How are continuation or divisional applications handled under pre-AIA 37 CFR 1.47?
For continuation or divisional applications filed under 37 CFR 1.53(b) of an application previously accorded status under pre-AIA 37 CFR 1.47, the process is simplified. The MPEP states: In a continuation or divisional application filed under 37 CFR 1.53(b) of an application accorded status under pre-AIA 37 CFR 1.47, if a copy of a declaration…
Read MoreHow are continuation or divisional applications filed after December 1, 1997 treated?
According to the MPEP, A continuation or divisional application filed under 37 CFR 1.60 on or after December 1, 1997, will automatically be treated as an application filed under 37 CFR 1.53(b). This means that any continuation or divisional application filed after this date is processed under the new regulations, specifically 37 CFR 1.53(b), regardless…
Read MoreWhat is the difference between a continuation and a divisional application?
A continuation application and a divisional application are both types of continuing applications, but they serve different purposes: Continuation application: Used to pursue additional claims to an invention disclosed in a prior application. It contains the same disclosure as the parent application. Divisional application: Used to pursue claims to an invention that was disclosed but…
Read MoreHow should the correspondence address be handled in continuation or divisional applications?
Special attention is required when dealing with the correspondence address in continuation or divisional applications. According to MPEP 601.03(b): “Special care should be taken in continuation or divisional applications to ensure that any change of correspondence address in a prior application is reflected in the continuation or divisional application.” The MPEP further explains that when…
Read MoreHow does the disclosure requirement differ for provisional and nonprovisional applications when claiming benefit?
The disclosure requirements for claiming the benefit of provisional and nonprovisional applications differ in some aspects: Provisional Applications (35 U.S.C. 119(e)): For a nonprovisional application to claim the benefit of a provisional application: The written description and drawings (if any) of the provisional application must adequately support and enable the subject matter claimed in the…
Read MoreHow does a divisional application differ from other continuing applications?
How does a divisional application differ from other continuing applications? A divisional application is a unique type of continuing application that focuses on a distinct invention separated from a parent application. According to the MPEP: A divisional application is one filed for an invention which has been disclosed and claimed, but not allowed, in a…
Read MoreWhat is the filing date of a divisional application?
What is the filing date of a divisional application? A divisional application is entitled to the filing date of the parent application. According to MPEP 201.06, “A divisional application is entitled to the benefit of the filing date of the prior-filed application if filed as a nonprovisional application that discloses and claims only subject matter…
Read MoreHow does the inventorship of a divisional application relate to the parent application?
The inventorship of a divisional application must include at least one inventor named in the parent application, but it doesn’t have to be identical. The MPEP states: The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed…
Read MoreCan a divisional application include new matter?
No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states: ‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’ This means: The…
Read MoreWhat is the required oath or declaration for a divisional application?
What is the required oath or declaration for a divisional application? For a divisional application, a new oath or declaration is generally required. However, there are exceptions: If the application is filed on or after September 16, 2012, a copy of the oath or declaration from the prior nonprovisional application may be used, provided that…
Read More