Can the specification be omitted when filing a divisional or continuation application?
Can the specification be omitted when filing a divisional or continuation application? No, the specification cannot be omitted when filing a divisional or continuation application. However, the process is simplified. According to MPEP 201.06(c): “A new specification (including the claims) may be submitted in a divisional application filed under 37 CFR 1.53(b). In such a…
Read MoreWhat is the purpose of a divisional application under 37 CFR 1.53(b)?
What is the purpose of a divisional application under 37 CFR 1.53(b)? A divisional application under 37 CFR 1.53(b) serves to pursue claims to a distinct invention that was disclosed but not claimed in a parent application. According to the MPEP: “A divisional application is often filed as a result of a restriction requirement made…
Read MoreHow does the oath or declaration requirement differ for divisional applications?
How does the oath or declaration requirement differ for divisional applications? For divisional applications, the oath or declaration requirement can be simplified under certain conditions. According to MPEP 201.06(c): “The divisional application may be filed under 37 CFR 1.53(b) using all or part of a copy of the oath or declaration filed in the prior…
Read MoreCan I amend the specification of a CPA to refer to it as a continuation or divisional application?
No, you cannot amend the specification of a Continued Prosecution Application (CPA) to refer to it as a continuation or divisional application. According to MPEP § 201.06(d): “The amendment filed [date] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [continuation/divisional] application of Application No. [X] has…
Read MoreWhat happens to continuation or divisional applications filed after a CPA in a design application?
What happens to continuation or divisional applications filed after a CPA in a design application? Continuation or divisional applications filed after a Continued Prosecution Application (CPA) in a design application are treated differently than those filed after a CPA in a utility or plant application. According to MPEP 201.06(d): Any continuation or divisional application filed…
Read MoreWhat happens if I submit an amendment to refer to a CPA as a continuation or divisional application?
If you submit an amendment to refer to a Continued Prosecution Application (CPA) as a continuation or divisional application, it will be denied entry by the patent examiner. The MPEP ¶ 2.34 states: “Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any…
Read MoreHow should the specific reference to a prior-filed application be made?
The method for making a specific reference to a prior-filed application depends on when the application was filed: For applications filed before September 16, 2012: The specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76.…
Read MoreWhat happens if a continuation or divisional application contains new matter?
If a continuation or divisional application contains new matter not disclosed in the prior-filed application, the applicant will be required to either delete the benefit claim or change the relationship to a continuation-in-part application. This is because continuation and divisional applications cannot include new matter. As stated in MPEP ¶ 2.10.01: “Applicant is required to…
Read MoreHow does an examiner determine if new matter is present in a continuation or divisional application?
Patent examiners carefully compare the content of the continuation or divisional application with the prior-filed application to identify any new matter. If they find information not disclosed in the prior application, they will issue a notice to the applicant. The MPEP ¶ 2.10.01 instructs examiners: “In bracket 1, provide an example of the matter not…
Read MoreHow does the presence of new matter affect the filing date of a continuation or divisional application?
The presence of new matter in a continuation or divisional application can significantly affect its filing date. If new matter is found, the application may lose the benefit of the earlier filing date for the new subject matter. According to MPEP ¶ 2.10.01: “Applicant is required to delete the benefit claim or change the relationship…
Read More