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Application Types:

MPEP 200


Nonprovisional:

  • Contains at least 1 claim.
  • Is not abandoned after 12 months.
  • Requires an oath or declaration.


Provisional:

  • Contains no claims.
  • Is abandoned after 12 months.
  • No oath or declaration is required.


Conversion of nonprovisional to a provisional application:

  • Requires a petition under 37 C.F.R. 1.53(c)(2) and a fee.
  • The nonprovisional will become a provisional application and will keep the original filing date of the nonprovisional.


Conversion of provisional to a nonprovisional application:

Rules governing the conversion of a provisional application to a nonprovisional application:

  • In the case of a successful conversion, there is only one application and that application has a single filing date, the filing date of the provisional application.
  • The conversion of a provisional application to a nonprovisional application will adversely impact on the term of any patent to issue from the application.
  • The conversion of a provisional application to a nonprovisional will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application.

An applicant having filed a provisional application can avoid any adverse patent term impact resulting from converting the provisional application to a nonprovisional application by instead filing a nonprovisional claiming the benefit of the provisional application under 35 U.S.C. 119(e).

For a nonprovisional application to properly claim the benefit of the filing date of a provisional application, the provisional application must be entitled to a filing date and the basic filing fee must be paid within the time period set forth.

Continuation Application:

If a patent examiner rejects one or more of the claims filed in an original application, a continuation application may be filed within three months of the rejection:

A continuation requires a new fee, newly written claims and receives a new filing date:

  • However, the original filing date will be used to determine any prior art disputes.
  • The same subject matter is included in both.
    • No new matter is acceptable.

Rules governing continuation applications:

  • A continuation may be filed during the pendency of the parent.
  • A continuation need only have one inventor in common.

A continuation application may be filed under 35 U.S.C. 111(a) by providing a new specification and drawings and a newly executed declaration provided the new specification and drawings do not contain any subject matter that would have been considered new matter in the prior application.

A continuation application may:

  • Be a second, third, etc. application by the same applicant for the same invention.
  • Be filed under 37 C.F.R. 1.53(b) or (d).
  • Be filed before the parent application becomes abandoned.


Continuation-In-Part Application (CIP):

If an inventor makes improvements after he or she files the original application, he or she may file a continuation-in-part application to cover the improvements:

  • The new material will have the filing date of the CIP application while the old material will still retain the filing date of the original application.
  • For continuation-in-part applications:
    • The first application must be copending and the CIP will retain the earlier filing date.
    • The CIP contains new matter over the patent application.
    • Some substantial portion of all of the earlier applications is repeated.
    • Some new matter is added.
    • A fresh set of papers with a new oath must be sent.
    • They must be filed before the parent application becomes abandoned.
    • There is some new subject matter involved.
    • They may be filed under 37 C.F.R. 1.53(b).

Continued Prosecution Application (CPA):

A continuation application of a prior nonprovisional application claiming a design may be filed as a continued prosecution application.

Continued prosecution applications are filed under 37 C.F.R. 1.53(d):

  • These have the same serial number as its parent although no reference to the parent is inserted into the specification.
  • They cannot be filed for provisional applications.
  • They can be filed for PCT applications if they are in the national stage.