How does the assignment process differ for continuation-in-part applications claiming benefit of a provisional application?

The assignment process for continuation-in-part (CIP) applications claiming benefit of a provisional application differs from standard continuations or divisions:

• If the CIP includes new subject matter not in the provisional application, new assignment papers are typically required.
• This requirement is similar to the practice for CIPs filed under 35 U.S.C. 120.
• An exception exists for applications filed on or after September 16, 2012, where the assignee is the original applicant in the CIP.

MPEP § 306.01 states: If an application claiming the benefit of the earlier filing date of a provisional application includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be recorded for the application claiming the benefit of the provisional application, unless the later application is filed on or after September 16, 2012 and the assignee is the original applicant therein. This is similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120.

This approach ensures that the assignment covers all subject matter in the CIP, including new material not present in the provisional application.

To learn more:

• provisional application
• assignment
• continuation-in-part
• new subject matter