How does filing a continuation application affect the prior application?

Filing a continuation application under 37 CFR 1.53(b) does not automatically abandon the prior application. The MPEP clearly states:

Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application.

However, applicants have several options regarding the status of the prior application:

1. Express Abandonment: If desired, the prior application can be expressly abandoned. This requires a separate paper signed in accordance with 37 CFR 1.138.
2. Allowed Applications: If the prior application has received a notice of allowance, it can become abandoned by non-payment of the issue fee.
3. Continued Prosecution: The prior application can remain pending if the applicant wishes to continue prosecution.

It’s important to note that if an issue fee has been paid in the prior application, special procedures are required:

However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313).

Applicants should carefully consider their strategy for managing multiple related applications when filing a continuation.

For more information on continuation application, visit: continuation application.

For more information on patent prosecution, visit: patent prosecution.