MPEP 200 Flashcards
201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
II. FILING AND INITIAL PROCESSING OF CPA
Advantages: minimal papers required to file; time delay b/w filing date & 1st office action is less; CPA is treated as amended instead of new applications.
201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
II. FILING AND INITIAL PROCESSING OF CPA
A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA
201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
II. FILING AND INITIAL PROCESSING OF CPA
A. general
no new matter may be introduced in a CPA
CPA will be assigned the same application number as the prior nonprovisional
A CPA may be based on a prior CPA.
There is no other limit to the number of CPAs that may be filed
in a chain of continuing applications. However, only one CPA may be pending at one time
specification, claims, and drawings, and any amendments in the prior are used in the CPA. A new basic filing fee, search fee, and examination fee are required. No new oath needed.
201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
II. FILING AND INITIAL PROCESSING OF CPA
B Conditions for Filing a CPA
37 CFR 1.53(d), if the prior nonprovisional
application is a design application, but not an international design application
CPA must be filed before the earliest of: (A) payment of the issue fee on the prior
application;
(B) abandonment of the prior application; or (C) termination of proceedings on the prior application.
201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
II. FILING AND INITIAL PROCESSING OF CPA
C. Initial Processing
A CPA request will be initially processed by the TC assigned the prior application.
TC will verify
- prior is a design appl
- correct appl #
- request is properly signed
- prior is pending & issue feed not paid yet
- prior is complete
- CPA filing fee paid
201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA)
II. FILING AND INITIAL PROCESSING OF CPA
D. Incorrect Patent Application
F. Filing Date
G. Filing Fee
I. Extensions of Time
K. Inventorship
The two-week period to resubmit
the returned CPA request is not extendible.
The filing date of a CPA is the date on which a request for a CPA on a separate paper for a CPA is filed,
may be filed via EFS-Web.
by mail , facsimile transmission (MPEP § 502.01) or hand delivery
The Certificate of Mailing Procedure (37 CFR 1.8) does not apply to filing a request for a CPA.
small entity and micro entity status
do not automatically carry over from the prior application to the CPA.
The inventive entity set forth in the prior
nonprovisional application automatically carries over into the CPA
201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA)
III. EXAMINATION OF CPA
C. Prior Election
D. Information Disclosure Statements and Preliminary Amendments
E. Affidavits
A terminal disclaimer filed in the parent application carries over to a CPA.
the entry of any preliminary amendment filed after the filing date of the CPA could be denied.
applicant can request a three-month suspension of action under 37 CFR 1.103(b), which must be must be filed at the time of filing a CPA.
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** CFR 1.103 Suspension of action by the Office.
(b) Limited suspension of action in a CPA filed under CFR 1.53(d).
(c) Limited suspension of action after a request for RCE under CFR 1.114
no copy of the original affidavit or declaration filed in the parent application need be filed in the CPA
201.06(d) 37 CFR 1.53(d) CPA
IV. PUBLIC ACCESS TO CPA
A CPA is construed to include a waiver of
confidentiality
Form PTO/SB/29 may be used by applicant for filing a CPA
201.07 Continuation Application
A continuation application is an application for the
invention(s) disclosed in a prior- filed copending nonprovisional application, international application
designating the United States, or international design
application designating the United States.
Must not include new matter.
must include at least one inventor named
in the prior-filed application, and must also claim the benefit of the prior-filed application
At any time before the patenting, abandonment, or termination of proceedings on an earlier application
201.08 Continuation-in-Part Application
A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the earlier nonprovisional application.
A continuation-in-part application CANNOT be filed as a CPA.
202 Cross-Noting
the examiner should check that prior applications are properly listed on the PALM bib-data sheet
203 Status of Application
- 01-New
- 02-Rejected
- 03-Amended
- 04-Allowed or in Issue
- 05-Abandoned
- 06-Incomplete: not entitled to a filing date
203.08 Status Inquiries
Notice of Allowability
Notice of Allowance and Fee(s) Due
Amended applications are expected to be taken up by the examiner and an action completed within two months of the date the examiner receives the application
210 Priority to, or the Benefit of, the Filing
Date of a Prior-Filed Appl
37 CFR 1.78
CLAIMING THE BENEFIT OF AN EARLIER NATIONAL APPLICATION
must contain a specific reference to the earlier-filed application
after 9/16/12, must be in the ADS
before 9/16/12, in the ADS or in the 1st sentence of the spec.
