MPEP § 201 — MPEP § 201
Current through: 2022-07-01

201-Types of Applications 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 0200 

 Section 201 
 

 
 
 
 
 
 201 Types of Applications [R-07.2015]

 
 35 U.S.C. 101 
 Inventions patentable. 

 Whoever invents or discovers any new and useful process, machine,
 manufacture, or composition of matter, or any new and useful improvement thereof, may
 obtain a patent therefor, subject to the conditions and requirements of this title.
 

 

 
 35 U.S.C. 161 
 Patents for plants. 

 Whoever invents or discovers and asexually reproduces any distinct
 and new variety of plant, including cultivated sports, mutants, hybrids, and newly found
 seedlings, other than a tuber propagated plant or a plant found in an uncultivated
 state, may obtain a patent therefor, subject to the conditions and requirements of this
 title.
 

 The provisions of this title relating to patents for inventions
 shall apply to patents for plants, except as otherwise provided.
 

 

 
 35 U.S.C. 171 
 Patents for designs. 

 
 (a) IN GENERAL.—Whoever invents any new, original, and ornamental
 design for an article of manufacture may obtain a patent therefor, subject to the
 conditions and requirements of this title.
 

 (b) APPLICABILITY OF THIS TITLE.—The provisions of this title
 relating to patents for inventions shall apply to patents for designs, except as
 otherwise provided.
 

 (c) FILING DATE.—The filing date of an application for
 patent for design shall be the date on which the specification as prescribed by
 section 112 and any required drawings are filed.
 

 
 

 Patent applications can be directed to three broad types of
 subject matter: 
 

 
 (A) applications for patents as provided for by
 35 U.S.C.
 101 relating to a “new and useful process, machine,
 manufacture, or composition of matter," etc.;
 

 (B) applications for plant patents as provided for by
 35 U.S.C.
 161 ; and
 

 (C) applications for design patents as provided for by
 35 U.S.C.
 171 . 
 

 
 The first type of patent application is sometimes referred to
 as a “utility” patent applications when being contrasted with a plant or design patent
 application. The specialized procedure which pertains to the examination of applications
 for design and plant patents are treated in detail in Chapters 1500 and
 1600 , respectively. 
 

 
 201.01 National Applications [R-01.2024]

 
 35 U.S.C. 111 
 Application. 

 [Editor Note: Applicable to any patent application filed on or after
 December 18, 2013. See 35 U.S.C. 111 (pre-PLT (AIA)) 
 or 35 U.S.C. 111
 (pre-AIA) for the law otherwise applicable.] 

 
 (a) IN GENERAL.—
 
 (1) WRITTEN APPLICATION.—An application for
 patent shall be made, or authorized to be made, by the inventor, except
 as otherwise provided in this title, in writing to the Director.
 

 (2) CONTENTS.—Such application shall
 include—
 
 (A) a specification as prescribed by
 section
 112 ;
 

 (B) a drawing as prescribed by
 section 113 ;
 and
 

 (C) an oath or declaration as prescribed
 by section
 115 .
 

 
 

 (3) FEE, OATH OR DECLARATION, AND CLAIMS.—The
 application shall be accompanied by the fee required by law. The fee,
 oath or declaration, and 1 or more claims may be submitted after the
 filing date of the application, within such period and under such
 conditions, including the payment of a surcharge, as may be prescribed by
 the Director. Upon failure to submit the fee, oath or declaration, and 1
 or more claims within such prescribed period, the application shall be
 regarded as abandoned.
 

 (4) FILING DATE.—The filing date of an
 application shall be the date on which a specification, with or without
 claims, is received in the United States Patent and Trademark Office.
 

 
 

 (b) PROVISIONAL APPLICATION.—
 
 (1) AUTHORIZATION.—A provisional application for
 patent shall be made or authorized to be made by the inventor, except as
 otherwise provided in this title, in writing to the Director. Such
 application shall include—
 
 (A) a specification as prescribed by
 section 112(a) ;
 and
 

 (B) a drawing as prescribed by
 section
 113 .
 

 
 

 (2) CLAIM.—A claim, as required by subsections
 (b) through (e) of section 112 , shall
 not be required in a provisional application.
 

 (3) FEE.—The application shall be accompanied by
 the fee required by law. The fee may be submitted after the filing date
 of the application, within such period and under such conditions,
 including the payment of a surcharge, as may be prescribed by the
 Director. Upon failure to submit the fee within such prescribed period,
 the application shall be regarded as abandoned.
 

 (4) FILING DATE.—The filing date of a
 provisional application shall be the date on which a specification, with
 or without claims, is received in the United States Patent and Trademark
 Office.
 

 (5) ABANDONMENT.—Notwithstanding the absence of
 a claim, upon timely request and as prescribed by the Director, a
 provisional application may be treated as an application filed under
 subsection (a). Subject to section 119(e)(3) , if
 no such request is made, the provisional application shall be regarded as
 abandoned 12 months after the filing date of such application and shall
 not be subject to revival after such 12-month period.
 

 (6) OTHER BASIS FOR PROVISIONAL
 APPLICATION.—Subject to all the conditions in this subsection and
 section 119(e) , and as prescribed by the Director,
 an application for patent filed under subsection (a) may be treated as a
 provisional application for patent.
 

 (7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST
 FILING DATE.—A provisional application shall not be entitled to the right
 of priority of any other application under section
 119 , 365(a) , or
 386(a) or to the
 benefit of an earlier filing date in the United States under
 section 120 , 121 , 365(c) , or
 386(c) .
 

 (8) APPLICABLE PROVISIONS.—The provisions of
 this title relating to applications for patent shall apply to provisional
 applications for patent, except as otherwise provided, and except that
 provisional applications for patent shall not be subject to
 sections 131 and 135 .
 

 
 

 (c) PRIOR FILED APPLICATION.—Notwithstanding
 the provisions of subsection (a), the Director may prescribe the conditions,
 including the payment of a surcharge, under which a reference made upon the
 filing of an application under subsection (a) to a previously filed
 application, specifying the previously filed application by application number
 and the intellectual property authority or country in which the application was
 filed, shall constitute the specification and any drawings of the subsequent
 application for purposes of a filing date. A copy of the specification and any
 drawings of the previously filed application shall be submitted within such
 period and under such conditions as may be prescribed by the Director. A
 failure to submit the copy of the specification and any drawings of the
 previously filed application within the prescribed period shall result in the
 application being regarded as abandoned. Such application shall be treated as
 having never been filed, unless— 
 
 (1) the application is revived under
 section 27 ; and
 

 (2) a copy of the specification and any
 drawings of the previously filed application are submitted to the
 Director.
 

