How 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 accordance with 37 CFR 1.138. However, there are special considerations if the prior application has a notice of allowance issued or is before the Patent Trial and Appeal Board. The MPEP further states: If the prior nonprovisional application which is to be expressly abandoned has a notice of allowance issued therein, the prior nonprovisional application can become abandoned by the nonpayment of the issue fee. It’s important to follow the proper procedures to ensure the desired outcome regarding the prior application’s status.

To learn more:

• abandonment
• prior application
• continuing application
• express abandonment