201.06(c) 37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure [R-10.2019]

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. (See MPEP § 201.02 for substitute application.) 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. See MPEP § 601.01(a), subsection I. 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. 35 U.S.C. 171(c). 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. See MPEP § 601.01(a), subsection III.

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 pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing required by 37 CFR 1.81(a).

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 in compliance with 37 CFR 1.63 (and 37 CFR 1.64 (for a substitute statement), 37 CFR 1.175 (for a reissue) or 37 CFR 1.162 (for a plant patent)) are also required by 37 CFR 1.51(b) 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 set forth in 37 CFR 1.16(f). 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 under 37 CFR 1.76 identifying each inventor by the inventor’s 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 in compliance with 37 CFR 1.63 (and 37 CFR 1.175 (if a reissue) or 37 CFR 1.162 (if for a plant patent)) are also required by 37 CFR 1.51(b) 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 set forth in 37 CFR 1.16(f). See 37 CFR 1.53(f) and MPEP § 607.

Unless an application is submitted with a statement that the application is a continuation or divisional application, see 37 CFR 1.78(d)(2), the Office will process the application as a new non-continuing application. 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) in compliance with 37 CFR 1.78(d)(2) (i.e., in an application data sheet for an application filed on or after September 16, 2012, or in the first sentence(s) of the specification or in an application data sheet for an application filed prior to September 16, 2012) to avoid the need for a petition to accept an unintentionally delayed claim under 37 CFR 1.78(e) and the petition fee set forth in 37 CFR 1.17(m), and the issuance of a filing receipt that does not indicate that the application is a continuation, divisional, or continuation-in-part. See MPEP § 211et seq.

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 (see 37 CFR 1.5(a)), the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file. Furthermore, applicant should also label the copy of the oath or declaration with the application number of the continuation or divisional application in the event that the cover letter is separated from the copy of the oath or declaration.

A copy of the oath or declaration from a prior nonprovisional application may be filed in a continuation or divisional application even if the specification for the continuation or divisional application is different from that of the prior application, in that revisions have been made to clarify the text to incorporate amendments made in the prior application, or to make other changes provided the changes do not constitute new matter relative to the prior application. If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.

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 with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64. See 37 CFR 1.63(d)(1). It should be noted that a copy of the inventor’s oath or declaration submitted in a continuing application filed on or after September 16, 2012 must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012. For example, the inventor’s oath or declaration must include a statement that the inventor is an original inventor of the claimed application and a statement that the application was made or was authorized to be made by the person executing the oath or declaration. Accordingly, a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012. See MPEP § 602.05(a) for additional details regarding oaths or declarations in continuing applications filed on or after September 16, 2012.

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. See MPEP § 602.05(b) for additional details regarding oaths or declarations in continuing applications filed before September 16, 2012.

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. See MPEP § 211et seq.

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, see 37 CFR 1.125, 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. It is the applicant’s responsibility to review any new specification or drawings submitted for a continuation or divisional application under 37 CFR 1.53(b) to determine that it contains no new matter. For applications filed before September 16, 2012, an applicant is advised to simply file a continuing application with a newly executed oath or declaration when it is questionable as to whether the continuing application adds material that would have been new matter if presented in the prior application. In addition, for applications filed prior to September 16, 2012, if one or more claims are allowed in the continuation or divisional application which are directed to matter shown and described in the prior nonprovisional application but not claimed in the prior application, the applicant should be required to file a supplemental oath or declaration under pre-AIA 37 CFR 1.67(b). For applications filed on or after September 16, 2012, pursuant to 37 CFR 1.67(b), no supplemental oath or declaration will be required.

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. Form paragraph 2.10.01 may be used to require the applicant to correct the relationship of the applications. See MPEP § 211et seq.

