201.08 Continuation-in-Part Application
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Section Frequency Chart
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A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.
- A continuation-in-part application may only be filed under 37 CFR 1.53(b).
- The continuation-in-part application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120 or 365(c).
A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).
The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.
A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application.
- Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.
The Office does not need to make a determination as to whether the requirement of 35 U.S.C. 120 that the earlier nonprovisional application discloses the invention of the second application in the manner provided by 35 U.S.C. 112(a) is met unless the filing date of the earlier nonprovisional application is relied upon in a proceeding before the Office.
Accordingly, an alleged continuation-in-part application should be permitted to claim the benefit of the filing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the other requirements of 35 U.S.C. 120 and 37 CFR 1.78, such as:
- The first application and the alleged continuation-in-part application were filed with the same inventor or at least one common joint inventor;
- The alleged continuation-in-part application was “filed before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application”; and
- The alleged continuation-in-part application “contains or is amended to contain a specific reference to the earlier filed application.”
- For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet.
- For applications filed prior to September 16, 2012, the specific reference must be submitted either in the first sentence(s) of the specification or in an application data sheet.
