37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure

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USPTO MPEP › Chapter 0200 - Types and Status of Application; Benefit and Priority Claims › MPEP § 201.06(c)

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Text

37 CFR 1.53 Application number, filing date, and

completion of application.

[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

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.

*****

37 CFR 1.53 (pre-PLT) Application number, filing date, and

completion of application.

[Editor Note: Applicable to patent applications filed under

U.S.C. 111 (pre-PLT)

before December 18, 2013.]

*****

im 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 (pre-PLT) Application number, filing date, and

completion of application.

[Editor Note: Applicable to patent applications filed under

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

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

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.

*****

IN GENERAL

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

nuation or divisional application naming

an inventor not named in the prior application must be filed under

this paragraph.

*****

IN GENERAL

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

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

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.

U.S.C. 171(c)

. In addition, as provided in

35 U.S.C.

111(c)

, a nonprovisional application filed under

U.S.C

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.

U.S.C. 171(c)

. In addition, as provided in

35 U.S.C.

111(c)

, a nonprovisional application filed under

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)

.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

CFR 1.78(d)(2)

, the Office will process the application as a

new non-continuing application

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

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.

II.

OATH/DECLARATION

37 CFR 1.63 Oath or Declaration.

[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

[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)

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

*****

37 CFR 1.63 (pre-AIA) Oath or Declaration.

[Editor Note: Not applicable to patent applications filed under

35 U.S.C. 111

363

, or

385

on or after

September 16, 2012.]

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

*****

37 CFR 1.63 (pre-AIA) Oath or Declaration.

[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:

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

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.

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

mitted 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

1.64

in effect for applications filed on or after September

16, 2012

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

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.

III.

SPECIFICATION AND DRAWINGS

A continuation or divisional application may be

filed under

35 U.S.C

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.

III.

SPECIFICATION AND DRAWINGS

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

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

fit 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

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

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

iled. 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 and corrected drawings may include some or all of the amendments

entered during the prosecution of the prior application(s), as well as additional

amendments submitted for clarity or contextual purposes, and a new set of claims.

In order to have a patent application publication of a continuation or divisional

application contain only a desired set of claims, rather than the set of claims in

the prior application, it is strongly recommended that the continuation or

divisional application be filed under

37 CFR 1.53(b)

with a new

specification containing only the desired set of claims.

See subsection II, above and

MPEP §

602.05

et seq

o have a patent application publication of a continuation or divisional

application contain only a desired set of claims, rather than the set of claims in

the prior application, it is strongly recommended that the continuation or

divisional application be filed under

37 CFR 1.53(b)

with a new

specification containing only the desired set of claims.

See subsection II, above and

MPEP §

602.05

et seq.

for requirements pertaining to filing a copy of an oath

or declaration from a prior application in a continuing application.

IV.

INCORPORATION BY REFERENCE

An applicant may incorporate by reference the prior

application by including, in the continuing application-as-filed, an explicit

statement that such specifically enumerated prior application or applications are

“hereby incorporated by reference.” The statement must appear in the

specification. See

37 CFR 1.57(c)

and

MPEP §

608.01(p)

. The inclusion of this incorporation by

reference statement will permit an applicant to amend the continuing application

to include subject matter from the prior application(s), without the need for a

petition provided the continuing application is entitled to a filing date

notwithstanding the incorporation by reference. For applications filed prior to

September 21, 2004, the incorporation by reference statement may appear in the

transmittal letter or in the specification. Note that for applications filed prior

to September 21, 2004, if applicants used a former version of the transmittal

letter form provided by the USPTO, the incorporation by reference statement could

only be relied upon to add inadvertently omitted material to the continuation or

divisional application.

For applications filed on or after September 21,

2004, a claim under

35 U.S.C

the specification. Note that for applications filed prior

to September 21, 2004, if applicants used a former version of the transmittal

letter form provided by the USPTO, the incorporation by reference statement could

only be relied upon to add inadvertently omitted material to the continuation or

divisional application.

