One of the provisions of the Uruguay Round Agreements Act (effective as of June 8, 1995), is the establishment of a domestic priority system. The Act provides a mechanism to enable domestic applicants to quickly and inexpensively file provisional applications. Under the provisions of 35 U.S.C. 119(e), applicants are entitled to claim the benefit of priority in a given application in the United States. The domestic priority period will not count in the measurement of the 20-year patent term. See 35 U.S.C. 154(a)(3). Thus, domestic applicants are placed on equal footing with foreign applicants with respect to the patent term.
A provisional application is a regular national filing that starts the Paris Convention priority year. Foreign filings must be made within 12 months of the filing date of the provisional application if applicant wishes to rely on the filing date of the provisional application in the foreign filed application.
NOTE:
· (A) No claim is required in a provisional application.
· (B) No oath or declaration is required in a provisional application.
· (C) Provisional applications will not be examined for patentability.
· (D) A provisional application is not entitled to claim priority to any foreign application or the benefit of any earlier filed national application.
A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter. See 35 U.S.C. 111(b)(5). The period of pendency of a provisional application is extended to the next succeeding business day if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or federal holiday within the District of Columbia. See 35 U.S.C. 119(e)(3) and 37 CFR 1.7(b). For example, if a provisional application was filed on January 15, 1999, the last day of pendency of the provisional application under 35 U.S.C. 111(b)(5) and 35 U.S.C. 119(e)(3) would be extended to January 18, 2000 (January 15, 2000 was a Saturday and Monday, January 17, 2000 was a federal holiday and therefore, the next succeeding business day would be Tuesday, January 18, 2000). A nonprovisional application claiming the benefit of the provisional application must have been filed no later than January 18, 2000.
Effective December 18, 2013, a nonprovisional application that was filed more than 12 months after the filing date of the provisional application, but within 14 months after the filing date of the provisional application, may have the benefit of the provisional application restored by filing a grantable petition to restore the benefit under 37 CFR 1.78(b). See MPEP § 211.01(a).
A provisional application is not entitled to claim priority to, or the benefit of, any other application under 35 U.S.C. 119, 120, 121, 365, or 386. If applicant attempts to claim the benefit of an earlier U.S. application or priority to a foreign application in a provisional application, the filing receipt will not reflect the improper benefit or priority claim. Moreover, if a nonprovisional application claims the benefit of the filing date of a provisional application, and states that the provisional application relies upon the filing date of an earlier application, the claim for benefit or priority earlier than the filing date of the provisional application will be disregarded.
An application filed under 37 CFR 1.53(b) may be converted to a provisional application provided a request for conversion is submitted along with the fee as set forth in 37 CFR 1.17(q). The request and fee must be submitted in the nonprovisional application prior to the earlier of the abandonment of the nonprovisional application, the payment of the issue fee, or the expiration of 12 months after the filing date of the nonprovisional application. The grant of any such request will not entitle applicant to a refund of the fees which were properly paid in the application filed under 37 CFR 1.53(b). See MPEP § 601.01(c). 35 U.S.C. 111(b)(5) permits a provisional application filed under 37 CFR 1.53(c) to be converted to a nonprovisional application filed under 37 CFR 1.53(b). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in 37 CFR 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112, unless the provisional application otherwise contains at least one such claim. The request must be filed in the provisional application prior to the earliest of the abandonment of the provisional application or the expiration of twelve months after the filing date of the provisional application. The filing fee, search fee, and examination fee for a nonprovisional application and the surcharge under 37 CFR 1.16(f), if appropriate, are also required. For provisional applications filed before December 18, 2013, if the inventor's oath or declaration was not filed with the provisional application, it must be submitted with the request for conversion. The grant of any such request will not entitle applicant to a refund of the fees which were properly paid in the application filed under 37 CFR 1.53(c). Conversion of a provisional application to a nonprovisional application will result in the term of any patent issuing from the application being measured from at least the filing date of the provisional application. This adverse patent term impact can be avoided by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e), rather than requesting conversion of the provisional application to a nonprovisional application. See 37 CFR 1.53(c)(3).
Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e). See 35 U.S.C. 172 and 37 CFR 1.78(a).
A reissue application is an application for a patent to take the place of an unexpired patent that is defective. A detailed treatment of reissue applications can be found in MPEP Chapter 1400.
