How does a restriction requirement lead to a divisional application?
How does a restriction requirement lead to a divisional application? A restriction requirement often leads to the filing of a divisional application. This process occurs as follows: An examiner issues a restriction requirement when they believe the original application contains claims to two or more independent or distinct inventions. The applicant must then elect one…
Read MoreWhat is the relationship between a divisional application and a continuation application?
What is the relationship between a divisional application and a continuation application? Divisional applications and continuation applications are both types of continuing applications, but they serve different purposes. The MPEP 201.06 provides insight into the nature of divisional applications: “A later application for an independent or distinct invention, carved out of a pending application and…
Read MoreCan a divisional application be filed after the parent application is abandoned?
Can a divisional application be filed after the parent application is abandoned? Yes, a divisional application can be filed after the parent application is abandoned, as long as certain conditions are met. The MPEP 201.06 states: “A divisional application may be filed after abandonment of the parent application, provided the parent application is not relied…
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 MoreAre there any applications still processed under former 37 CFR 1.62?
Yes, certain applications are still processed under former 37 CFR 1.62. Specifically, all continuation, divisional, and continuation-in-part (CIP) applications filed under former 37 CFR 1.62 prior to December 1, 1997, continue to be processed and examined under the procedures set forth in that regulation. The MPEP clarifies this point: All continuation, divisional and CIP applications…
Read MoreHow were changes in inventorship handled in continuation or divisional applications filed under 37 CFR 1.53(b)?
Changes in inventorship for continuation or divisional applications filed under 37 CFR 1.53(b) could be handled in two ways: Filing with a copy of an oath or declaration from a prior application and a statement requesting the deletion of non-inventors. Filing with a newly executed oath or declaration naming the correct inventive entity. The MPEP…
Read MoreWhat 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…
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