Type and Status of Applications (MPEP 200)

by patentbar on December 2, 2007 · 17 comments

in MPEP 0200

Applications  can be filed as a National Application (Utility, Plant, Design, or Provisional Application) or as a national Stage Application (an International Application that has entered the national stage in the US). 

Provisional Applications

Provisional Applications are a special type of application that that is used to establish a filing date. Provisional applications only require a specification and cover sheet. They are kept on file at the PTO and will not be examined on their merits unless a later filed regular application claims priority.

Contents of a provisional – 1) Specification and drawing (if necessary), 2) Cover sheet – identify app as a provisional and provide following: name of all inventors, inventor residence(s), title of invention, name and reg. # of attorney and docket # (if applicable), correspondence address, and any government agency that has a property interest in the application and 3) appropriate fees (small entity discount available).

With a provisional application – claims are not required, no oath or declaration filed, no publication, no RCE, no IDS and it does not have to be in English.

  • To establish priority, regular application must be filed within one year
  • Claim of priority must be filed within later of four months from the regular filing date or sixteen months from the provisional app filing date – translation of non-English provisional must be filed within this time allotment as well
  • Regular application must have at least one inventor in common with provisional
  • Regular application must contain a cross-reference to prior provisional
  • Pendency is extended to next business day
  • If applicant fails to make priority claim within 4/16 months, he may petition to accept an unintentionally delayed claim. This petition requires a fee and statement that the entire delay between due date and date filed was unintentional
  • A provisional can never claim priority to another application
  • A design application may not claim priority to a provisional

Reissue Patent

A reissue patent replaces an unexpired defective patent.  A reissue is proper if there is a material defect in the original patent. 

Continuing Applications

Must be filed during the pendency of a prior application claiming priority; multiple continuing applications are acceptable.

Continuation –

  • Directed towards the same general invention as parent
  • Filed during pendency (before patenting, abandonment, or termination of proceedings)
  • Discloses same or less subject matter
  • Has at least one common inventor with parent
  • Contains a cross reference to parent
  • If filed on or after Nov 29,2000, the claim for benefit must be made within later of 4 months from filing date of the application or 16 months from parent filing date

Continuation-In-Part (CIP) –

CIP adds new matter; other requirements are the same as for a continuation. The effective filing date of a CIP is determined by the date on which the claim first finds support; analyzed on a claim by claim analysis.

Divisional Application

A divisional application for an individual or distinct invention ‘carved out’ of the parent. It may only disclose and claim only subject matter disclosed in the parent. Other requirements are the same as continuation.

  • Inventorship may change upon filing a divisional; overlap of inventors is measured as of the original filing date of application.
  • A design application may be filed as a division of a regular application if the drawings in the original application sufficiently disclose the claimed design.

Continued Prosecution Application (CPA)

The pending application must be regular or plant filed on or before May 29, 2000 (irrespective of any priority claim), an international application (before May 29, 2000) that has entered national stage, or a design application of any vintage.

  • A continuation or divisional (but not CIP) may be filed via CPA.
  • The inventors may be the same or fewer as those of the parent application. Presumption of identical, unless statement requesting deletion.
  • Causes parent application to become abandoned automatically.
  • Applicant will not be allowed to amend the first paragraph of the application to add a cross reference.
  • Only a request is filed – no new specification is needed.
  • The filing date is the date on which the requesting paper is received.

Other Continuing Information –

  • Obviousness-type double patenting rejection – asserts that claims presented in multiple applications should have been presented all in one application.
  • Papers submitted in a parent do not automatically become part of the continuing application (unless it’s a CPA). Such documents can be copied and refilled – including small entity assertions in parent.
  • An assignment of a parent application carries title to any divisional, continuation, or reissue application filed after the date of assignment. (CIP’s are ambiguous).

Statutory Invention Registration

SIR is not a patent; serves as prior art to later applicants’ applications.

Inventorship

Inventors must have contributed to the claimed invention. When determining contribution of inventors, provisional applications are determined on the basis of disclosure, as opposed to claim by claim in regular applications.

