How 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…
Read MoreWhat are the requirements for submitting an IDS in a continuation, divisional, or continuation-in-part application?
For continuation, divisional, or continuation-in-part applications filed under 37 CFR 1.53(b), the requirements for submitting an Information Disclosure Statement (IDS) depend on whether the information was previously considered in the parent application. The MPEP provides the following guidance: If the information was considered in the parent application, it need not be resubmitted unless the applicant…
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