 
 

 
 

 

 
 35 U.S.C. 111 (pre-PLT (AIA)) 
 Application. 

 [Editor Note: Applicable to any patent application filed on or after
 September 16, 2012, and before December 18, 2013. See 35 U.S.C.
 111 or 35 U.S.C. 111 (pre-AIA) for
 the law otherwise applicable.] 

 
 (a) IN GENERAL.—
 
 (1) WRITTEN APPLICATION.—An application for patent
 shall be made, or authorized to be made, by the inventor, except as
 otherwise provided in this title, in writing to the Director.
 

 (2) CONTENTS.—Such application shall include—
 
 (A) a specification as prescribed by
 section
 112 ;
 

 (B) a drawing as prescribed by section
 113 ; and
 

 (C) an oath or declaration as prescribed by
 section
 115 .
 

 
 

 (3) FEE AND OATH OR DECLARATION.—The application
 must be accompanied by the fee required by law. The fee and oath or
 declaration may be submitted after the specification and any required
 drawing are submitted, within such period and under such conditions,
 including the payment of a surcharge, as may be prescribed by the
 Director.
 

 (4) FAILURE TO SUBMIT.—Upon failure to submit the
 fee and oath or declaration within such prescribed period, the
 application shall be regarded as abandoned, unless it is shown to the
 satisfaction of the Director that the delay in submitting the fee and
 oath or declaration was unavoidable or unintentional. The filing date of
 an application shall be the date on which the specification and any
 required drawing are received in the Patent and Trademark Office.
 

 
 

 (b) PROVISIONAL APPLICATION.—
 
 (1) AUTHORIZATION.—A provisional application for
 patent shall be made or authorized to be made by the inventor, except as
 otherwise provided in this title, in writing to the Director. Such
 application shall include—
 
 (A) a specification as prescribed by
 section 112(a) ;
 and
 

 (B) a drawing as prescribed by
 section
 113 .
 

 
 

 (2) CLAIM.—A claim, as required by subsections (b)
 through (e) of section 112 , shall
 not be required in a provisional application.
 

 (3) FEE.—
 
 (A) The application must be accompanied by the
 fee required by law.
 

 (B) The fee may be submitted after the
 specification and any required drawing are submitted, within such
 period and under such conditions, including the payment of a
 surcharge, as may be prescribed by the Director.
 

 (C) Upon failure to submit the fee within
 such prescribed period, the application shall be regarded as
 abandoned, unless it is shown to the satisfaction of the Director
 that the delay in submitting the fee was unavoidable or
 unintentional.
 

 
 

 (4) FILING DATE.—The filing date of a provisional
 application shall be the date on which the specification and any required
 drawing are received in the Patent and Trademark Office.
 

 (5) ABANDONMENT.—Notwithstanding the absence of a
 claim, upon timely request and as prescribed by the Director, a
 provisional application may be treated as an application filed under
 subsection (a). Subject to section 119(e)(3) , if
 no such request is made, the provisional application shall be regarded as
 abandoned 12 months after the filing date of such application and shall
 not be subject to revival after such 12-month period.
 

 (6) OTHER BASIS FOR PROVISIONAL
 APPLICATION.—Subject to all the conditions in this subsection and
 section 119(e) , and as prescribed by the Director,
 an application for patent filed under subsection (a) may be treated as a
 provisional application for patent.
 

 (7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING
 DATE.—A provisional application shall not be entitled to the right of
 priority of any other application under section
 119 or 365(a) or to the
 benefit of an earlier filing date in the United States under
 section 120 , 121 , or 365(c) .
 

 (8) APPLICABLE PROVISIONS.—The provisions of this
 title relating to applications for patent shall apply to provisional
 applications for patent, except as otherwise provided, and except that
 provisional applications for patent shall not be subject to
 sections 131 and 135 .
 

 
 

 
 

 Pre-AIA 35 U.S.C.
 111 requirements substantially correspond to those of
 pre-PLT (AIA) 35
 U.S.C. 111 , but do not include conforming amendments with regard
 to the oath or declaration provisions and other miscellaneous provisions of the AIA.
 

 
 37 CFR 1.9 Definitions. 

 
 (a)
 
 (1) A national application as used in this chapter
 means either a U.S. application for patent which was filed in the Office
 under 35 U.S.C. 111 , an
 international application filed under the Patent Cooperation Treaty in
 which the basic national fee under 35 U.S.C. 41(a)(1)(F) 
 has been paid, or an international design application filed under the
 Hague Agreement in which the Office has received a copy of the
 international registration pursuant to Hague Agreement Article 10. 
 

 (2) A provisional application as used in this
 chapter means a U.S. national application for patent filed in the Office
 under 35 U.S.C. 111(b) .
 

 (3) A nonprovisional application as used in this
 chapter means either a U.S. national application for patent which was
 filed in the Office under 35 U.S.C. 111(a) , an
 international application filed under the Patent Cooperation Treaty in
 which the basic national fee under 35 U.S.C. 41(a)(1)(F) 
 has been paid, or an international design application filed under the
 Hague Agreement in which the Office has received a copy of the
 international registration pursuant to Hague Agreement Article 10.
 

 
 

 (b) An international application as used in this chapter
 means an international application for patent filed under the Patent
 Cooperation Treaty prior to entering national processing at the Designated
 Office stage.
 

 
 *****

 
 (l) Hague Agreement as used in this chapter means
 the Geneva Act of the Hague Agreement Concerning the International Registration
 of Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and
 Hague Agreement Article as used in this chapter means an Article under the
 Hague Agreement.
 

 (m) Hague Agreement Regulations as used in this
 chapter means the Common Regulations Under the 1999 Act and the 1960 Act of the
 Hague Agreement, and Hague Agreement Rule as used in this chapter means one of
 the Hague Agreement Regulations.
 

 (n) An international design application as used in
 this chapter means an application for international registration of a design
 filed under the Hague Agreement. Unless otherwise clear from the wording,
 reference to "design application" or "application for a design patent" in this
 chapter includes an international design application that designates the United
 States.
 

 
 
 I. APPLICATIONS FILED UNDER 35 U.S.C. 111 Applications filed under 35 U.S.C. 111(a) include original
 nonprovisional utility, plant, design, divisional, continuation, and
 continuation-in-part applications filed under 37 CFR 1.53(b) , reissue
 applications filed under 37 CFR 1.53(b) , and design patent
 continued prosecution applications (CPAs) filed under 37 CFR
 1.53(d) . See MPEP § 601.01(a) for an overview of
 the procedures and requirements for filing applications under 35 U.S.C.
 111(a) .
 