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. This is important because under 35 U.S.C. 154(d), a patentee may obtain provisional rights if the invention claimed in a patent is substantially identical to the invention claimed in the patent application publication and the Office will generally publish the specification (including the claims) and drawings as filed. Filing a continuing application under 37 CFR 1.53(b) with a preliminary amendment (which makes all the desired changes to the specification, including adding, deleting or amending claims) is NOT recommended. 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. If a preliminary amendment is filed in a format that cannot be included in the publication, the Office of Patent Application Processing (OPAP) will issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes. See 37 CFR 1.115(a)(1) and 1.215. The only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125. As noted above, a continuation or divisional application filed under 37 CFR 1.53(b) may be filed with a new specification and corrected drawings, along with a copy of an oath or declaration from a prior (parent) application, provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application. Thus, the new specification and corrected drawings may include some or all of the amendments entered during the prosecution of the prior application(s), as well as additional amendments submitted for clarity or contextual purposes, and a new set of claims. In order to have a patent application publication of a continuation or divisional application contain only a desired set of claims, rather than the set of claims in the prior application, it is strongly recommended that the continuation or divisional application be filed under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.

See subsection II, above and MPEP § 602.05et seq. for requirements pertaining to filing a copy of an oath or declaration from a prior application in a continuing 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. See 37 CFR 1.57(c) and MPEP § 608.01(p). The inclusion of this incorporation by reference statement will permit an applicant to amend the continuing application to include subject matter from the prior application(s), without the need for a petition provided the continuing application is entitled to a filing date notwithstanding the incorporation by reference. For applications filed prior to September 21, 2004, the incorporation by reference statement may appear in the transmittal letter or in the specification. Note that for applications filed prior to September 21, 2004, if applicants used a former version of the transmittal letter form provided by the USPTO, the incorporation by reference statement could only be relied upon to add inadvertently omitted material to the continuation or divisional application.

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). Note that pursuant to 37 CFR 1.57(b)(4), any amendment to an international design application pursuant to 37 CFR 1.57(b)(1) is effective only as to the United States and will only be acted upon after the international design application becomes a nonprovisional application.

Effective December 18, 2013, 37 CFR 1.57(b) was amended to contain the provisions of former 37 CFR 1.57(a). The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. 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). See 37 CFR 1.57(c) and MPEP § 608.01(p) for discussion regarding explicit incorporation by reference. See MPEP § 217 for more detailed information pertaining to incorporation by reference 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 (see 35 U.S.C. 132(a)). If an incorporation by reference statement is included in an amendment to the specification to add a benefit claim under 35 U.S.C. 120 after the filing date of the application, the amendment would not be proper. When a benefit claim under 35 U.S.C. 120 is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement of the prior application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980).

Mere reference to another application, patent, or publication is not an incorporation of anything therein into the application containing such reference for the purpose of the disclosure required by 35 U.S.C. 112(a). In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). See MPEP § 608.01(p). As noted above, however, for applications filed on or after September 21, 2004, 37 CFR 1.57(b) provides that a claim for the benefit of a prior-filed application under 37 CFR 1.78 is considered an incorporation by reference as to inadvertently omitted material. See MPEP § 217.

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. Until such a petition has been granted, the application will not be entitled to a filing date.

For an application filed on or after September 21, 2004, if the material needed for a filing date is completely contained within a prior-filed application to which benefit is claimed, applicant may file a petition under 37 CFR 1.53(e) along with the fee set forth in 37 CFR 1.17(f) and an amendment with the inadvertently omitted material requesting that the amendment be entered and the application be accorded a filing date as of the original date of deposit of the application papers. See 37 CFR 1.57(b)(3) and MPEP § 217.

In an application containing an explicit incorporation by reference statement in the specification or in a transmittal letter (if the transmittal letter was filed prior to September 21, 2004), a petition for the granting of a filing date may be made under 37 CFR 1.182. A petition under 37 CFR 1.182 and the required petition fee, including an amendment submitting the necessary omitted material, requesting that the necessary omitted material contained in the prior application and submitted in the amendment, be included in the continuation or divisional application based upon the incorporation by reference statement, is required in order to accord the application a filing date as of the date of deposit of the continuing application. An amendment submitting the omitted material and relying upon the incorporation by reference will not be entered in the continuing application unless a decision granting the petition states that the application is accorded a filing date and that the amendment will be entered.

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). Such an amendment must be made within any time period set by the Office. See 37 CFR 1.57(b)(1).

