What were the requirements for continuation or divisional applications filed under 37 CFR 1.53(d) with changes in inventorship?
For continuation or divisional applications filed under 37 CFR 1.53(d) (continued prosecution design applications) with changes in inventorship, the requirements were as follows: “If an inventor named in a prior application is not an inventor in a continuation or divisional application filed under 37 CFR 1.53(d) (continued prosecution design application), the request for filing the…
Read MoreWhat steps were taken if an inventor’s signature was missing from a continuation or divisional application?
If an inventor’s signature was missing from a continuation or divisional application, the Office of Patent Application Processing (OPAP) would typically take the following steps: Send a “Notice to File Missing Parts” requiring the signature of the nonsigning inventor. If a copy of the decision according status under pre-AIA 37 CFR 1.47 was not included…
Read MoreCan new matter be added to a divisional application?
No, new matter cannot be added to a divisional application. The divisional application must only contain subject matter disclosed in the parent application. The MPEP clearly states: Thus the disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.…
Read MoreCan a copy of the original oath or declaration be used in a continuation or divisional application?
No, a copy of the original oath or declaration cannot be used in a continuation or divisional application filed under 37 CFR 1.53(b). A new oath or declaration must be filed. According to MPEP 602.02: ‘A new oath or declaration in compliance with 37 CFR 1.63 or 1.67 is required in a continuation or divisional…
Read MoreHow were applications with pre-AIA 37 CFR 1.47 status handled in continuation or divisional filings?
Applications with pre-AIA 37 CFR 1.47 status were given special consideration in continuation or divisional filings. The MPEP states: “A continuation or divisional application of a prior application accorded status under pre-AIA 37 CFR 1.47 will be accorded status under pre-AIA 37 CFR 1.47 if a copy of the decision according pre-AIA 37 CFR 1.47…
Read MoreCan I file a priority claim in a continuation or divisional application?
Yes, you can file a priority claim in a continuation or divisional application, but there are specific rules you must follow. According to MPEP 214.01: ‘In the case of a continuation or divisional application filed under 35 U.S.C. 111(a), the claim for priority must be made during the pendency of the application and within the…
Read MoreHow does restriction affect joint inventorship in patent applications?
Restriction requirements can affect joint inventorship in patent applications. The MPEP explains: If an application by joint inventors includes more than one independent and distinct invention, restriction may be required with the possible result of a necessity to change the inventorship named in the application if the elected invention was not the invention of all…
Read MoreHow does a terminal disclaimer affect a divisional application?
A terminal disclaimer filed in a parent application can affect a divisional application in specific ways. According to MPEP 201.06: ‘The divisional application must be directed to subject matter described and claimed in the prior nonprovisional application.’ This means that if a terminal disclaimer was filed in the parent application, it may impact the divisional…
Read MoreWhat happens to terminal disclaimers in a divisional application?
Terminal disclaimers filed in a parent application do not automatically carry over to a divisional application. The MPEP 201.06 states: ‘A terminal disclaimer filed to obviate a nonstatutory double patenting rejection in a parent application does not carry over to a divisional application. The applicant filing the divisional application must determine whether a new terminal…
Read MoreHow are continuation or divisional applications filed under former 37 CFR 1.62 treated now?
The treatment of continuation or divisional applications filed under former 37 CFR 1.62 depends on the filing date of the original application: For applications filed on or after June 8, 1995: Requests filed on or after December 1, 1997, are treated as requests for continued examination (RCE) under 37 CFR 1.114. For applications filed before…
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