 For details regarding reissue, design, and plant patent
 applications, see MPEP
 Chapters 1400 , 1500 , and 1600 ,
 respectively. For details regarding divisional, continuation, and
 continuation-in-part applications, see MPEP §§
 201.06 et seq. , 201.07 , and 201.08 , respectively. See MPEP §
 201.06(d) for a discussion of continued prosecution
 applications filed under 37 CFR 1.53(d) .
 

 Effective December 18, 2013, the Patent Law Treaties
 Implementation Act of 2012 (PLTIA) amended the patent laws to implement the
 provisions of the Patent Law Treaty in title II. Notable changes included the filing
 date requirements for nonprovisional applications filed under 35 U.S.C.
 111(a) . Unless the application is for a design patent,
 nonprovisional applications filed under 35 U.S.C. 111(a) on or after
 December 18, 2013, 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(e) and 601.01(f) . 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. See
 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. 
 

 Applications filed under 35 U.S.C.
 111(b) are provisional applications for patent and are filed
 under 37 CFR
 1.53(c) . Significant differences between nonprovisional
 applications filed under 35 U.S.C. 111(a) and provisional
 applications filed under 35 U.S.C. 111(b) include the
 following:
 

 
 (A) No claim is required in a provisional application.

 (B) No oath or declaration is required in a provisional
 application.
 

 (C) Provisional applications will not be examined for
 patentability. 
 

 (D) A provisional application is not entitled to
 claim priority to any foreign application or the benefit of any earlier filed
 national application.
 

 (E) A design patent application is not entitled to
 claim the benefit of a provisional application (See 35 U.S.C.
 172 and 37 CFR 1.53(c)(4) ).
 

 
 See MPEP §
 201.04 for detailed information regarding provisional
 applications.
 

 For applications not filed under 35 U.S.C.
 111 , see MPEP Chapters 1800 and
 2900 for details regarding international applications
 (PCT) and international design applications, respectively.
 

 II. INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES 
 35 U.S.C. 363 
 International application designating the
 United States: Effect. 

 An international application designating the United
 States shall have the effect, from its international filing date under article 11
 of the treaty, of a national application for patent regularly filed in the Patent
 and Trademark Office.
 

 

 37 CFR
 1.9(a)(1) defines a national application as a U.S. application
 which was filed in the Office under 35 U.S.C. 111 , an international
 application filed under the Patent Cooperation Treaty in which the basic national fee
 under 35 U.S.C.
 41(a)(1)(F) has been paid, or an international design
 application filed under the Hague Agreement in which the Office has received a copy
 of the international registration pursuant to Hague Agreement Article 10. 
 

 Note that 37 CFR 1.9(b) defines an
 international application for patent as one filed under the Patent Cooperation Treaty
 prior to entering national processing at the Designated Office stage.
 

 Treatment of a national application under
 35 U.S.C.
 111 and a national stage application (a national application
 which entered the national stage from an international application in which the
 conditions of 37 CFR 1.9(a)(1) have been satisfied) are similar but not
 identical. 
 

 See MPEP § 1893.03 et seq. for examination of international applications in the
 national stage, and MPEP § 1896 for a description of the differences between a
 nonprovisional application filed under 35 U.S.C. 111(a) and an
 international application filed under the Patent Cooperation Treaty that entered the
 national stage. Note in particular the following examples: 
 

 
 (A) Restriction practice as explained in
 MPEP §
 806 et seq. is applied to national applications under
 35
 U.S.C. 111(a) while unity of invention practice as
 explained in MPEP §§ 1850 and 1893.03(d) 
 is applied to national stage applications.
 

 (B) National nonprovisional applications filed under
 35
 U.S.C. 111(a) without an executed oath or declaration,
 basic filing fee, search fee, or examination fee are governed by the
 notification practice set forth in 37 CFR 1.53(f) , as are
 utility and plant patent applications filed on or after December 18, 2013,
 without a claim. Incomplete national stage applications are governed by the
 notification practice set forth in 37 CFR 1.495. 

 III. INTERNATIONAL DESIGN APPLICATION DESIGNATING THE UNITED STATES 
 35 U.S.C. 385 
 Effect of international design
 application. 

 An international design application designating
 the United States shall have the effect, for all purposes, from its filing date
 determined in accordance with section 384 , of an application
 for patent filed in the Patent and Trademark Office pursuant to chapter 16. 
 

 

 
 37 CFR 1.9 Definitions. 

 
 (a)
 
 (1) A national application as used in this
 chapter means either a U.S. application for patent which was filed in
 the Office under 35 U.S.C. 111 , an
 international application filed under the Patent Cooperation Treaty in
 which the basic national fee under 35 U.S.C.
 41(a)(1)(F) has been paid, or an international
 design application filed under the Hague Agreement in which the Office
 has received a copy of the international registration pursuant to
 Hague Agreement Article 10. 
 

 (2) A provisional application as used in
 this chapter means a U.S. national application for patent filed in the
 Office under 35 U.S.C.
 111(b) .
 

 (3) A nonprovisional application as used in
 this chapter means either a U.S. national application for patent which
 was filed in the Office under 35 U.S.C.
 111(a) , an international application filed under
 the Patent Cooperation Treaty in which the basic national fee under
 35 U.S.C. 41(a)(1)(F) has been paid, or an
 international design application filed under the Hague Agreement in
 which the Office has received a copy of the international registration
 pursuant to Hague Agreement Article 10.
 

 
 

 
 *****

 
 (l) Hague Agreement as used in this chapter
 means the Geneva Act of the Hague Agreement Concerning the International
 Registration of Industrial Designs adopted at Geneva, Switzerland, on July
 2, 1999, and Hague Agreement Article as used in this chapter means an
 Article under the Hague Agreement.
 

 (m) Hague Agreement Regulations as used in
 this chapter means the Common Regulations Under the 1999 Act and the 1960
 Act of the Hague Agreement, and Hague Agreement Rule as used in this chapter
 means one of the Hague Agreement Regulations.
 

 (n) An international design application as
 used in this chapter means an application for international registration of
 a design filed under the Hague Agreement. Unless otherwise clear from the
 wording, reference to "design application" or "application for a design
 patent" in this chapter includes an international design application that
 designates the United States.
 