*****
· (d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
· *****
· (2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76(b)(5) ). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
*****
A later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application. The divisional application should set forth at least the portion of the earlier disclosure that is germane to the invention as claimed in the divisional application. A continuation-in-part application should not be designated as a divisional application. The Court of Appeals for the Federal Circuit has concluded that the protection of the third sentence of 35 U.S.C. 121 (see MPEP § 804.01) does not extend to continuation-in-part applications, stating that "the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications." Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-1008 (Fed. Cir. 2008). Thus the disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.
A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
If an application by joint inventors includes more than one independent and distinct invention, and restriction is required, it may become necessary to change the inventorship named in the application if the elected invention is not the invention of all the originally named joint inventors. In such a case, a "divisional" application complying with 35 U.S.C. 120 would be entitled to the benefit of the earlier filing date of the original application. In requiring restriction in an application filed by joint inventors, the examiner should remind applicants of the necessity to correct the inventorship pursuant to 37 CFR 1.48 if an invention is elected and all of the claims to the invention of one or more joint inventors are canceled. See MPEP § 817.
In such scenarios, inventorship overlap required by 35 U.S.C. 120 is met even though at the time of filing of the divisional application, the inventorship overlap was lost as a result of the deletion of a joint inventor in the parent application and filing of only claims invented by that inventor in the divisional application. The overlap of inventorship need not be present on the date the continuing application is filed nor present when the parent application issues or becomes abandoned if the parent application prior to restriction names the inventor or a joint inventor of the divisional application as a joint inventor(s) in the parent application. See MPEP §§ 602.01(c) and 602.09 for further information.
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "divisional" of the provisional application. See 37 CFR 1.78, especially paragraphs (a) -(c), and MPEP § 211 et seq. for requirements and information pertaining to entitlement to the benefit of the filing date of a provisional application.
It is no longer appropriate to include the U.S. Patent and Trademark Office classification of the divisional application and the status and assigned art unit of the parent application in the application data sheet. See MPEP § 601.05.
Use form paragraph 2.01 to remind applicant of possible divisional status.
This application, which discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], appears to claim only subject matter directed to an invention that is independent and distinct from that claimed in the prior application, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a divisional application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "divisional" of the prior application.
A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and not under 37 CFR 1.53(d). See MPEP § 1504.20.
While a divisional application may depart from the phraseology used in the parent application there may be no departure therefrom in substance or variation in the disclosure that would amount to "new matter" if introduced by amendment into the parent application. Compare MPEP § 201.08 and MPEP § 211 et seq.
For notation to be put in the file history by the examiner in the case of a divisional application, see MPEP § 202.
37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A continuation or divisional application filed under 37 CFR 1.60 on or after December 1, 1997, will automatically be treated as an application filed under 37 CFR 1.53(b). All continuation and divisional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60. For more information pertaining to practice and procedure under former 37 CFR 1.60, see MPEP § 201.06(a) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/mpep.htm ).
37 CFR 1.62 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A request for a continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, in an application that was filed on or after June 8, 1995, will be treated as a request for continued examination (RCE) under 37 CFR 1.114, see MPEP 706.07(h), paragraph IV. A request filed on or after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP) application, or for a continuation or divisional of an application having a filing date before June 8, 1995, will be treated as an improper application.
All continuation, divisional and CIP applications filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62. For more information pertaining to practice and procedure under former 37 CFR 1.62, see MPEP § 201.06(b) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/mpep.htm ).
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013.]
*****
· (b) Application filing requirements— Nonprovisional application. The filing date of an application for patent filed under this section, other than an application for a design patent or a provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in the Office. The filing date of an application for a design patent filed under this section, except for a continued prosecution application under paragraph (d) of this section, is the date on which the specification as prescribed by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78.
· (1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
· (2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
*****
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 (pre-PLT) before December 18, 2013.]
*****
· (b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120 , 121 or 365(c) and § 1.78(c) and (d).