If an application as originally filed included a proper explicit incorporation by reference statement (or an explicit incorporation by reference statement that has been made effective under 37 CFR 1.57(h)), the omitted specification page(s) and/or drawing figure(s) may be added by amendment provided the omitted item(s) contains only subject matter in common with a document that has been properly incorporated by reference. If the Office identified the omitted item(s) in a “Notice of Omitted Item(s),” applicant must respond to the “Notice of Omitted Item(s)” by filing an appropriate amendment. See MPEP §§ 601.01(d) and 601.01(g).

V. INVENTORSHIP IN A CONTINUING APPLICATION

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 in compliance with 37 CFR 1.63, or 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 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. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both.

37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless the copy of the inventor’s oath or declaration is accompanied by a statement signed pursuant to 37 CFR 1.33(b) stating the name of each inventor in the continuing application. 37 CFR 1.63(d)(3) provides that any new joint inventor named in the continuing application must provide an oath or declaration in compliance with 37 CFR 1.63, except as provided for in 37 CFR 1.64.

37 CFR 1.63(f) provides that with respect to an application naming only one inventor, any reference to the inventor’s oath or declaration in this chapter includes a substitute statement executed under 37 CFR 1.64. With respect to an application naming more than one inventor, any reference to the inventor’s oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.

See also MPEP § 602.01(c) regarding correction of inventorship by filing a continuing application.

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 name(s) of the person or persons who are not inventors in the continuation or divisional application. See pre-AIA 37 CFR 1.63(d) (in effect on September 15, 2012). 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 name(s) of any person or persons named in the prior application, the continuation or divisional application will be treated as naming as inventor(s) the person or persons named in the copy of the executed oath or declaration from the prior application. Accordingly, if a petition or request under 37 CFR 1.48(a) or (c) was granted in the prior application, the oath or declaration filed in a continuation or divisional application pursuant to 37 CFR 1.53(b) and pre-AIA 37 CFR 1.63(d) should be a copy of the oath or declaration executed by the added inventor(s) filed in the prior application. The statement requesting the deletion of the name(s) of the person or persons who are not inventors in the continuation or divisional application must be signed by person(s) authorized pursuant to 37 CFR 1.33(b) to sign an amendment in the continuation or divisional application.

A newly signed oath or declaration in compliance with pre-AIA 37 CFR 1.63 is required where an inventor who was not named as an inventor in the signed oath or declaration filed in the prior application is to be named in a continuation or divisional application filed under 37 CFR 1.53(b). The newly signed oath or declaration must be signed by all the inventors.

See also MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the MPEP, published in January 2018 regarding requests for correction of inventorship filed before September 16, 2012.

VI. SUBSTITUTE STATEMENT AND RULE 47 ISSUES

A.Substitute Statement

Under 37 CFR 1.63(d)(1) a newly executed substitute statement under 37 CFR 1.64 is not required under 37 CFR 1.51(b)(2) and 37 CFR 1.53(f) or under 37 CFR 1.497 and 1.1021(d) 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(s) (pursuant to 37 CFR 1.42 or 1.43) 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). 37 CFR 1.63(d)(3)(ii) also requires that where one or more, but not all, nonsigning inventor(s) or legal representative(s) (pursuant to 37 CFR 1.42 or 1.43) subsequently joins in any application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121 or 365(c), a copy of any oath or declaration filed by the inventor or legal representative who subsequently joined in such application must also accompany the copy of the executed oath or declaration.

Continuation or divisional applications filed under 37 CFR 1.53(b) prior to September 16, 2012, which contain a copy of an oath or declaration that is not signed by one of the inventors and a copy of the decision according 37 CFR 1.47 status in the prior application, should be forwarded by the Office of Patent Application Processing (OPAP) to the Office of Petitions before being forwarded to the Technology Center (TC). The Office of Petitions will mail applicant a letter stating that “Rule 47” status has been accorded to the continuation or divisional application, but will not repeat the notice to the nonsigning inventor nor the announcement in the Official Gazette. See 37 CFR 1.47(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. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both.