 
 

 Title I of the Patent Law Treaties Implementation Act of 2012
 (PLTIA), Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012) implemented the Hague
 Agreement Concerning International Registration of Industrial Designs. The Hague
 Agreement is an international agreement that enables an applicant to file a single
 international design application which may have the effect of an application for
 protection for the design(s) in countries and/or intergovernmental organizations that
 are parties to the Hague Agreement (the “Contracting Parties”) designated in the
 application. The United States is a Contracting Party to the Hague Agreement, which
 took effect with respect to the United States on May 13, 2015. The Hague Agreement is
 administered by the International Bureau of the World Intellectual Property
 Organization (“the International Bureau”).
 

 See MPEP Chapter 2900 for information
 regarding international design applications. 
 

 

 
 201.02 General Terms Used to Describe Applications [R-07.2015]

 See 37 CFR 1.9(a) for definitions of the
 terms “national application,” “provisional application,” and “nonprovisional
 application;” see 37 CFR 1.9(b) for the definition of “international application;"
 and see 37
 CFR 1.9(n) for the definition of ”international design
 application." See also MPEP
 § 201.01 .
 

 “Original” application is used in the patent statutes and
 rules to refer to an application which is not a reissue application. An original
 application may be a first filing or a continuing application.
 

 A continuing application is a continuation, divisional, or
 continuation-in-part application filed under the conditions specified in
 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) and 37 CFR 1.78 .
 

 A “substitute” application is in essence the duplicate of
 an application by the same applicant abandoned before the filing of the later
 application. Current practice does not require applicant to insert in the specification
 reference to the earlier application; however, attention should be called to the earlier
 application. A substitute application does not obtain the benefit of the filing date of
 the prior application. Use form paragraph 2.07 to remind applicant of possible substitute status. 
 

 ¶ 2.07 Definition of a Substitute

 Applicant refers to this application as
 a “substitute” of Application No. [1] , filed [2] . The term
 “substitute” is used to designate an application which is in essence the duplicate of an
 application by the same applicant abandoned before the filing of the later application. A
 “substitute” does not obtain the benefit of the filing date of the prior application. 
 

 

 

 
 201.03 [Reserved] [R-]

 [Editor Note: Information pertaining to correction of inventorship, name of
 inventor, and order of names in an application has been moved to
 MPEP §
 602.01(c) et seq.] 

 

 
 201.04 Provisional Application [R-07.2022]
 I. PROVISIONAL APPLICATION FILED ON OR AFTER DECEMBER 18, 2013 
 35 U.S.C. 111 
 Application. 

 [Editor Note: Applicable to any patent application filed on or after
 December 18, 2013. See 35 U.S.C. 111 (pre-PLT
 (AIA)) or 35 U.S.C. 111 (pre-AIA) for
 the law applicable to provisional applications filed under 35 U.S.C. 111(b)
 before December 18, 2013.] 

 *****

 
 (b) PROVISIONAL APPLICATION.—
 
 (1) AUTHORIZATION.—A provisional application
 for patent shall be made or authorized to be made by the inventor,
 except as otherwise provided in this title, in writing to the
 Director. Such application shall include—
 
 (A) a specification as prescribed by
 section
 112(a) ; and
 

 (B) a drawing as prescribed by
 section
 113 .
 

 
 

 (2) CLAIM.—A claim, as required by
 subsections (b) through (e) of section 112 , shall
 not be required in a provisional application.
 

 (3) FEE.—The application shall be
 accompanied by the fee required by law. The fee may be submitted after
 the filing date of the application, within such period and under such
 conditions, including the payment of a surcharge, as may be prescribed
 by the Director. Upon failure to submit the fee within such prescribed
 period, the application shall be regarded as abandoned.
 

 (4) FILING DATE.—The filing date of a
 provisional application shall be the date on which a specification,
 with or without claims, is received in the United States Patent and
 Trademark Office.
 

 (5) ABANDONMENT.—Notwithstanding the absence
 of a claim, upon timely request and as prescribed by the Director, a
 provisional application may be treated as an application filed under
 subsection (a). Subject to section 119(e)(3) ,
 if no such request is made, the provisional application shall be
 regarded as abandoned 12 months after the filing date of such
 application and shall not be subject to revival after such 12-month
 period.
 

 (6) OTHER BASIS FOR PROVISIONAL
 APPLICATION.—Subject to all the conditions in this subsection and
 section 119(e) , and as prescribed by the
 Director, an application for patent filed under subsection (a) may be
 treated as a provisional application for patent.
 

 (7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST
 FILING DATE.—A provisional application shall not be entitled to the
 right of priority of any other application under section
 119 , 365(a) , or
 386(a) or to the
 benefit of an earlier filing date in the United States under
 section 120 ,
 121 ,
 365(c) , or 386(c) .
 

 (8) APPLICABLE PROVISIONS.—The provisions of
 this title relating to applications for patent shall apply to
 provisional applications for patent, except as otherwise provided, and
 except that provisional applications for patent shall not be subject
 to sections 131 and 135 .
 

 
 

 
 

 

 
 37 CFR 1.9 Definitions. 

 
 (a) 
 
 *****

 (2) A provisional application as used in this
 chapter means a U.S. national application for patent filed in the
 Office under 35 U.S.C.
 111(b) .
 

 
 

 
 *****

 

 

 
 37 CFR 1.53 Application number, filing date, and
 completion of application. 

 [Editor Note: Applicable to patent applications filed under
 35
 U.S.C. 111 on or after December 18, 2013.] 

 *****

 
 (c) Application filing requirements — Provisional
 application. The filing date of a provisional application is
 the date on which a specification, with or without claims, is received in
 the Office. No amendment, other than to make the provisional application
 comply with the patent statute and all applicable regulations, may be made
 to the provisional application after the filing date of the provisional
 application.
 
 (1) A provisional application must also include the
 cover sheet required by § 1.51(c)(1) ,
 which may be an application data sheet ( §
 1.76 ), or a cover letter identifying the
 application as a provisional application. Otherwise, the application
 will be treated as an application filed under paragraph (b) of this
 section.
 

 (2) An application for patent filed under paragraph
 (b) of this section may be converted to a provisional application and
 be accorded the original filing date of the application filed under
 paragraph (b) of this section. The grant of such a request for
 conversion will not entitle applicant to a refund of the fees that
 were properly paid in the application filed under paragraph (b) of
 this section. Such a request for conversion must be accompanied by the
 processing fee set forth in §
 1.17(q) and be filed prior to the earliest
 of:
 
 (i) Abandonment of the application filed under
 paragraph (b) of this section;
 

 (ii) Payment of the issue fee on the application
 filed under paragraph (b) of this section; or
 

 (iii) Expiration of twelve months after the
 filing date of the application filed under paragraph (b) of this
 section.
 

