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201.06(d)   37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice

MPEP SECTION SUMMARY This section discusses 37 C.F.R. 1.53(d), CPA practice in detail. CPA practice is not allowed for utility and plant applications, only design applications. CPA's are treated as amended applications as of the filing date of the CPA. This section covers conditions for filing CPA's, signature requirements, filing date details, small entity/microentity status, extensions of time, inventorship, and examination of CPA's including the benefit of earlier filing date, terminal disclaimers, prior election, information disclosure statements and preliminary amendments, copies of affidavits, and public access to CPA's.

  Section Frequency Chart

 

I.   CPA PRACTICE HAS BEEN ELIMINATED AS TO UTILITY AND PLANT APPLICATIONS

Effective July 14, 2003, continued prosecution application (CPA) practice has been eliminated as to utility and plant applications.

• Applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE) under 37 CFR 1.114.

A. Applications Filed on or After June 8, 1995

If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 will be treated as a request for continued examination (RCE) under 37 CFR 1.114.

Applicants cannot, as a matter of right, obtain continued examination on claims that are independent and distinct from the invention previously claimed (i.e., applicants cannot switch inventions when filing an RCE).

Therefore, if applicants file a request for a divisional CPA on or after July 14, 2003 and the request satisfies all the requirements in 37 CFR 1.114 (e.g., the request is accompanied by the fee and a submission), the Office will treat the improper divisional CPA as a proper RCE.

• However, any amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention will be treated as nonresponsive.
• Any newly submitted claims that are directed to an invention distinct from and independent of the invention previously claimed will be withdrawn from consideration.

B. Applications Filed Before June 8, 1995

If a utility or plant application has a filing date before June 8, 1995, the Office cannot treat an improper CPA filed on or after July 14, 2003 as an RCE because RCE practice does not apply to applications filed before June 8, 1995.

II. FILING AND INITIAL PROCESSING OF CPAs FOR DESIGN APPLICATIONS

A. In General

In addition to the provisions of 37 CFR 1.53(b), a continuation or divisional (but not a continuation-in-part) application may be filed under 37 CFR 1.53(d) if the prior application is a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet.

A continuation or divisional application filed under 37 CFR 1.53(d) is called a “Continued Prosecution Application” or “CPA.”

A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b).

• For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b).
• In addition, the Office will not normally issue a new filing receipt for a CPA. See 37 CFR 1.54(b).
• The time delay between the filing date and the first Office action should be less for a CPA than for an application filed under 37 CFR 1.53(b).

For examination priority purposes only, the USPTO will treat continuation CPAs as if they were “amended” applications (as of the CPA filing date) and not as “new” applications.

A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA.

• Therefore, where the prior application is not to be abandoned, any continuation or divisional application must be filed under 37 CFR 1.53(b).

Since no new matter may be introduced in a CPA, the procedure set forth in 37 CFR 1.53(d) is not available for filing a continuation-in-part application.

• All continuation-in-part applications must be filed under 37 CFR 1.53(b) and a newly executed oath or declaration is required.

Under the CPA procedure, the continuation or divisional application will utilize the file wrapper and contents of the prior nonprovisional application, including the specification, drawings and oath or declaration from the prior nonprovisional application, and will be assigned the same application number as the prior nonprovisional application.

A CPA may be based on a prior CPA so long as the prior CPA is complete under 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the prior CPA contained an application data sheet indicating the name, residence, and mailing address of each inventor) and is a design application.

Under 37 CFR 1.53(d), the specification, claims, and drawings, and any amendments entered in the prior nonprovisional application are used in the CPA.

• A new basic filing fee, search fee, and examination fee are required

The original disclosure of a CPA is the same as the original disclosure of the parent non-continued prosecution application and amendments entered in the parent application(s).

• However, any subject matter added by amendment in the parent application which is deemed to be new matter in the parent application will also be considered new matter in the CPA.
• No amendment filed in a CPA, even if filed on the filing date of the CPA, may include new matter.

If application papers for a design application are in any way designated as a CPA filing under 37 CFR 1.53(d) (e.g., contain a reference to 37 CFR 1.53(d), CPA, or continued prosecution application), the application papers will be treated by the Office as a CPA filed under 37 CFR 1.53(d), even if the application papers also contain other inconsistent designations (e.g., if the papers are also designated as an application filed under 37 CFR 1.53(b) or include a reference to a “continuation-in-part CPA”).

• If application papers for a utility or plant application are in any way designated as a CPA filing under 37 CFR 1.53(d), the application papers will be treated as a request for continued examination (RCE) under 37 CFR 1.114.

B. Conditions for Filing a CPA

A continuation or divisional application may be filed under 37 CFR 1.53(d), if the prior nonprovisional application is a design application, but not an international design application.

The term “prior nonprovisional application” in 37 CFR 1.53(d)(1) means the nonprovisional application immediately prior to the CPA.

A complete application as defined by 37 CFR 1.51(b) must contain, inter alia, the appropriate filing fee (including the basic filing fee, search fee, and examination fee) and a signed oath or declaration under 37 CFR 1.63(d).

• If the CPA is filed on or after September 16, 2012, the inventor’s oath or declaration is not required to have been filed in the prior application if the prior application contains an application data sheet indicating the name, residence, and mailing address of each inventor.
• The inventor’s oath or declaration must be submitted no later than payment of the issue fee.

