You are here:  Ed9 10.2019 Guidebook  » Chapter 200

201.05   Reissue Application

MPEP SECTION SUMMARY A reissue application is an application for a patent that will take the place of an unexpired patent that is defective.

MPEP SECTION SUMMARY This section describes divisional applications which cover instances when an inventor initially tries to patent an invention that is actually two or more separate inventions. In this instance, he or she will be required to cut out some of the claims from the original patent application. If he or she still wants to patent the invention(s) that were cut out, a separate application called a divisional application should be filed. The divisional application will have the same filing date as the original (now known as the parent) application.

 

  Section Frequency Chart

A divisional application is 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.

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 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."

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.

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).

MPEP SECTION SUMMARY 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).

MPEP SECTION SUMMARY 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.

MPEP SECTION SUMMARY 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.

  Section Frequency Chart

 

 

I. 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.

• 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.

• 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.

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.

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 and at least one claim, and any drawing required.

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 are also required 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.
• 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 identifying each inventor by his or her 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 are also required 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.

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) to avoid the need for a petition to accept an unintentionally delayed claim and the petition fee, and the issuance of a filing receipt that does not indicate that the application is a continuation, divisional, or continuation-in-part.

II.   OATH/DECLARATION

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, the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application.

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 or the substitute statement is in compliance.

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.

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 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.

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, 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.

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.

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.

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.

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.

For applications filed prior to September 21, 2004, the incorporation by reference statement may appear in the transmittal letter or in the specification.

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 37 CFR 1.57(b).

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).

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

A. 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.

B. 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).

V.   INVENTORSHIP

A. 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, or a substitute statement, 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 (1) is an original inventor of the claimed invention; and (2) authorized the filing of the patent application for the claimed invention.

B. Applications Filed Prior to September 16, 2012

For applications filed prior to September 16, 2012, Applicant has the option of filing:

• (A) a newly executed oath or declaration signed by the inventors for the continuation or divisional application; or
• (B) a copy of the oath or declaration filed in the prior application accompanied by a statement from applicant, applicant’s representative or other authorized party requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application.

Where the continuation or divisional application and a copy of the oath or declaration from the prior application are filed without a statement from an authorized party requesting deletion of the names of any person or persons named in the prior application, the continuation or divisional application will be treated as naming as inventors the person or persons named in the copy of the executed oath or declaration from the prior application.

VI.   SUBSTITUTE STATEMENT AND RULE 47 ISSUES

A. Substitute Statement

A newly executed substitute statement is not required 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 37 CFR 1.78 of an earlier-filed application, provided 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 substitute statement showing the signature or an indication thereon that it was executed is submitted in the continuing application.

B. Pre-AIA 37 CFR 1.47 Issues

For applications filed prior to September 16, 2012, pre-AIA 37 CFR 1.63(d)(3) provides for the situation in which 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 37 CFR 1.47. 37 CFR 1.63(d)(3)(i) requires that the copy of the executed oath or declaration must be accompanied by a copy of any decision granting a petition to accord 37 CFR 1.47 status to such application, unless all nonsigning inventor(s) or legal representative have filed an oath or declaration to join in an application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121 or 365(c).

It is important to note that if the filing date of the continuing application is on or after September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012, even though the continuing application may claim the benefit of an application filed before September 16, 2012.

• Specifically, the inventor’s oath or declaration in the continuing application filed on or after September 16, 2012, 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.
  

VII.   CHANGE OF ATTORNEY/CORRESPONDENCE ADDRESS

For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:

• The power of attorney was granted by the inventor; and
  
• The continuing application names an inventor who was not named as an inventor in the prior application.

With respect to the correspondence address for applications filed on or after September 16, 2012, 37 CFR 1.33(f) provides that where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted.

For applications filed prior to September 16, 2012, pre-AIA 37 CFR 1.63(d)(4) provides that 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.


VIII.   SMALL ENTITY OR MICRO ENTITY STATUS

If small entity status has been established in a parent application and is still proper and desired in a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.53(b), a new assertion as to the continued entitlement to small entity status under 37 CFR 1.27 is required.

The refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), requires a new certification of entitlement to micro entity status in the continuing application.

IX.   COPIES OF AFFIDAVITS

Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b).

X.   EXTENSIONS OF TIME

If an extension of time is necessary to establish continuity between the prior application and the continuing application filed under 37 CFR 1.53(b), the petition for an extension of time must be filed as a separate paper directed to the prior nonprovisional application.

XI.   ABANDONMENT OF THE PRIOR NONPROVISIONAL APPLICATION

Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically abandoned upon filing of the continuing application.

• A registered patent practitioner not of record acting in a representative capacity under 37 CFR 1.34 may also expressly abandon a prior nonprovisional application as of the filing date granted to a continuing application when filing such a continuing application.
  

XII.   EXAMINATION

Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

 

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