 
 

 (3) A provisional application filed under paragraph
 (c) of this section may be converted to a nonprovisional application
 filed under paragraph (b) of this section and accorded the original
 filing date of the provisional application. The conversion of a
 provisional application to a nonprovisional application will not
 result in either the refund of any fee properly paid in the
 provisional application or the application of any such fee to the
 filing fee, or any other fee, for the nonprovisional application.
 Conversion of a provisional application to a nonprovisional
 application under this paragraph 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 for which conversion is requested.
 Thus, applicants should consider avoiding this adverse patent term
 impact by filing a nonprovisional application claiming the benefit of
 the provisional application under 35 U.S.C. 119(e) ,
 rather than converting the provisional application into a
 nonprovisional application pursuant to this paragraph. A request to
 convert a provisional application to a nonprovisional application must
 be accompanied by the fee set forth in §
 1.17(i) and an amendment including at least one
 claim as prescribed by 35 U.S.C. 112(b) ,
 unless the provisional application under paragraph (c) of this section
 otherwise contains at least one claim as prescribed by
 35 U.S.C. 112(b) .
 The nonprovisional application resulting from conversion of a
 provisional application must also include the filing fee, search fee,
 and examination fee for a nonprovisional application, and the
 surcharge required by § 1.16(f) if
 either the basic filing fee for a nonprovisional application or the
 inventor's oath or declaration was not present on the filing date
 accorded the resulting nonprovisional application
 ( i.e., the filing date of the original
 provisional application). A request to convert a provisional
 application to a nonprovisional application must also be filed prior
 to the earliest of:
 
 (i) Abandonment of the provisional application
 filed under paragraph (c) of this section; or
 

 (ii) Expiration of twelve months after the
 filing date of the provisional application filed under paragraph
 (c) of this section.
 

 
 

 (4) A provisional application is not entitled to the
 right of priority under 35 U.S.C. 119 ,
 365(a) , or 386(a) or § 1.55 , or to the benefit of an earlier filing
 date under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) or §
 1.78 of any other
 application. No claim for priority under 35 U.S.C.
 119(e) or § 1.78(a) may be made in a design application
 based on a provisional application. A provisional application
 disclosing nucleotide and/or amino acid sequences is not required to
 include a separate sequence listing; however, if submitted in a
 provisional application filed on or after July 1, 2022, any submission
 of nucleotide and/or amino acid sequence data must be by way of a
 “Sequence Listing XML” in compliance with §§ 1.831 through 1.834 .
 

 
 

 
 

 Effective December 18, 2013, the Patent Law Treaties
 Implementation Act of 2012 (PLTIA), title II, amended 35 U.S.C.
 111(b) to more closely align the corresponding provisions for
 nonprovisional applications in 35 U.S.C. 111(a) and provisional
 applications in 35 U.S.C. 111(b) . The
 corresponding provision in 37 CFR 1.53(c) was revised
 accordingly. 
 

 The parts of a provisional application that are required
 are set forth in 37
 CFR 1.51(c) and MPEP § 601.01(b) . The filing date of
 a provisional application filed on or after December 18, 2013, is the date on which a
 specification as prescribed by 35 U.S.C. 112(a) , with or without
 claims, is filed in the United States Patent and Trademark Office. Although the
 application will be accorded a filing date regardless of whether any drawings are
 submitted, applicants are advised to file any drawing required by 37 CFR
 1.81(a) with the application. No amendment, other than to make
 the provisional application comply with the patent statute and all applicable
 regulations, may be made to the provisional application after the filing date of the
 provisional application.
 

 A provisional application must include a cover sheet
 required by 37 CFR
 1.51(c)(1) , which may be an application data sheet
 ( 37 CFR
 1.76 ), the Office’s form SB/16, Provisional Application for
 Patent Cover Sheet (available at www.uspto.gov/patent/
 forms/forms-patent-applications-filed-or-after-september-16-
 2012 ), or a cover letter identifying the application as a provisional
 application. Otherwise, the application will be treated as an application filed under
 37 CFR
 1.53(b) . The filing fee is set forth in 37 CFR 1.16(d) .
 
 

 II. PROVISIONAL APPLICATION FILED BEFORE DECEMBER 18, 2013 
 35 U.S.C. 111 (pre-PLT (AIA)) 
 Application. 

 [Editor Note: Applicable to any patent application ﬁled on or after
 September 16, 2012, and before December 18, 2013. See 35 U.S.C.
 111 or 35 U.S.C. 111 (pre‑AIA) for
 the law otherwise applicable.] 

 *****

 
 (b) PROVISIONAL APPLICATION.—
 
 (1) AUTHORIZATION.—A provisional application
 for patent shall be made or authorized to be made by the inventor,
 except as otherwise provided in this title, in writing to the
 Director. Such application shall include—
 
 (A) a specification as prescribed by
 section 112(a) ;
 and
 

 (B) a drawing as prescribed by section
 113 .
 

 
 

 (2) CLAIM.—A claim, as required by
 subsections (b) through
 (e) of section
 112 , shall not be
 required in a provisional application.
 

 (3) FEE.—
 
 (A) The application must be
 accompanied by the fee required by law.
 

 (B) The fee may be submitted after the
 specification and any required drawing are submitted, within
 such period and under such conditions, including the payment of
 a surcharge, as may be prescribed by the Director.
 

 (C) Upon failure to submit the fee
 within such prescribed period, the application shall be regarded
 as abandoned, unless it is shown to the satisfaction of the
 Director that the delay in submitting the fee was unavoidable or
 unintentional.
 

 
 

 (4) FILING DATE.—The filing date of a
 provisional application shall be the date on which the specification
 and any required drawing are received in the Patent and Trademark
 Office.
 

 (5) ABANDONMENT.—Notwithstanding the absence
 of a claim, upon timely request and as prescribed by the Director, a
 provisional application may be treated as an application filed under
 subsection (a). Subject to section 119(e)(3) , if no
 such request is made, the provisional application shall be regarded as
 abandoned 12 months after the filing date of such application and
 shall not be subject to revival after such 12-month period.
 

 (6) OTHER BASIS FOR PROVISIONAL
 APPLICATION.—Subject to all the conditions in this subsection and
 section 119(e) , and as
 prescribed by the Director, an application for patent filed under
 subsection (a) may be treated as a provisional application for
 patent.
 

