP) applications filed under former 37 CFR 1.62 treated?
Continuation-in-part (CIP) applications filed under former 37 CFR 1.62 on or after December 1, 1997, are treated as improper applications, regardless of the original application’s filing date. The MPEP specifically states: A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or…
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