In addition, a continuation or divisional application filed under 37 CFR 1.53(d) must be filed before the earliest of:

• (A) payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application;
• (B) abandonment of the prior application; or
• (C) termination of proceedings on the prior application.

Request for continued examination (RCE) practice under 37 CFR 1.114 is not available in design applications.

Any improper RCE filed in a design application will not be treated as a CPA.

• An improper RCE filed in a design application will not toll the running of any time period for reply.

D. Incorrect Patent Application Number Identified

A request for a CPA must identify the prior nonprovisional application by application number (series code and serial number) or by serial number and filing date.

In addition to identifying the application number of the prior application, applicant is urged to furnish in the request for a CPA the following information relating to the prior application to the best of his or her ability:

• (A) title of invention;
• (B) name of applicant(s); and
• (C) correspondence address.

E. Signature Requirement

A CPA request filed on or after September 16, 2012, must be signed by:

• A patent practitioner of record appointed in compliance;
  
• A patent practitioner not of record who acts in a representative capacity; or
  
• The applicant.

Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.

A CPA request filed prior to September 16, 2012, must be signed by

• A patent practitioner of record appointed in compliance;
  
• A patent practitioner not of record who acts in a representative capacity;
  
• An assignee; or
  
• All of the applicants for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application.

In a joint application with no attorney or agent, all applicants must sign the CPA request in order for the CPA request to be considered properly signed.

F. Filing Date

The filing date of a CPA is the date on which a request for a CPA on a separate paper for a CPA is filed.

The Certificate of Mailing Procedure does not apply to filing a request for a CPA, since the filing of such a request is considered to be a filing of national application papers for the purpose of obtaining an application filing date

G. Filing Fee

Where a filing date has been assigned to a CPA, but the basic filing fee, search fee, and examination fee are insufficient or have been omitted, applicant will be so notified by the Office and given a period of time in which to file the missing fee(s) and to pay the surcharge in order to prevent abandonment of the application.

H. Small Entity or Micro Entity Status

Small entity status established in the parent application does not automatically carry over to a CPA.

• Status as a small entity must be specifically established in every application in which the status is available and desired.

I. Extensions of Time

If an extension of time is necessary to establish continuity between the prior application and the CPA, the petition for extension of time should be filed as a separate paper directed to the prior nonprovisional application.

K. Inventorship

The inventive entity set forth in the prior nonprovisional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the CPA.

The statement requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application must be signed by person(s) authorized to sign an amendment in the continuation or divisional application.

For applications filed on or after September 16, 2012, the statement must be signed by:

• A patent practitioner of record appointed in compliance;
  
• A patent practitioner not of record who acts in a representative capacity; or
  
• The applicant.

Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.

For applications filed prior to September 16, 2012, the statement must be signed by:

• A patent practitioner of record appointed in compliance;
  
• A patent practitioner not of record who acts in a representative capacity;
  
• An assignee; or
  
• All of the applicants for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application.

III. EXAMINATION OF CPAs

A. Benefit of Earlier Filing Date

A request for a CPA is a specific reference under 35 U.S.C. 120 to every application assigned the application number identified in the request, and 37 CFR 1.78(d)(4) provides that a request for a CPA is the specific reference under 35 U.S.C. 120 to the prior application.

Where an application claims a benefit under 35 U.S.C. 120 of a chain of applications, the application must make a reference to the first (earliest) application and every intermediate application.

In the situation in which there is a chain of CPAs, each CPA in the chain will contain the required specific reference to its immediate prior application, as well as every other application assigned the application number identified in such request.

A specific reference to a CPA by application number and filing date will constitute a specific reference to:

• (A) the non-continued prosecution application originally assigned such application number (the prior application as to the first CPA in the chain); and
• (B) every CPA assigned the application number of such non-continued prosecution application.

As a CPA uses the application file of the prior application, a specific reference in the prior application (as to the CPA) will constitute a specific reference in the CPA, as well as every CPA in the event that there is a chain of CPAs.

Where an applicant in an application filed under 37 CFR 1.53(b) seeks to claim the benefit of a CPA under 35 U.S.C. 120 or 121 (as a continuation, divisional, or continuation-in-part), 37 CFR 1.78(d)(2) requires a reference to the CPA by application number in an application data sheet or, for applications filed before September 16, 2012, in the first sentence of the specification.

B. Terminal Disclaimer

A terminal disclaimer filed in the parent application carries over to a CPA.

C. Prior Election

An election in reply to a restriction requirement made in the prior application carries over to the CPA only if all of the following conditions are met:

• The CPA is designated as a continuation or is not designated at all (i.e., the CPA is NOT designated as a divisional);
• There was an express election by the applicant in reply to a restriction requirement in the prior application;
• The CPA presents claim(s) drawn only to invention(s) claimed in the prior application; and (D) the CPA does not contain an indication that a shift in election is desired.

D. Information Disclosure Statements and Preliminary Amendments

All information disclosure statements filed in the prior application that comply with the content requirements will be considered in a CPA by the examiner.

All information disclosure statements that comply with the content requirements of 37 CFR 1.98 and are filed before the mailing of a first Office action on the merits will be considered by the examiner, regardless of whatever else has occurred in the examination process up to that point in time.

E. Copies of Affidavits

Affidavits and declarations, such as those under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application, automatically become a part of the CPA.

IV. PUBLIC ACCESS TO CPAs

A. Waiver of Confidentiality

A CPA is construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file.

B. Certified Copy

A certified copy of a CPA will be prepared by the Certification Branch upon request.

 

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