 (7) NO RIGHT OF PRIORITY OR BENEFIT OF
 EARLIEST FILING DATE.—A provisional application shall not be entitled
 to the right of priority of any other application under section
 119 or 365(a) or to the
 benefit of an earlier filing date in the United States under section
 120 ,
 121 , or
 365(c) .
 

 (8) APPLICABLE PROVISIONS.—The provisions of
 this title relating to applications for patent shall apply to
 provisional applications for patent, except as otherwise provided, and
 except that provisional applications for patent shall not be subject
 to sections 131 and 135 .
 

 
 

 
 

 
 35 U.S.C. 111 (pre-AIA) 
 Application. 

 [Editor Note: Not applicable to any patent application filed
 on or after September 16, 2012. See 35 U.S.C. 111 or
 35
 U.S.C. 111 (pre-PLT (AIA)) for the law otherwise
 applicable.] 

 
 *****

 (b) PROVISIONAL APPLICATION.—
 
 (1) AUTHORIZATION.—A provisional application for
 patent shall be made or authorized to be made by the inventor, except
 as otherwise provided in this title, in writing to the Director. Such
 application shall include—
 
 (A) a specification as prescribed by the
 first paragraph of section 112 
 of this title; and
 

 (B) a drawing as prescribed by
 section 113 
 of this title.
 

 
 

 (2) CLAIM.—A claim, as required by the second
 through fifth paragraphs of section 112 , shall
 not be required in a provisional application.
 

 (3) FEE.—
 
 (A) The application must be accompanied by
 the fee required by law.
 

 (B) The fee may be submitted after the
 specification and any required drawing are submitted, within
 such period and under such conditions, including the payment of
 a surcharge, as may be prescribed by the Director.
 

 (C) Upon failure to submit the fee within
 such prescribed period, the application shall be regarded as
 abandoned, unless it is shown to the satisfaction of the
 Director that the delay in submitting the fee was unavoidable or
 unintentional.
 

 
 

 (4) FILING DATE.—The filing date of a provisional
 application shall be the date on which the specification and any
 required drawing are received in the Patent and Trademark Office.
 

 (5) ABANDONMENT.—Notwithstanding the absence of a
 claim, upon timely request and as prescribed by the Director, a
 provisional application may be treated as an application filed under
 subsection (a). Subject to section 119(e)(3) 
 of this title, if no such request is made, the provisional application
 shall be regarded as abandoned 12 months after the filing date of such
 application and shall not be subject to revival after such 12-month
 period.
 

 (6) OTHER BASIS FOR PROVISIONAL
 APPLICATION.—Subject to all the conditions in this subsection and
 section 119(e) of
 this title, and as prescribed by the Director, an application for
 patent filed under subsection (a) may be treated as a provisional
 application for patent.
 

 (7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST
 FILING DATE.—A provisional application shall not be entitled to the
 right of priority of any other application under section
 119 or 365(a) of this
 title or to the benefit of an earlier filing date in the United States
 under section 120 ,
 121 , or 365(c) of this
 title.
 

 (8) APPLICABLE PROVISIONS.—The provisions of this
 title relating to applications for patent shall apply to provisional
 applications for patent, except as otherwise provided, and except that
 provisional applications for patent shall not be subject to
 sections 115 , 131 , 135 , and
 157 of this title.
 

 
 

 
 

 
 37 CFR 1.9 Definitions. 

 
 (a) 
 
 *****

 (2) A provisional application as used in
 this chapter means a U.S. national application for patent filed in the
 Office under 35 U.S.C.
 111(b) .
 

 
 

 
 *****

 

 

 
 37 CFR 1.53 (pre-PLT (AIA)) Application number, filing date, and
 completion of application. 

 [Editor Note: Applicable to patent applications filed under
 35
 U.S.C. 111 (pre-PLT (AIA)) before December 18,
 2013.] 

 *****

 
 (c) Application filing requirements—Provisional application. 
 The filing date of a provisional application is the date on which a
 specification as prescribed by 35 U.S.C. 112(a) , and
 any drawing required by § 1.81(a) are filed in
 the Patent and Trademark Office. No amendment, other than to make the
 provisional application comply with the patent statute and all applicable
 regulations, may be made to the provisional application after the filing
 date of the provisional application. 
 
 (1) A provisional application must also
 include the cover sheet required by §
 1.51(c)(1) , which may be an application data
 sheet ( § 1.76 ), or a
 cover letter identifying the application as a provisional application.
 Otherwise, the application will be treated as an application filed
 under paragraph (b) of this section. 
 

 (2) An application for patent filed under
 paragraph (b) of this section may be converted to a provisional
 application and be accorded the original filing date of the
 application filed under paragraph (b) of this section. The grant of
 such a request for conversion will not entitle applicant to a refund
 of the fees that were properly paid in the application filed under
 paragraph (b) of this section. Such a request for conversion must be
 accompanied by the processing fee set forth in §
 1.17(q) and be filed prior to the earliest of: 
 
 (i) Abandonment of the application
 filed under paragraph (b) of this section;
 

 (ii) Payment of the issue fee on the
 application filed under paragraph (b) of this section; or
 

 (iii) Expiration of twelve months after
 the filing date of the application filed under paragraph (b) of
 this section.
 

 
 

 (3) A provisional application filed under
 paragraph (c) of this section may be converted to a nonprovisional
 application filed under paragraph (b) of this section and accorded the
 original filing date of the provisional application. The conversion of
 a provisional application to a nonprovisional application will not
 result in either the refund of any fee properly paid in the
 provisional application or the application of any such fee to the
 filing fee, or any other fee, for the nonprovisional application.
 Conversion of a provisional application to a nonprovisional
 application under this paragraph 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 for which conversion is requested.
 Thus, applicants should consider avoiding this adverse patent term
 impact by filing a nonprovisional application claiming the benefit of
 the provisional application under 35 U.S.C. 119(e) 
 (rather than converting the provisional application into a
 nonprovisional application pursuant to this paragraph). A request to
 convert a provisional application to a nonprovisional application must
 be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one
 claim as prescribed by 35 U.S.C. 112(b) ,
 unless the provisional application under paragraph (c) of this section
 otherwise contains at least one claim as prescribed by
 35 U.S.C. 112(b) .
 The nonprovisional application resulting from conversion of a
 provisional application must also include the filing fee, search fee,
 and examination fee for a nonprovisional application, the inventor’s
 oath or declaration, and the surcharge required by §
 1.16(f) if either the basic filing fee for a
 nonprovisional application or the inventor's oath or declaration was
 not present on the filing date accorded the resulting nonprovisional
 application ( i.e., the filing date of the original provisional
 application). A request to convert a provisional application to a
 nonprovisional application must also be filed prior to the earliest
 of: 
 
 (i) Abandonment of the provisional
 application filed under paragraph (c) of this section; or 
 

 (ii) Expiration of twelve months after
 the filing date of the provisional application filed under
 paragraph (c) of this section. 
 

