Are applicants notified when their parent application is abandoned due to a CPA filing?
No, applicants are not separately notified when their parent application is abandoned due to the filing of a Continued Prosecution Application (CPA). This is implied in the examiner’s note in MPEP ¶ 2.35: This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally…
Read MoreWhat is the difference between a CPA in utility/plant applications and design applications?
There is a significant difference in how Continued Prosecution Applications (CPAs) are treated for utility/plant applications versus design applications. According to the examiner’s note in MPEP ¶ 2.35: If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this…
Read MoreHow can I delete a named inventor in a Continued Prosecution Application (CPA) for design applications?
To delete a named inventor in a Continued Prosecution Application (CPA) for design applications, you must submit a statement requesting the deletion along with the CPA filing. The MPEP states: “Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on…
Read MoreWhat is the role of an examiner in processing a request to delete a named inventor in a CPA?
The examiner plays a crucial role in processing requests to delete a named inventor in a Continued Prosecution Application (CPA) for design applications. According to MPEP ¶ 2.32, the examiner is responsible for acknowledging the receipt of the request and confirming that the inventorship has been corrected. The MPEP provides the following guidance for examiners:…
Read MoreWhat happens if a new inventor is identified in a CPA for a design application?
If a new inventor is identified in a Continued Prosecution Application (CPA) for a design application, specific steps must be taken to properly add them to the application. MPEP ¶ 2.33 states: “It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2],…
Read MoreHow is inventorship handled in a Continued Prosecution Application (CPA)?
Inventorship in a Continued Prosecution Application (CPA) is generally maintained from the prior application. However, if there’s a need to add or change inventors, specific procedures must be followed. According to MPEP ¶ 2.33: “Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inventorship…
Read MoreWhat are the consequences of not filing a 37 CFR 1.48 request when adding a new inventor to a CPA?
Failing to file a 37 CFR 1.48 request when adding a new inventor to a Continued Prosecution Application (CPA) can have significant consequences. MPEP ¶ 2.33 states: “Otherwise, the inventorship in the CPA shall be the same as in the prior application.” This means that without a proper 37 CFR 1.48 request: The new inventor…
Read MoreWhat is the specific reference required by 35 U.S.C. 120 for a CPA?
For a Continued Prosecution Application (CPA), the specific reference required by 35 U.S.C. 120 is the CPA request itself. This is explicitly stated in 37 CFR 1.53(d)(7). According to MPEP ¶ 2.34: “As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every…
Read MoreHow does a patent examiner respond to an amendment referencing a prior application in a CPA?
When a patent examiner encounters an amendment attempting to reference a prior application in a Continued Prosecution Application (CPA), they should not enter the amendment and inform the applicant of this decision. According to MPEP ¶ 2.34, examiners should use the following language: “The amendment filed [1] requesting that the specification be amended to refer…
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…
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