· (1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
· (2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
*****
37 CFR 1.53(b) is the section under which all applications are filed EXCEPT: (A) an application resulting from entry of an international application into the national stage under 35 U.S.C. 371 and 37 CFR 1.495; (B) a provisional application under 35 U.S.C. 111(b) and 37 CFR 1.53(c); (C) a continued prosecution application (CPA) of a design application under 37 CFR 1.53(d); or (D) a nonprovisional international design application. Applications submitted under 37 CFR 1.53(b), as well as CPAs submitted under 37 CFR 1.53(d), are applications filed under 35 U.S.C. 111(a). An application filed under 37 CFR 1.53(b) may be an original or a reissue, a continuation, a divisional, a continuation-in-part, or a substitute. (See MPEP § 201.02 for substitute application.) The application may be for a utility patent under 35 U.S.C. 101, a design patent under 35 U.S.C. 171, a plant patent under 35 U.S.C. 161, or a reissue under 35 U.S.C. 251. An application will be treated as one filed under 37 CFR 1.53(b) unless otherwise designated.
For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office. Effective December 18, 2013, utility and plant patent applications filed under 35 U.S.C. 111(a) are no longer required to include at least one claim or any drawings in order to receive a filing date for the application. See MPEP § 601.01(a), subsection I. The filing date of an application for a design patent is the date on which the Office receives the specification including at least one claim and any required drawings. 35 U.S.C. 171(c). In addition, as provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. See MPEP § 601.01(a), subsection III.
In order to be complete for filing date purposes, all applications filed under 37 CFR 1.53(b) before December 18, 2013, must include a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing required by 37 CFR 1.81(a).
For applications filed on or after September 16, 2012, the basic filing fee, search fee, examination fee and application size fee, and the inventor’s oath or declaration in compliance with 37 CFR 1.63 (and 37 CFR 1.64 (for a substitute statement), 37 CFR 1.175 (for a reissue) or 37 CFR 1.162 (for a plant patent)) are also required by 37 CFR 1.51(b) for a complete application. However, the filing of the basic filing fee, search fee, examination fee, application size fee and inventor’s oath or declaration may be filed after the application filing date upon payment of the surcharge set forth in 37 CFR 1.16(f). Additionally, the filing of the inventor’s oath or declaration may be postponed until payment of the issue fee where the application contains an application data sheet under 37 CFR 1.76 identifying each inventor by the inventor's legal name, and a mailing address where each inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
For applications filed prior to September 16, 2012, the statutory filing fee and an oath or declaration in compliance with 37 CFR 1.63 (and 37 CFR 1.175 (if a reissue) or 37 CFR 1.162 (if for a plant patent)) are also required by 37 CFR 1.51(b) for a complete application, but the filing fee and oath or declaration may be filed after the application filing date upon payment of the surcharge set forth in 37 CFR 1.16(f). See 37 CFR 1.53(f) and MPEP § 607.
Unless an application is submitted with a statement that the application is a continuation or divisional application, see 37 CFR 1.78(d)(2), the Office will process the application as a new non-continuing application. Applicants are advised to clearly designate any continuation, divisional, or continuation-in-part application as such by submitting a reference to the prior-filed application with the appropriate relationship (i.e., continuation, divisional, or continuation-in-part) in compliance with 37 CFR 1.78(d)(2) (i.e., in an application data sheet for an application filed on or after September 16, 2012, or in the first sentence(s) of the specification or in an application data sheet for an application filed prior to September 16, 2012) to avoid the need for a petition to accept an unintentionally delayed claim under 37 CFR 1.78(e) and the petition fee set forth in 37 CFR 1.17(m), and the issuance of a filing receipt that does not indicate that the application is a continuation, divisional, or continuation-in-part. See MPEP § 211 et seq.
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012.]
*****
· (d)
· (1) A newly executed oath or declaration under § 1.63, or substitute statement under § 1.64, is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.
· (2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.
· (3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64.
*****
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012.]
· (d)
· (1) A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:
· (i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;
· (ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;
· (iii) The specification and drawings filed in the continuation or divisional application contain no matter that would have been new matter in the prior application; and
· (iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.
· (2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application.
· (3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior application must be accompanied by:
· (i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120 , 121, or 365(c); and
· (ii) If one or more inventor(s) or legal representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.
· (4) Where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney or correspondence address during the prosecution of the prior application.