210 Priority to, or the Benefit of, the Filing
Date of a Prior-Filed Appl
37 CFR 1.55
CLAIMING PRIORITY TO AN EARLIER FOREIGN
APPLICATION
a claim for priority identifying the foreign application:
after 9/16/12, must be in the ADS
before 9/16/12, in the ADS or in the oath
or declaration.
210 Priority to, or the Benefit of, the Filing
Date of a Prior-Filed Appl
FIRST INVENTOR TO FILE TRANSITION APPLICATIONS
The “first inventor to file” effective on March 16, 2013
Transition applications are nonprovisional applications filed on or after March 16, 2013, claiming benefit or priority of an application filed before 3/16/2013
if the later-filed transition application
contains a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect.
Time: 4-month from filing date of the later, or 16-month from the filing date of the prior; OR the date that a first
claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented
in the later-filed application.
211 Claiming the Benefit of an Earlier Filing
Date Under 35 U.S.C. 120 and 119(e)
211.01(a) Claiming the Benefit of a Provisional Application 119(e)
each prior-filed provisional application must have the same inventor or at least one joint
inventor in common;
and must be entitled to a filing date as set forth in 37 CFR 1.53(c),
and the basic filing fee set forth in
37 CFR 1.16(d) must have been paid.
if the provisional is not in English, 1. an English translation 2. a statement the translation is accurate; and a replay in the nonprovisional application.
may claim the benefit of a provisional
application by claiming the benefit of an intermediate copending nonprovisional application, which was filed no later than 12-month of the provisional.
Design application may not claim the benefit of a provisional application.
12 + 4 month to claim the benefit of a provisional application. A petition is required effective 5/13/2015
211 Claiming the Benefit of an Earlier Filing
Date Under 35 U.S.C. 120 and 119(e)
211.01(b) Claiming the Benefit of a a
Nonprovisional Application 120
When a later-filed application is claiming the benefit of a prior-filed nonprovisional application, the later-filed application must be copending with the prior application or with an intermediate nonprovisional application. Copendency, before patenting, abandonment, termination
Same date of issuing and filing is copending.
- besides making reference to the intermediate application (still copending), also make reference to the first application (not copending).
- There is no limit to the number of prior applications through which a chain of copendency may be traced
to obtain the benefit of the filing date of the earliest of a chain of prior copending applications.
211 Claiming the Benefit of an Earlier Filing
Date Under 35 U.S.C. 120 and 119(e)
211.01(c) Claiming the Benefit of an
International Application Designating the
United States
35 U.S.C. 365(c)
bypass application:
a regular national application may claim the benefit of the filing date of
an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371. Instead of submitting a national stage application, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application. Must be filed during the pendency
211 Claiming the Benefit of an Earlier Filing
Date Under 35 U.S.C. 120 and 119(e)
211.01(d) Claiming the Benefit of an
International Design Application Designating
the United States
35 U.S.C. 386(c)
211.02 Reference to Prior Application
- 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. - Any benefit claim that does not both identify a prior application by its application number and specify a
relationship between the applications will not be considered to contain a specific reference to a prior application
211.02(a) Correcting or Adding a Benefit
Claim After Filing
- applicant may request a corrected filing receipt to correct missing or incorrect benefit claim information.
- to add benefit claims after filing, needs a petition, fee, corrected ADS or amendment, or may be (1) a RCE if under final rejection or was allowed; (2) reissue or a cert of correction if the application has issued.
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213 Right of Priority of Foreign Application
35 U.S.C. 119 Benefit of earlier filing date; right of priority (a-d, f)
37 CFR 1.55 Claim for foreign priority
213 Right of Priority of Foreign Application
213.02 Formal Requirements Relating to
Foreign Priority Application
- priority is claimed by specifying the application number, country, day, month, and year of filing; in the ADS or in the oath or declaration.
- the incorporation by reference statement to permit the entering of a portion of the foreign priority application into the U.S. application when the portion has been inadvertently omitted from the U.S. application, or
to permit the correction of translation error in the U.S. application. (*** 37 CFR 1.57 Incorporation by reference ) - the foreign application must have been filed by the same applicant as the applicant in the United States, or by applicant’s legal representatives or assigns
213 Right of Priority of Foreign Application
213.03 Time for Filing U.S. Nonprovisional
Application
- The US nonprovisional application must
be filed not later than 12 months (6 months in
the case of a design application) after the date on
which the foreign application was filed. - In computing this twelve months (or six months in
the case of a design application), the first day is not
counted. - USPTO is open during any part of a biz day b/w 8:30-5:00, papers are due on that day.