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:

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

Filing a copy of the power of attorney in the continuing application in all situations (even where a change in power of attorney did not occur in the prior application) will make the record clear with respect to who has power of attorney. The Office recommends that the power of attorney should be from the assignee where one exists, but for applications filed on or after September 16, 2012, the power of attorney may only be signed by the applicant (see 37 CFR 1.42) or patent owner (for reissue applications).

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. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.

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. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney or correspondence address which occurred during the prosecution of the prior 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. See MPEP § 509.03.

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. See 37 CFR 1.29(e) and MPEP § 509.04.

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). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declaration filed in the prior nonprovisional application.

Use form paragraph 2.03 for instructions to applicant concerning affidavits or declarations filed in the prior application.

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. Under 37 CFR 1.136(a)(3), an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time for its timely submission. A continuing application filed under 37 CFR 1.53(b) is a new application which is assigned a new application number and filing date and is maintained separately from the file of the prior application. The filing of a continuing application is not a paper directed to, or placed in, the file of the prior application and is not a “reply” to the last Office action in the prior application. Thus, a petition for an extension of time and the fee set forth in 37 CFR 1.17 are required to be filed as a separate paper in the prior application. Any petition for an extension of time directed to the prior application must be accompanied by its own certificate of mailing under 37 CFR 1.8 (if mailed by first class mail) or under 37 CFR 1.10 (if mailed by Priority Mail Express^®), if the benefits of those rules are desired.

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. If the prior nonprovisional application is to be expressly abandoned, such a paper must be signed in accordance with 37 CFR 1.138. 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.

If the prior nonprovisional application which is to be expressly abandoned has a notice of allowance issued therein, the prior nonprovisional application can become abandoned by the nonpayment of the issue fee. However, once an issue fee has been paid in the prior application, even if the payment occurs following the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior nonprovisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313). See MPEP § 711.01.

If the prior nonprovisional application which is to be expressly abandoned is before the Patent Trial and Appeal Board (Board), a separate notice should be forwarded by the appellant to the Board, giving them notice thereof.

After a decision by the Court of Appeals for the Federal Circuit (CAFC) in which the rejection of all claims is affirmed, the proceeding is terminated when the mandate is issued by the court.

XII. EXAMINATION

The practice relating to making first action rejections final also applies to continuation and divisional applications filed under 37 CFR 1.53(b). See MPEP § 706.07(b).

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. Amendments must be filed in compliance with the requirements of 37 CFR 1.121 (e.g., the amendment must include a complete claim listing whenever a claim is added, canceled, or amended). See MPEP § 714. The Office may require a substitute specification for preliminary amendments. See MPEP § 714.01(e). Applications should be classified and assigned to the proper Technology Center (TC) by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment. Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part. See subsection III, above and MPEP § 211. See MPEP § 608.04(b) when new matter is contained in a preliminary amendment. If the filing date of the continuing application is on or after September 16, 2012, the inventor’s 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. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both.

If the examiner finds that pages of the specification or drawings figures described in the specification are missing and the application is a continuation or divisional application filed prior to September 21, 2004 under 37 CFR 1.53(b) using a copy of the oath or declaration filed in the prior application under pre-AIA 37 CFR 1.63(d), the examiner must check to determine whether the continuation or divisional application, as originally filed, includes a statement incorporating by reference the prior application(s). For applications filed prior to September 21, 2004, the statement could appear in the application transmittal letter (or the specification, rather than only in the specification). The inclusion of this incorporation by reference of the prior application(s) was necessary in these applications to permit applicant to amend the continuation or divisional application to include subject matter in the prior application(s) without the need for a petition. See also the subsection above regarding “Incorporation by Reference.” If the continuation or divisional application filed prior to September 21, 2004 under 37 CFR 1.53(b) does not include the incorporation by reference statement in the application papers (in the specification or in the transmittal letter) as originally filed and applicant has not been informed of the omitted items, the application should be returned to OPAP for mailing of a “Notice of Omitted Item(s).” For applications filed on or after September 21, 2004, see 37 CFR 1.57(b) and MPEP § 217.