For applications filed on or after September 21,

2004, a claim under

35 U.S.C. 120

121

365(c)

, or

386(c)

and

37 CFR 1.78(d)

for benefit of

a prior-filed nonprovisional application, international application designating

the United States, or international design application designating the United

States that was present on the filing date of the continuing application is

considered an incorporation by reference of the prior-filed application as to

inadvertently omitted material, subject to the conditions and requirements of

CFR 1.57(b)

. Note that pursuant to

37 CFR

1.57(b)(4)

, any amendment to an international design

application pursuant to

37 CFR 1.57(b)(1)

is effective

only as to the United States and will only be acted upon after the international

design application becomes a nonprovisional application.

Effective December 18, 2013,

37 CFR

1.57(b)

was amended to contain the provisions of former

37 CFR

1.57(a)

. The purpose of

37 CFR

1.57(b)

is to provide a safeguard for applicants when all or

a portion of the specification and/or drawing(s) is (are) inadvertently omitted

from an application. For applications filed on or after September 21, 2004,

applicants are encouraged to provide an explicit incorporation by reference

statement to the prior-filed application(s) for which benefit is claimed under

35 U.S.C.

120

if applicants do not wish the incorporation by reference

to be limited to inadvertently omitted material pursuant to

37 CFR

1.57(b)

. See

37 CFR 1.57(c)

and

MPEP §

608.01(p)

for discussion regarding explicit

incorporation by reference. See

MPEP §

217

for more detailed information pertaining to

incorporation by reference pursuant to

37 CFR

1.57(b)

) for which benefit is claimed under

35 U.S.C.

120

if applicants do not wish the incorporation by reference

to be limited to inadvertently omitted material pursuant to

37 CFR

1.57(b)

. See

37 CFR 1.57(c)

and

MPEP §

608.01(p)

for discussion regarding explicit

incorporation by reference. See

MPEP §

217

for more detailed information pertaining to

incorporation by reference pursuant to

37 CFR

1.57(b)

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 (see

35 U.S.C. 132(a)

). If an

incorporation by reference statement is included in an amendment to the

specification to add a benefit claim under

35 U.S.C. 120

after the filing

date of the application, the amendment would not be proper. When a benefit claim

under

U.S.C. 120

is submitted after the filing of an application,

the reference to the prior application cannot include an incorporation by

reference statement of the prior application. See

Dart Indus. v.

Banner,

636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980).

Mere reference to another application, patent, or

publication is not an incorporation of anything therein into the application

containing such reference for the purpose of the disclosure required by

U.S.C. 112(a)

In re de Seversky,

474

F.2d 671, 177 USPQ 144 (CCPA 1973). See

MPEP § 608.01(p)

. As noted above,

however, for applications filed on or after September 21, 2004,

37 CFR

1.57(b)

provides that a claim for the benefit of a

prior-filed application under

37 CFR 1.78

is considered an

incorporation by reference as to inadvertently omitted material. See

MPEP § 217

Application NOT Entitled to a Filing Date

Material needed to accord an application a filing

date may not be incorporated by reference unless an appropriate petition under

37 CFR

1.53(e)

or under

37 CFR 1.182

is granted.

Until such a petition has been granted, the application will

not

be entitled to a filing date

incorporation by reference as to inadvertently omitted material. See

MPEP § 217

Application NOT Entitled to a Filing Date

Material needed to accord an application a filing

date may not be incorporated by reference unless an appropriate petition under

37 CFR

1.53(e)

or under

37 CFR 1.182

is granted.

Until such a petition has been granted, the application will

not

be entitled to a filing date.

For an application filed on or after September

21, 2004, if the material needed for a filing date is completely contained

within a prior-filed application to which benefit is claimed, applicant may

file a petition under

37 CFR 1.53(e)

along with

the fee set forth in

37 CFR 1.17(f)

and an

amendment with the inadvertently omitted material requesting that the amendment

be entered and the application be accorded a filing date as of the original

date of deposit of the application papers. See

37 CFR

1.57(b)(3)

and

MPEP §

217

In an application containing an explicit

incorporation by reference statement in the specification or in a transmittal

letter (if the transmittal letter was filed prior to September 21, 2004), a

petition for the granting of a filing date may be made under

37 CFR

1.182

. A petition under

37 CFR

1.182

and the required petition fee, including an

amendment submitting the necessary omitted material, requesting that the

necessary omitted material contained in the prior application and submitted in

the amendment, be included in the continuation or divisional application based

upon the incorporation by reference statement, is required in order to accord

the application a filing date as of the date of deposit of the continuing

application. An amendment submitting the omitted material and relying upon the

incorporation by reference will not be entered in the continuing application

unless a decision granting the petition states that the application is accorded

a filing date and that the amendment will be entered.

nt, is required in order to accord

the application a filing date as of the date of deposit of the continuing

application. An amendment submitting the omitted material and relying upon the

incorporation by reference will not be entered in the continuing application

unless a decision granting the petition states that the application is accorded

a filing date and that the amendment will be entered.

