Application Types
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This is the 10.2019 version. |
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Types, Cross-Noting and Status of Application |
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Parts, Form and Content of Application |
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This section lays out details of provisional applications filed on or after September 16, 2012 along with general information. For instance, claims and the oath or declaration are not required in provisional applications. This section also details how to convert nonprovisional to provisional applications and provisional to nonprovisional applications.
Converting a provisional to a nonprovisional is not recommended because the term of any patent issuing from the application will be measured from at least the filing date of the prior application. As an alternative, it is recommended to claim the benefit of the provisional application.
This section lays out details of 37 C.F.R. 1.53(b) including application types filed under the statute and the requirements for completeness. There are differences in the requirements for applications filed under 37 C.F.R. 1.53(b) before and after 9/16/12. These differences are discussed as well as details of the oath or declaration along with the specification and drawings.
In addition, this section covers incorporating by reference the prior application, inventorship, substitute statements, changing the attorney correspondence address, small entity or microentity status, copies of affidavits, extensions of time, abandonment of the prior nonprovisional application and examination.
A continuation is a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented. This section covers details on continuation applications.
This section discusses continuation-in-part (C-I-P) applications in detail. These applications may be filed if an inventor makes improvements after he or she has filed the original application. The new material will have the filing date of the CIP application while the old material will retain the filing date of the original application.
This section covers the completeness of the original application including both nonprovisional and provisional applications. A Notice of Incomplete Application will be mailed for incomplete nonprovisional applications. The filing date will not be granted until the nonprovisional application is deemed complete. In addition, no filing date will be granted for an incomplete provisional application.
Applications are deemed informal and therefore not granted a filing date for numerous reasons including if it is typed on both sides of the paper.
A discussion on filing dates for nonprovisional and provisional applications is also included in this section.
The filing date of the provisional or nonprovisional application is the date of receipt in the Office of the application which includes a specification containing description and at least one claim (required for nonprovisional applications only), and any drawings. If any of these items are missing, applicant will be notified to file them and the filing date will be the date of receipt of the missing part(s). This section further discusses filing date refusal details.
This section covers the guidelines for drafting a nonprovisional patent application including the contents for a complete nonprovisional application and the arrangement and contents of the specification. A nonprovisional application must include a specification, including claims, drawings (if necessary), an oath or declaration, and the prescribed fees.
This section also covers the guidelines for drafting a provisional application. A provisional application does not need claims and no oath or declaration is required.
This section briefly covers 37 C.F.R. 1.53, which relates to application numbers, filing dates, and the completion of applications.
This section covers details on the filing of provisional applications under 35 U.S.C. 111(b). For instance, in addition to the required components of a provisional application, a cover sheet identifying the application as a provisional application must also be filed.
This section covers the conversion from a nonprovisional application to a provisional application. The procedure essentially requires the filing of a request for conversion along with the processing fee. A discussion on the ramifications of converting a nonprovisional application to a provisional application is also included.
In addition, this section covers the conversion from a provisional application to a nonprovisional application. The procedure requires the filing of a request for the conversion of the provisional application to a nonprovisional application and the proper fee. There is also a quick statement made about how claiming the benefit of a provisional application is a better option than converting a provisional application to a nonprovisional.
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.
Filing a request for continued examination (RCE) provides a means for the applicant to continue with the prosecution of his or her application if prosecution becomes closed. Choosing an RCE is an alternative to filing a continuing application under 37 C.F.R. 1.53(b) or a CPA under 37 C.F.R. 1.53(d). This section covers RCE practice in detail.
This section discusses the suspension of an action. If an applicant waits a prolonged time for the examiner to send out an Office action, he or she may choose to file a request for a suspension of action. If it is granted, the request will cause a reduction in the patent term adjustment if any has accumulated. The reduction will be equal to the number of days beginning on the filing date for the request of the suspension of action and ending on the date of the termination of the suspension.
It would be easy to confuse a suspension of action with an extension of reply (which will be discussed next). To distinguish, a suspension of action applies to an impending Office action by the examiner while an extension of time applies to an action by the applicant.
If the examiner is taking an unduly long period of time to get back to the applicant, the applicant can file a suspension of action to gain back the time he or she lost on the patent term while waiting for the examiner to make the next move.
Since every patent is presumed valid, and since that presumption includes the presumption of operability examiners should not express any opinion on the operability of a patent.
This section covers the withdrawal or dismissal of appeal. Topics discussed include partial withdrawals, dismissal of appeal, and when claims stand allowed.
This section covers the grounds for filing a reissue application. Essentially, they are filed to correct an error in the patent, where, as a result of the error, the patent is deemed wholly or partly inoperative or invalid. The following types of errors are briefly mentioned and explained in this section; errors based on the scope of claims, inventorship errors, errors related to priority of a foreign application, errors in the benefit claim to a domestic application, and errors in drawings.