 
 

 (4) A provisional application is not
 entitled to the right of priority under 35 U.S.C.
 119 or 35 U.S.C. 365(a) 
 or § 1.55 , or to the
 benefit of an earlier filing date under 35 U.S.C.
 120 , 121 or
 365(c) or §
 1.78(a) of any other application. No claim for
 priority under 35 U.S.C. 119(e) 
 or § 1.78(a)(4) may
 be made in a design application based on a provisional application. No
 request under § 1.293 for a
 statutory invention registration may be filed in a provisional
 application. The requirements of §§ 1.821 through
 1.825 regarding application disclosures
 containing nucleotide and/or amino acid sequences are not mandatory
 for provisional applications.
 

 
 

 
 *****

 

 The parts of a provisional application that are
 required are set forth in 37 CFR 1.51(c) and
 MPEP §
 601.01(b) . The filing date of a provisional application is
 the date on which a specification as prescribed by 35 U.S.C.
 112(a) and any drawing required by 37 CFR
 1.81(a) are filed in the U.S. Patent and Trademark Office. No
 amendment, other than to make the provisional application comply with the patent
 statute and all applicable regulations, may be made to the provisional application
 after the filing date of the provisional application.
 

 A provisional application must also include the cover
 sheet required by 37 CFR 1.51(c)(1) , which may be an application data sheet
 ( 37 CFR
 1.76 ), the Office’s form SB/16, Provisional Application for
 Patent Cover Sheet (available at www.uspto.gov/
 patent/forms/forms ), or a cover letter identifying the application
 as a provisional application. Otherwise, the application will be treated as an
 application filed under 37 CFR 1.53(b) . The filing fee is
 set forth in 37 CFR
 1.16(d) .
 

 III. PROVISIONAL APPLICATION - IN GENERAL One of the provisions of the Uruguay Round Agreements
 Act (effective as of June 8, 1995), is the establishment of a domestic priority
 system. The Act provides a mechanism to enable domestic applicants to quickly and
 inexpensively file provisional applications. Under the provisions of
 35 U.S.C.
 119(e) , applicants are entitled to claim the benefit of
 priority in a given application in the United States. The domestic priority period
 will not count in the measurement of the 20-year patent term. See 35 U.S.C.
 154(a)(3) . Thus, domestic applicants are placed on equal
 footing with foreign applicants with respect to the patent term.
 

 A provisional application is a regular national filing
 that starts the Paris Convention priority year. Foreign filings must be made within
 12 months of the filing date of the provisional application if applicant wishes to
 rely on the filing date of the provisional application in the foreign filed
 application.
 

 NOTE: 

 
 (A) No claim is required in a provisional
 application.
 

 (B) No oath or declaration is required in a
 provisional application.
 

 (C) Provisional applications will not be examined for
 patentability.
 

 (D) A provisional application is not entitled to
 claim priority to any foreign application or the benefit of any earlier filed
 national application.
 

 
 A provisional application will automatically be
 abandoned 12 months after its filing date and will not be subject to revival to
 restore it to pending status thereafter. See 35 U.S.C.
 111(b)(5) . The period of pendency of a provisional application
 is extended to the next succeeding business day if the day that is 12 months after
 the filing date of a provisional application falls on a Saturday, Sunday, or federal
 holiday within the District of Columbia. See 35 U.S.C. 119(e)(3) and
 37 CFR
 1.7(b) . For example, if a provisional application was filed on
 January 15, 1999, the last day of pendency of the provisional application under
 35 U.S.C.
 111(b)(5) and 35 U.S.C. 119(e)(3) would be
 extended to January 18, 2000 (January 15, 2000 was a Saturday and Monday, January 17,
 2000 was a federal holiday and therefore, the next succeeding business day would be
 Tuesday, January 18, 2000). A nonprovisional application claiming the benefit of the
 provisional application must have been filed no later than January 18, 2000.
 

 Effective December 18, 2013, a nonprovisional
 application that was filed more than 12 months after the filing date of the
 provisional application, but within 14 months after the filing date of the
 provisional application, may have the benefit of the provisional application restored
 by filing a grantable petition to restore the benefit under 37 CFR
 1.78(b) . See MPEP §
 211.01(a) . 
 

 A provisional application is not entitled to claim
 priority to, or the benefit of, any other application under 35 U.S.C. 119 ,
 120 , 121 , 365 , or
 386 . If applicant attempts to claim the benefit of an earlier
 U.S. application or priority to a foreign application in a provisional application,
 the filing receipt will not reflect the improper benefit or priority claim. Moreover,
 if a nonprovisional application claims the benefit of the filing date of a
 provisional application, and states that the provisional application relies upon the
 filing date of an earlier application, the claim for benefit or priority earlier than
 the filing date of the provisional application will be disregarded.
 

 An application filed under 37 CFR
 1.53(b) may be converted to a provisional application provided
 a request for conversion is submitted along with the fee as set forth in
 37
 CFR 1.17(q) . The request and fee must be submitted in the
 nonprovisional application prior to the earlier of the abandonment of the
 nonprovisional application, the payment of the issue fee, or the expiration of 12
 months after the filing date of the nonprovisional application. The grant of any such
 request will not entitle applicant to a refund of the fees which were properly paid
 in the application filed under 37 CFR 1.53(b) . See
 MPEP §
 601.01(c) . 35 U.S.C. 111(b)(5) permits a
 provisional application filed under 37 CFR 1.53(c) to be converted to
 a nonprovisional application filed under 37 CFR 1.53(b) . A request to
 convert a provisional application to a nonprovisional application must be accompanied
 by the fee set forth in 37 CFR 1.17(i) and an amendment
 including at least one claim as prescribed by 35 U.S.C. 112 , unless the
 provisional application otherwise contains at least one such claim. The request must
 be filed in the provisional application prior to the earliest of the abandonment of
 the provisional application or the expiration of twelve months after the filing date
 of the provisional application. The filing fee, search fee, and examination fee for a
 nonprovisional application and the surcharge under 37 CFR 1.16(f) ,
 if appropriate, are also required. For provisional applications filed before December
 18, 2013, if the inventor's oath or declaration was not filed with the provisional
 application, it must be submitted with the request for conversion. The grant of any
 such request will not entitle applicant to a refund of the fees which were properly
 paid in the application filed under 37 CFR 1.53(c) . Conversion of a
 provisional application to a nonprovisional application will result in the term of
 any patent issuing from the application being measured from at least the filing date
 of the provisional application. This adverse patent term impact can be avoided by
 filing a nonprovisional application claiming the benefit of the provisional
 application under 35 U.S.C. 119(e) , rather than requesting conversion of the
 provisional application to a nonprovisional application. See 37 CFR
 1.53(c)(3) .
 

