How can a nonprovisional application be filed by reference to a previously filed application?
As of December 18, 2013, a nonprovisional application can be filed by referencing a previously filed application, which replaces the need to submit a new specification and drawings. The MPEP states: As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013 may be filed by…
Read MoreWhat are the filing date requirements for patent applications filed on or after December 18, 2013?
For nonprovisional applications (except design applications) filed on or after December 18, 2013, the filing date is the date on which a specification, with or without claims, is received in the Office. This change was implemented as a result of the Patent Law Treaties Implementation Act of 2012 (PLTIA). The MPEP states: Except for design…
Read MoreWhat defines a ‘new’ application according to the MPEP?
According to MPEP 203.01, a ‘new’ application is defined as follows: A ‘new’ application is a nonprovisional application that has not yet received an action by the examiner. This means that a patent application is considered ‘new’ from the time it is filed until the patent examiner issues their first official response or action on…
Read MoreWhat is an ‘amended’ nonprovisional patent application?
An ‘amended’ nonprovisional patent application is one that has undergone a specific process in the examination procedure. According to MPEP 203.03: An ‘amended’ nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the examiner’s action. In simpler terms, it means…
Read MoreWhat is a continuation application?
A continuation application is a type of patent application that discloses the same invention(s) as a previously filed, copending nonprovisional application, international application designating the United States, or international design application designating the United States. The MPEP states: “A continuation application is an application for the invention(s) disclosed in a prior-filed copending nonprovisional application, international…
Read MoreWhen can benefit under 35 U.S.C. 386(c) be claimed for international design applications?
Benefit under 35 U.S.C. 386(c) for international design applications can only be claimed in specific types of applications filed on or after May 13, 2015. The MPEP states: 37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and…
Read MoreWhat happens if a nonprovisional application claims benefit of multiple provisional applications?
What happens if a nonprovisional application claims benefit of multiple provisional applications? When a nonprovisional application claims the benefit of multiple provisional applications, each provisional application must satisfy the requirements of 35 U.S.C. 119(e) and the first paragraph of 35 U.S.C. 112 for the subject matter claimed in the nonprovisional application. As stated in MPEP…
Read MoreWhat are the requirements for completing a nonprovisional application filed on or after December 18, 2013?
For nonprovisional applications filed on or after December 18, 2013, the requirements for completion include: Submitting the appropriate filing fee, search fee, and examination fee Filing an inventor’s oath or declaration For applications other than design applications, submitting at least one claim Submitting any required drawings The MPEP states: If an application which has been…
Read MoreWhat are the conditions for claiming priority under 35 U.S.C. 386(a) or (b)?
The right of priority under 35 U.S.C. 386(a) or (b) for international design applications is subject to specific conditions: It applies only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing from them. For nonprovisional applications, priority can be claimed with respect to a prior…
Read MoreWhat happens if I fail to file a nonprovisional application within 12 months of my provisional application?
What happens if I fail to file a nonprovisional application within 12 months of my provisional application? If you fail to file a nonprovisional application within 12 months of your provisional application’s filing date, you will lose the benefit of the provisional application’s filing date. The MPEP states: “A provisional application expires 12 months after…
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