What is the purpose of MPEP 715.01(a)?
MPEP 715.01(a) provides guidance on how to handle situations where a reference (patent or published application) names a different inventive entity with at least one common inventor compared to the application under examination. It specifically addresses how to overcome rejections based on such references using affidavits or declarations. The section states: When subject matter disclosed…
Read MoreWhen is a new oath or declaration required in a patent application?
A new oath or declaration is required in a patent application under the following circumstances: When filing a continuation or divisional application When filing a continuation-in-part application To correct inventorship in an application When the original oath or declaration was defective According to MPEP 602.02: ‘A new oath or declaration is required in a continuation…
Read MoreHow can inventorship be corrected in a patent application?
Inventorship in a patent application can be corrected through the following methods: Filing a request under 37 CFR 1.48 to correct or change inventorship. For applications filed on or after September 16, 2012, this request should include: An application data sheet (ADS) identifying each inventor by their legal name The processing fee set forth in…
Read MoreHow does a CPA affect inventorship?
The inventorship in a Continued Prosecution Application (CPA) generally remains the same as in the prior application. The MPEP states, The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of…
Read MoreHow is inventorship determined in continuing applications filed on or after September 16, 2012?
For continuing applications filed on or after September 16, 2012, inventorship is determined as follows: If an application data sheet (ADS) is filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is specified in the ADS. If no ADS is filed before or concurrently with…
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 MoreWhen should I file a 37 CFR 1.48 request for a CPA?
You should file a 37 CFR 1.48 request for a Continued Prosecution Application (CPA) whenever you need to add, remove, or change the order of inventors from the original application. The MPEP ¶ 2.33 indicates: Any request to add an inventor must be in the form of a request under 37 CFR 1.48. This applies…
Read MoreCan the inventorship in a CPA differ from the original application?
Yes, the inventorship in a Continued Prosecution Application (CPA) can differ from the original application, but only if a proper request is filed and approved. According to MPEP ¶ 2.33: Otherwise, the inventorship in the CPA shall be the same as in the prior application. This implies that changes to inventorship are possible, but they…
Read MoreHow does inventorship in a continuing application work?
Inventorship in a continuing application depends on the type of continuing application and when it was filed. Key points: For applications filed on or after September 16, 2012, the inventorship is initially the inventor(s) named in the application data sheet For earlier applications, the inventorship carries over from the parent application In a continuation or…
Read MoreHow is inventorship handled in a Continued Prosecution Application (CPA)?
Inventorship in a Continued Prosecution Application (CPA) is generally maintained from the prior application. However, if there’s a need to add or change inventors, specific procedures must be followed. According to MPEP ¶ 2.33: “Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inventorship…
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