Chapter 200 Types, Cross Noting, and Status of Applications Flashcards
Types of Applications
- Provisional
- Non-Provisional
- Regular
- Divisional
- Continuation in Part (CIP)
- Continuing Application (CA)
- Continued Prosecution Application (CPA)
- Substitute
- Statutory Intervention
- Reissue
Provisional Applications
- No Claims Required
- Abandoned After 12 Months
- No Oath or Declaration is Required
Process to Convert Provisional to Non Provisional
- File Petition under 37CFR1.53(c)(3)
2. Fee
Rights of Priority for Converting from Provisional to Non Provisional
There is only one filing date for provisional applications. By converting from a Provisional to a non-provisional application, you adversely affect the application date.
Avoiding Adverse Effects from Provisional to Non Provisional Conversion
File a Non Provisional Application claiming the Benefit of the Provisional Application under 35 USC 119(e).
Eligibility to File a Non Provisional Application claiming the Benefit of the Provisional Application
- Must be entitled to a filing date
2. Basic Fee must be paid in time.
Non Provisional Applications
- At least one Claim Must be Attached
- Not abandoned after 12 months
- An Oath or Declaration is Required
Process to Convert Non Provisional Application to a Provisional Application
- File Petition under 37 CFR 1.53(c)(2)
2. Pay Fee
Rights of Priority After Converting from Non Provisional to Provisional
Allowed to keep the Original Filing Date
Continuation in Part Application (CIP)
- Inventor make improvements after filing original application.
- New material has the filing date of the CIP while all other material the original applications filing date.
- First application (Parent application) must be co-pending.
Requirements for CIP to Retain the Parent Filing Date
- New Matter over Original Patent Application
- Substantial Portion of the Parent Application is repeated.
- New Matter is added.
- New Set of Oaths filed.
- Field before Parent Application is abandoned.
- New Subject Matter Involved
- Filed under 37 CFR 153(b)
What is a Continuation Application?
A second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or patented. Usually filed after a patent examiner REJECTS one or more of the original claims.
How Long to File a Continuation Application?
Must be filed within 3 months of the examiner’s rejection.
Requirements for Filing a Continuation Application
- New Fee
- Newly Written Claims
- No New Matter
- Filed Within 30 Days of Rejection
Rules Governing Continuation Applications
- A continuation application may be filed DURING THE PENDENCY of the the PARENT application.
- A continuation application need only have ONE INVENTOR in common.
What New Information May Be Included in a Continuation Application?
- New Specifications
- New Drawings
- Newly Executed Declaration
* As long as no new subject matter is added.
Rules on Filing Dates for Continuation Applications
- Continuation Applications receive NEW filing dates.
2. For PRIOR ART the ORIGINAL parent application ‘s filing date applies.
Process to Correct Inventorship when Oath/Declaration has been Filed
- Request to Correct
- Statement from EACH PERSON being added/removed that error was WITHOUT DECEPTIVE INTENT
- Oath/Declaration by ACTUAL inventors
- Fee
- If assigned, written consent of assignee
Process to Correct Inventorship When Oath/Declaration Has Not Been Filed
- File Oath/Declaration that properly names the proper inventive entity.
Implication of Removing an Inventor
Inventor is no longer being claimed. (Not linked to any of the legal claims in the application.)
Implication of Adding an Inventor
Inventor is being claimed. (Linked to legal claims in the application.)
Correcting Inventorship on a Provisional Application with No Cover Sheet
File a cover sheet naming the correct inventors.