Correction of Inventorship {Rule 48 [MPEP 201.03]}

Errors in inventors originally named –

  • Oath/Declaration already filed: request to correct; statement from each person being added and from each person being deleted that error was without deceptive intent; O/D by actual inventors; fee; if assigned, written consent of assignee
  • Oath/declaration not yet filed: file oath/declaration that names the proper inventive entity

Cancellation or Amendment of Claims –

  • Removal of Inventor from inventive entity – to remove, if oath/declaration has been filed: request that identifies the name of inventor being deleted; acknowledges that inventor’s invention is no longer being claimed; fee
  • Amendment of claims that requires addition of Inventor – to add, if oath/declaration has been filed: request to correct; statement from each person being added that the addition is necessitated by amendment of claims and error was without deceptive intent; oath/declaration by actual inventors; fee; if assignment, written consent from assignee

Correcting Provisionals -

  • Provisional with no cover sheet – filing of a cover sheet naming correct inventors will operate to correct inventive entity.
  • Provisional (adding inventor after cover sheet filed) – request to correct Inventorship that identifies the inventor being added; error occurred without deceptive intent; fee.
  • Provisional (deleting inventor after cover sheet filed) – request with desired change; statement from person being deleted that error occurred without deceptive intent; fee; if assignment, written consent by assignee.

Correction of Inventorship Not Required

  • Issuance with Correct Inventors – if the inventive entity is correct as of the issue date, no correction required
  • Typos or other name errors – need not be corrected; can be corrected with a certificate of correction
  • Name Change – need not be corrected; distinguished from incorrect inventor

Other Ways to Correct Inventorship

  • court order
  • reissue

Foreign Priority Claims

Applications claiming priority to a foreign application must be filed within 12 months of the prior application (six months for designs). Time measured from date of first foreign application.

  • A priority claim under 119(e) and 120 establishes an effective US filing date for all purposes for commonly disclosed subject matter
  • A foreign priority claim does not establish an effective US filing date for all purposes for commonly disclosed subject matter. If there is a statutory 102(b) bar, the foreign priority claim will not help the applicant. The 102(b) bar is based on the actual US filing date.

Requirements for Foreign Priority Claim –

  • NTO or WTO country – foreign application must have been filed by inventor or his assigns; US application must be filed within 12 months of foreign application’s filing date; must be same invention; priority claim must be made with submission of a certified copy of the foreign priority document. The claim for priority may be filed at any time up to (including) the date of issuance of patent (should be submitted by payment of issue fee).
  • For applications filed in US (or entered national stage) on or after 5/29/2000, the priority claim must be made within four months of the filing date or 16 months from foreign filing date (the later) – petition may be filed.
  • Applicant must claim priority to the first filed application.

Publication of Patent Applications

Most patent applications are published 18 months from the earliest priority date under any claim of foreign or domestic priority. The publication statute applies to any application filed on or after Nov 29, 2000 (including CPA, not including RCE). For earlier filed applications, the applicant may request publication.

Exceptions

  • applications that are no longer pending (issued or abandoned)
  • applications subject to a secrecy order or publication would be detrimental to national security
  • provisionals; designs; reissues

Exceptions upon request

  • must be made upon filing of application; request must certify that the invention has not been and will not be subject of a foreign patent application
  • applicant may file a petition with fee to avoid publication of a currently pending application; may not file a continuing application with a nonpublication request
  • if application is filed abroad (after nonpublication request), the applicant must notify the PTO within 45 days or application will become abandoned.

Publication format and process –

Each utility and plant application must be in condition for publication: contains filing fee and oath/declaration; specification of sufficient quality for optical character recognition; title and abstract in compliance with 1.72; drawings “acceptable” for use in the patent application publication as prior art document; and sequence listing computer-readable form.

  • If applicant wants publication to be reflected by amendment, applicant must timely file a copy of the application as amended.
  • The patent application publication will be based on the EFS copy of the application if the EFS copy is filed within the later of: 14 months from the earliest claimed priority date; or one months from the application’s actual filing date; or before the PTO has started the publication process; or within one month of the mail date of the first filing receipt indicating the application’s confirmation number.
  • The applicant must also file and EFS copy of the application: for ‘voluntary’ publication of an application pending on Nov 29, 2000; or for publication of an application as redacted; or for republication of an application.
  • If drawings are ‘acceptable,’ applicant may submit better quality drawings for publication with: an EFS copy of the application; or a petition within the later of 14 months from the earliest claimed priority date or one month from the actual filing date of application.

{ 17 comments… read them below or add one }

1 patentbarNo Gravatar December 3, 2007 at 12:14 am

Conversion of a provisional application to a nonprovisional application will have an adverse effect on patent term because the term will be measured from at least the filing date of the provisional application. To avoid the adverse effect, applicant can file a nonprovisonal application claiming the benefit of the provisional application under 35 USC 119(e).

Reply

2 YoungNo Gravatar October 22, 2010 at 2:59 pm

I am confused on this issue as follows, would you please make it clear, thanks.


In the situation where a nonprovisonal application claiming the benefit of the provisional application, the priority date should be the filing date.