· (5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
*****
A copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012, even if the oath or declaration identifies the application number of the prior application. However, if such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application (see 37 CFR 1.5(a) ), the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file. Furthermore, applicant should also label the copy of the oath or declaration with the application number of the continuation or divisional application in the event that the cover letter is separated from the copy of the oath or declaration.
A copy of the oath or declaration from a prior nonprovisional application may be filed in a continuation or divisional application even if the specification for the continuation or divisional application is different from that of the prior application, in that revisions have been made to clarify the text to incorporate amendments made in the prior application, or to make other changes provided the changes do not constitute new matter relative to the prior application. If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
For applications filed on or after September 16, 2012, a continuing application, including a continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64. See 37 CFR 1.63(d)(1). It should be noted that a copy of the inventor’s oath or declaration submitted in a continuing application filed on or after September 16, 2012 must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012. For example, the inventor’s oath or declaration must include a statement that the inventor is an original inventor of the claimed application and a statement that the application was made or was authorized to be made by the person executing the oath or declaration. Accordingly, a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64 ) in effect for applications filed on or after September 16, 2012. See MPEP § 602.05(a) for additional details regarding oaths or declarations in continuing applications filed on or after September 16, 2012.
For applications filed prior to September 16, 2012, a newly executed oath or declaration is required in a continuation or divisional application filed under 37 CFR 1.53(b) naming an inventor not named in the prior application, and in a continuation-in-part application. See MPEP § 602.05(b) for additional details regarding oaths or declarations in continuing applications filed before September 16, 2012.
A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specification and drawings and a newly executed oath or declaration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application. For continuing applications filed on or after September 16, 2012, claiming the benefit of an application filed before September 16, 2012, a copy of the inventor’s oath or declaration filed in the earlier-filed application can only be submitted in the continuing application if the oath or declaration complies with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet. For applications filed prior to September 16, 2012, the reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet. See MPEP § 211 et seq.
The new specification and drawings of a continuation or divisional application filed under 37 CFR 1.53(b) may include changes to the specification and drawings originally filed in the prior application in the manner that an applicant may file a substitute specification, see 37 CFR 1.125, or amend the drawings of an application so long as it does not result in the introduction of new matter. Applicant should file a new set of claims as the original claims of the continuing application instead of filing a copy of the claims from the prior application and a preliminary amendment to those claims. It is the applicant’s responsibility to review any new specification or drawings submitted for a continuation or divisional application under 37 CFR 1.53(b) to determine that it contains no new matter. For applications filed before September 16, 2012, an applicant is advised to simply file a continuing application with a newly executed oath or declaration when it is questionable as to whether the continuing application adds material that would have been new matter if presented in the prior application. In addition, for applications filed prior to September 16, 2012, if one or more claims are allowed in the continuation or divisional application which are directed to matter shown and described in the prior nonprovisional application but not claimed in the prior application, the applicant should be required to file a supplemental oath or declaration under pre-AIA 37 CFR 1.67(b). For applications filed on or after September 16, 2012, pursuant to 37 CFR 1.67(b), no supplemental oath or declaration will be required.
If a continuation or divisional application as filed contains subject matter that would have been new matter in the prior application, the applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part. Form paragraph 2.10.01 may be used to require the applicant to correct the relationship of the applications. See MPEP § 211 et seq.
Any utility or plant patent application, including any continuing application, that will be published pursuant to 35 U.S.C. 122(b) should be filed under 37 CFR 1.53(b) with a specification that includes any claim(s) and drawings that the applicant would like to have published. This is important because under 35 U.S.C. 154(d), a patentee may obtain provisional rights if the invention claimed in a patent is substantially identical to the invention claimed in the patent application publication and the Office will generally publish the specification (including the claims) and drawings as filed. Filing a continuing application under 37 CFR 1.53(b) with a preliminary amendment (which makes all the desired changes to the specification, including adding, deleting or amending claims) is NOT recommended. For applications filed on or after September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. If a preliminary amendment is filed in a format that cannot be included in the publication, the Office of Patent Application Processing (OPAP) will issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes. See 37 CFR 1.115(a)(1) and 1.215. The only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125. As noted above, a continuation or divisional application filed under 37 CFR 1.53(b) may be filed with a new specification and corrected drawings, along with a copy of an oath or declaration from a prior (parent) application, provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application. Thus, the new specification a