Application Entitled to a Filing Date

If a continuing application as originally filed on

or after September 21, 2004 does not include an explicit incorporation by

reference statement and is entitled to a filing date despite the inadvertent

omission of a portion of the prior application(s), applicant may be permitted

to add the omitted material by way of an amendment under

37 CFR

1.57(b)

. Such an amendment must be made within any time

period set by the Office. See

37 CFR 1.57(b)(1)

If an application as originally filed included a

proper explicit incorporation by reference statement (or an explicit

incorporation by reference statement that has been made effective under

37 CFR

1.57(h)

), the omitted specification page(s) and/or

drawing figure(s) may be added by amendment provided the omitted item(s)

contains only subject matter in common with a document that has been properly

incorporated by reference. If the Office identified the omitted item(s) in a

“Notice of Omitted Item(s),” applicant must respond to the “Notice of Omitted

Item(s)” by filing an appropriate amendment. See

MPEP §§

601.01(d)

and

601.01(g)

INVENTORSHIP IN A CONTINUING APPLICATION

amendment provided the omitted item(s)

contains only subject matter in common with a document that has been properly

incorporated by reference. If the Office identified the omitted item(s) in a

“Notice of Omitted Item(s),” applicant must respond to the “Notice of Omitted

Item(s)” by filing an appropriate amendment. See

MPEP §§

601.01(d)

and

601.01(g)

INVENTORSHIP IN A CONTINUING APPLICATION

Applications Filed On or After September 16, 2012

For applications filed on or after September 16,

2012, the filing of a continuing application by all or by fewer than all of the

inventors named in a prior application without a newly executed oath or

declaration is permitted provided that an oath or declaration in compliance

with

CFR 1.63

, or a substitute statement under

37 CFR

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. Note,

in order to submit a copy of the inventor’s oath or declaration from the

earlier-filed application into a continuation or divisional application filed

on or after September 16, 2012, the oath or declaration from the earlier-filed

application must comply with the requirements of

35 U.S.C.

115

as revised effective September 16, 2012.

Specifically, the inventor’s oath or declaration must state that the inventor

submit a copy of the inventor’s oath or declaration from the

earlier-filed application into a continuation or divisional application filed

on or after September 16, 2012, the oath or declaration from the earlier-filed

application must comply with the requirements of

35 U.S.C.

115

as revised effective September 16, 2012.

Specifically, the inventor’s oath or declaration must state that the inventor

(1) is an original inventor of the claimed invention; and (2) authorized the

filing of the patent application for the claimed invention. The inventor’s oath

or declaration also must contain an acknowledgement that any willful false

statement made in such declaration is punishable under

section

1001

of U.S. Code title 18 by fine or imprisonment of not

more than 5 years, or both.

37 CFR

1.63(d)(2)

provides that 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 the copy of the inventor’s oath or declaration is

accompanied by a statement signed pursuant to

37 CFR

1.33(b)

stating the name of each inventor in the

continuing application.

37 CFR 1.63(d)(3)

provides

that any new joint inventor named in the continuing application must provide an

oath or declaration in compliance with

37 CFR 1.63

, except as

provided for in

37 CFR 1.64

CFR 1.63(f)

provides that with respect to an application

naming only one inventor, any reference to the inventor's oath or declaration

in this chapter includes a substitute statement executed under

37 CFR

1.64

)(3)

provides

that any new joint inventor named in the continuing application must provide an

oath or declaration in compliance with

37 CFR 1.63

, except as

provided for in

37 CFR 1.64

CFR 1.63(f)

provides that with respect to an application

naming only one inventor, any reference to the inventor's oath or declaration

in this chapter includes a substitute statement executed under

37 CFR

1.64

. With respect to an application naming more than one

inventor, any reference to the inventor's oath or declaration in this chapter

means the oaths, declarations, or substitute statements that have been

collectively executed by or with respect to all of the joint inventors, unless

otherwise clear from the context.