In the situation where a nonprovisional application is converted from a provisional application, the priority date is still the filing date.

I did not see any adverse effect on patent term in the latter case.

Reply

3 EstoppedNo Gravatar June 19, 2012 at 8:08 pm

You are confusing the priority date and the date that is marking the start of the patent term.

If you file a provisional application, then 6 months later file a nonprovisional claiming the benefit of the provisional, your patent would last 20 years from the nonprovisional filing date.

If you file a provisional application, then convert it to a nonprovisional, your priority date would still be the filing date of the provisional application, but your patent term would last 20 years from the filing of the PROVISIONAL application, and thus be 6 months shorter than if you filed a separate nonprovisional application.

4 patentbarNo Gravatar December 3, 2007 at 12:15 am

CPA designs limitation went into effect July 14, 2003. MPEP 201.06(d).

Reply

5 VCNo Gravatar March 16, 2010 at 12:29 pm

MPEP 1502.01(I):
*>Effective July 14, 2003, continuedonly(see 37 CFR 1.53(d)(1)(i)). Prior to July 14, 2003, CPA practice was< available for utility and plant applications only where the prior application has a filing date prior to May 29, 2000 **.

Reply

6 patentbarNo Gravatar December 4, 2007 at 11:52 pm

On the exam: correction of inventorship via reissue.

Reply

7 patentbarNo Gravatar March 7, 2008 at 9:09 pm

Multiple Dependant Claims – Dependant claims refer back in the alternative to two or more claims. A multiple dependant claim may not may not depend on another multiple dependant claim, nor can it refer to different sets of claims (e.g., apparatus and process).

Reply

8 patentbarNo Gravatar March 7, 2008 at 9:28 pm

Status of Applications -
A new application has not received an action by the USPTO examiner (first action).
A rejected application is a nonprovisional application that contains an unanswered UPSTO action.
An amended application is a nonprovisional application where the applicant responds to a office action.
An abaondoned application has either been formally abandoned or the applicant does not take the proper action at some point during prosecution (misses a deadline).
An incomplete application lacks essential parts and is not accepted by the USPTO.

Reply

9 littleyellowduckNo Gravatar June 20, 2011 at 1:59 pm

Pete has an issued patent that claims priority to Application D.

I don’t understand which one is prior, the issued patent or application D?

Reply

10 littleyellowduckNo Gravatar June 27, 2011 at 12:58 pm

Please see the following scenario

Mary wants to apply a patent for her invention and she wants her patent expires as far as possible in the future. Her invention was described in a magazine almost one year ago. The most appropriate action would be:

A. File a provisional application before the one year anniversary of the publication. File non-provisional application before the one year anniversary of the provisional application claiming the priority of the provisional application.

Reply

11 littleyellowduckNo Gravatar July 13, 2011 at 2:48 pm

the priority period of provisional or foreign application is not measured in patent term, right?

Reply

12 Little yellow duckNo Gravatar August 1, 2011 at 7:09 pm

Can a utility application which claims the benefit of a provisional application contain subject matter that is not included in the provisional application?

Reply

13 BigBadVoodoDaddyNo Gravatar August 2, 2011 at 9:30 am

Yes – its almost like a CIP (not quite). But the new matter will not get the benefit of the earlier filing date – obviously. For example one could have an improved embodiment, however the improvement was not described in the provisional and hence cant benefit from the date. However people do it all the time for that very reason – since a narrower embodiment (improvement or a species) may be easier to get a a patent on, while the parent (broader embodiment and common features) can sucessfully avoid the prior art because of its earlier priority date.

Reply

14 littleyellowduckNo Gravatar August 2, 2011 at 10:02 am

Thank you so much. I have another question. Why 102(b) rejection cannot be overcome by 119 a-d priority?

Reply

15 BigBadVoodoDaddyNo Gravatar August 2, 2011 at 10:16 pm

119 a-d deals with foreign filing and foreign priority. 102 b deals with prior art one year or more before****FILING IN THIS COUNTRY******. So in effect if there is prior art more than one year prior to filing in the US – its there, showing a prior filing in another country still does not overcome the fact that it was there for a year before you filed in the US. thats why 102 b is a problem.

16 FrancisNo Gravatar February 24, 2013 at 2:08 pm

Can a substitute application contain new matter? If not, what’s the purpose of filing a substitute application instead of a new application – given that the latter gives you a lot of freedom?

Reply

17 JulieNo Gravatar April 11, 2013 at 9:45 am

I guest it is about filling date, right?

Reply

Leave a Comment

Previous post:

Next post: