Can an examiner reject a claim that was allowed in a parent application?
Yes, an examiner can reject a claim that was allowed in a parent application. The MPEP 706.04 states: “Where the examiner determines that a claim that was previously allowed is unpatentable, the claim may be rejected in the next Office action, whether that action is a first or subsequent action on a continuation or divisional…
Read MoreWhat is the significance of a first Office action in rejecting previously allowed claims?
The significance of a first Office action in rejecting previously allowed claims lies in its timing and implications. According to MPEP 706.04: “A rejection should not be made in an application unless the claims therein are clearly anticipated or clearly unpatentable. A first Office action in any application, whether a new or substitute application, should…
Read MoreHow can applicants avoid the need for preliminary amendments in patent applications?
Applicants can avoid the need for preliminary amendments in patent applications by following the guidance provided in MPEP 608.04(b): Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application. This…
Read MoreWhat is a divisional application?
A divisional application is a later application for an independent or distinct invention, carved out of a nonprovisional application. It discloses and claims only subject matter disclosed in the earlier or parent application. As stated in MPEP 201.06: A later application for an independent or distinct invention, carved out of a nonprovisional application (including a…
Read MoreWhen is a new oath or declaration required in a patent application?
A new oath or declaration is required in a patent application under the following circumstances: When filing a continuation or divisional application When filing a continuation-in-part application To correct inventorship in an application When the original oath or declaration was defective According to MPEP 602.02: ‘A new oath or declaration is required in a continuation…
Read MoreWhen is a divisional application typically filed?
A divisional application is often filed in response to a restriction requirement made by the patent examiner. As stated in the MPEP: A divisional application is often filed as a result of a restriction requirement made by the examiner. When an examiner determines that an application contains multiple independent and distinct inventions, they may issue…
Read MoreWhat is a continuation or divisional application under 37 CFR 1.53(b)?
A continuation or divisional application is a type of continuing application filed under 37 CFR 1.53(b). According to the MPEP, An application filed under 37 CFR 1.53(b) may be an original or a reissue, a continuation, a divisional, a continuation-in-part, or a substitute. These applications are filed under 35 U.S.C. 111(a) and can be for…
Read MoreWhat are the requirements for filing a continuation or divisional application before September 16, 2012?
For continuation or divisional applications filed before September 16, 2012 under 37 CFR 1.53(b) (excluding continuation-in-part applications), applicants could file using a copy of the oath or declaration from the prior nonprovisional application. This is supported by the MPEP, which states: “A continuation or divisional application filed before September 16, 2012 under 37 CFR 1.53(b)…
Read MoreAre new oaths or declarations required for continuation or divisional applications?
For continuation or divisional applications filed before September 16, 2012, a new oath or declaration is generally not required if certain conditions are met. According to pre-AIA 37 CFR 1.63(d): A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that: The prior…
Read MoreHow were continuation or divisional applications handled when a petition under 37 CFR 1.48 was filed in the prior application?
When a petition under 37 CFR 1.48 to add an inventor was filed in a prior application, the continuation or divisional application could be handled in one of two ways: Filed with a copy of the executed declaration naming the correct inventive entity from the prior application. Filed with a newly executed declaration naming the…
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