How does incorporation by reference work in continuation applications?
Incorporation by reference can be an important tool in continuation applications, allowing applicants to include material from prior applications. The MPEP provides detailed guidance on this topic:
For applications filed on or after September 21, 2004:
An applicant may incorporate by reference the prior application by including, in the continuing application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification.
Additionally, for these applications:
For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b).
For applications filed before September 21, 2004:
The incorporation by reference statement could appear in the application transmittal letter or in the specification.
It’s important to note that incorporation by reference cannot be used to add new matter to an application after its filing date. The MPEP states:
An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)).
Proper use of incorporation by reference can help applicants maintain continuity between related applications and potentially recover from certain filing errors.
For more information on 37 cfr 1.57, visit: 37 cfr 1.57.
For more information on continuation application, visit: continuation application.
For more information on incorporation by reference, visit: incorporation by reference.