How can a U.S. national stage application claim benefit under 35 U.S.C. 120 and 365(c) of a prior application?
To claim benefit under 35 U.S.C. 120 and 365(c) of a prior filed copending nonprovisional application or prior filed copending international application designating the United States, the national stage application must meet these requirements: Comply with 37 CFR 1.78(d). The prior application must name at least one inventor also named in the later filed international…
Read MoreCan a continuation-in-part (CIP) application claim the benefit of a prior application’s filing date?
A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations: Only the subject matter common to both the CIP and the prior application can claim the earlier filing date. New matter introduced in the CIP will have the filing date of the CIP application. Each claim in…
Read MoreCan an applicant submit a copy of an inventor’s oath or declaration from a prior application?
Yes, an applicant can submit a copy of an inventor’s oath or declaration from a prior application under certain conditions. According to MPEP 602.01(a): An applicant may submit an inventor’s oath or declaration meeting the requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in an earlier-filed application, and submit a copy of…
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 is the correspondence address handled in continuing applications?
For continuing applications where application papers from a prior application are used, special attention must be paid to the correspondence address. According to 37 CFR 1.33(f): “Where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data…
Read MoreWhat happens to the prior application when a Continued Prosecution Application (CPA) is filed?
What happens to the prior application when a Continued Prosecution Application (CPA) is filed? When a Continued Prosecution Application (CPA) is filed, it has specific effects on the prior application. According to MPEP 201.06(d): ‘The filing of a CPA is a specific reference required by 35 U.S.C. 120 to every application assigned the application number…
Read MoreHow does filing a CPA affect the prior application?
Filing a Continued Prosecution Application (CPA) has a significant effect on the prior application. According to the MPEP, A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA. This means that when you file a CPA, the previous application is automatically abandoned in favor…
Read MoreWhat happens to the prior application when a CPA is filed?
What happens to the prior application when a CPA is filed? When a Continued Prosecution Application (CPA) is filed, the prior application is automatically abandoned. According to MPEP 201.06(d): The filing of a CPA is not a filing of a new application. Rather, a CPA is a continuation of the prior application and maintains the…
Read MoreHow is the abandonment of a prior nonprovisional application handled when filing a continuing application?
Filing a continuing application under 37 CFR 1.53(b) does not automatically abandon the prior nonprovisional application. The MPEP clarifies: Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application. If the prior nonprovisional application is to be expressly abandoned, such a paper must be signed in…
Read MoreHow are affidavits or declarations from a prior application handled in a continuation or divisional application?
Affidavits or declarations from a prior application do not automatically become part of a continuation or divisional application. The MPEP states: Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional…
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