- 12-month is from the earliest foreign filing.
- As of PLTIA (12/18/2013), restoration of the right of priority. 12+2-month of the expiration may be restored for an international application (PCT 26), or CFR 1.55(c). And, 6+2 month for design application.
213 Right of Priority of Foreign Application
213.04 Requirement to File Priority Claim
and Certified Copy During Pendency of
Application
- the claim for priority and the certified copy of the foreign
application must, in any event, be filed within the pendency of the application
213 Right of Priority of Foreign Application
213.05 Right of Priority Based Upon an
Application for an Inventor’s Certificate
37 CFR 1.55(l) contains the provisions relating to
claiming priority to inventor’s certificates.
- Priority rights on the basis of an inventor’s
certificate application will be honored only if the
applicant had the option or discretion to file for either
an inventor’s certificate or a patent on the invention
in applicant’s home country.
214 Formal Requirements of Claim for
Foreign Priority
214.01 Time for Filing Priority Claim
214.02 Unintentionally Delayed Priority
Claims
214.03 Office Acknowledgement of Priority
Claims
214.04 Proper Identification of Priority
Application in Foreign Priority Claim
- The maximum time limit is that the claim for priority and the priority papers
must be filed before the patent is granted. - the certified copy must be filed in all cases.
- a petition under 37 CFR 1.55(e) may be filed along with request for a
certificate of correction after patent grant. - a grantable petition to accept an unintentionally delayed claim for priority must
include: (1) the claim; (2) a certified copy of the foreign application; (3) the petition fee; (4) a statement that the entire delay was unintentional. Effective May 13, 2015 - a petition under 37 CFR 1.55(e) may be filed along with request for a certificate of correction after patent grant in utility, plant, and design applications.
- A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the foreign priority claim or certified copy considered after
publication of the patent.
215 Certified Copy of Foreign Application
215.01 Electronic Priority Document
Exchange
- 35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of the foreign priority application.
- Certified copy is a copy of the original foreign application with a certification
by the foreign country in which it was filed, including the specification and drawings of the applications *as filed* with a certificate for the foreign patent office. - A copy of the foreign patent as issued does not comply.
- if after date of issue fee but prior to the date of grant, the priority claim will be in the file but not permitted.
- a petition, a cert of correction must be filed to have the foreign priority claim or certified copy considered after publication of the patent.
- certified copy will not be returned to the applicant
215 Certified Copy of Foreign Application
215.02 Time For Filing Certified Copy –
Application Filed On or After March 16, 2013
215.02(a) Timeliness Requirement – Met By
Priority Document Exchange
215.02(b) Timeliness Requirement – Met By
Interim Copy of Foreign Application
215.03 Time For Filing Certified Copy
- ‘‘interim copy’’ from the applicant’s own records, for the situation in which the applicant cannot obtain a certified copy of the foreign application within the
time limit. original foreign application clearly labeled as labeled as “Interim copy of
Foreign Priority Document.”
216 Entitlement to Priority
216.01 Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent
- The most important aspect of the examiner’s action pertaining to a right of priority is the determination of the identity of invention between the U.S. and the
foreign applications. - may be cured via a certificate of correction under 35 U.S.C. 255 and 37
CFR 1.323, provided the requirements of 37 CFR 1.55 are met, - or by filing a reissue application.
- a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 may be requested and issued in order to perfect a claim for foreign priority benefit in a patent, if (1) USC 119 are met, (2) CFR 1.55 are met, (3) the correction would not require further examination.
217 Incorporation by Reference Under 37 CFR 1.57(b)
(c) a claim must be present on the filing date of the application;
(D) the inadvertently omitted portion of the specification or drawing(s) must be completely contained in the prior-filed application;
(E) applicant must file an amendment to include the inadvertently omitted portion of the specification or drawing(s), before the close of prosecution.
- if the prosecution is closed, applicant may file a petition to revive an application under 37 CFR 1.137 and/or a Request for Continued Examination under 37 CFR 1.114, to restore the application to pending status and/or reopen prosecution in the application.