 Design applications may not claim the benefit of a
 provisional application under 35 U.S.C. 119(e) . See
 35 U.S.C.
 172 and 37 CFR 1.78(a) .
 

 

 
 201.05 Reissue Application [R-11.2013]

 A reissue application is an application for a patent to
 take the place of an unexpired patent that is defective. A detailed treatment of reissue
 applications can be found in MPEP Chapter 1400 .
 

 

 
 201.06 Divisional Application [R-07.2022]

 
 37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other
 applications. 

 *****

 
 (d) Claims under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) for the benefit
 of a prior-filed nonprovisional application, international application, or
 international design application. An applicant in 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 may claim the benefit of one
 or more prior-filed copending nonprovisional applications, international
 applications designating the United States, or international design
 applications designating the United States under the conditions set forth in
 35
 U.S.C. 120 , 121 , 365(c) ,
 or 386(c) and this section.
 
 *****

 (2) Except for a continued prosecution
 application filed under § 1.53(d) , any
 nonprovisional application, international application designating the
 United States, or international design application designating the United
 States that claims the benefit of one or more prior-filed nonprovisional
 applications, international applications designating the United States,
 or international design applications designating the United States must
 contain or be amended to contain a reference to each such prior-filed
 application, identifying it by application number (consisting of the
 series code and serial number), international application number and
 international filing date, or international registration number and
 filing date under § 1.1023 . If the
 later-filed application is a nonprovisional application, the reference
 required by this paragraph must be included in an application data sheet
 (§ 1.76(b)(5) ). The reference also must identify the
 relationship of the applications, namely, whether the later-filed
 application is a continuation, divisional, or continuation-in-part of the
 prior-filed nonprovisional application, international application, or
 international design application.
 

 
 

 
 *****

 

 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, is known as
 a divisional 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 (see
 MPEP §
 804.01 ) 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.” Pfizer, Inc. v. Teva Pharmaceuticals USA,
 Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-1008 (Fed. Cir. 2008). Thus
 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 under 35 U.S.C. 120 , 121 , 365(c) , or
 386(c) . See 37 CFR 1.78 , especially paragraphs
 (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding
 entitlement to the benefit of the filing date of a prior-filed copending application. 
 

 If an application by joint inventors includes more than
 one independent and distinct invention, and restriction is required, it may become
 necessary to change the inventorship named in the application if the elected invention
 is not the invention of all the originally named joint inventors. In such a case, a
 “divisional” application complying with 35 U.S.C. 120 would be entitled to
 the benefit of the earlier filing date of the original application. In requiring
 restriction in an application filed by joint inventors, the examiner should remind
 applicants of the necessity to correct the inventorship pursuant to 37 CFR 1.48 if an
 invention is elected and all of the claims to the invention of one or more joint
 inventors are canceled. See MPEP § 817 . 
 

 In such scenarios, inventorship overlap required by
 35 U.S.C.
 120 is met even though at the time of filing of the divisional
 application, the inventorship overlap was lost as a result of the deletion of a joint
 inventor in the parent application and filing of only claims invented by that inventor
 in the divisional application. The overlap of inventorship need not be present on the
 date the continuing application is filed nor present when the parent application issues
 or becomes abandoned if the parent application prior to restriction names the inventor
 or a joint inventor of the divisional application as a joint inventor(s) in the parent
 application. See MPEP
 §§ 602.01(c) and 602.09 
 for further information.
 

 An application claiming the benefit of a provisional
 application under 35
 U.S.C. 119(e) should not be called a “divisional” of the
 provisional application. See 37 CFR 1.78 , especially paragraphs
 (a) - (c) , and MPEP §
 211 et seq. for requirements and information pertaining to entitlement to
 the benefit of the filing date of a provisional application. 
 

 It is no longer appropriate to include the U.S. Patent and
 Trademark Office classification of the divisional application and the status and
 assigned art unit of the parent application in the application data sheet. See
 MPEP §
 601.05 .
 

 Use form paragraph 2.01 to remind applicant of possible
 divisional status. 
 

 ¶ 2.01 Possible Status as Divisional

 This application, which discloses and claims only subject matter disclosed
 in prior Application No. [1], filed [2] , appears to claim only
 subject matter directed to an invention that is independent and distinct from that claimed in
 the prior application, and names the inventor or at least one joint inventor named in the
 prior application. Accordingly, this application may constitute a divisional application.
 Should applicant desire to claim the benefit of the filing date of the prior application,
 attention is directed to 35
 U.S.C. 120 , 37 CFR 1.78 , and MPEP § 211 et
 seq .
 

 Examiner Note:
 
 1. In brackets 1 and 2, insert the application number (series code and
 serial number) and filing date of the prior application, respectively.
 

 2. This form paragraph should only be used if it appears that the
 application may be a divisional, but a benefit claim has not been properly established.
 
 

 3. An application claiming the benefit of a provisional application
 under 35 U.S.C.
 119(e) should not be called a "divisional" of the prior
 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) . However, such a divisional design application may only be
 filed under the procedure set forth in 37 CFR 1.53(b) , and not under
 37 CFR
 1.53(d) . See MPEP § 1504.20 .
 

 While a divisional application may depart from the
 phraseology used in the parent application there may be no departure therefrom in
 substance or variation in the disclosure that would amount to “new matter” if introduced
 by amendment into the parent application. Compare MPEP §
 201.08 and MPEP §
 211 et seq. 

 For notation to be put in the file history by the examiner
 in the case of a divisional application, see MPEP §
 202 .
 

 
 201.06(a) Former 37 CFR 1.60 Divisional Continuation
 Procedure [R-08.2012]
 

 37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October
 21, 1997. 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). All continuation and divisional applications filed under 37
 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined
 under the procedures set forth in former 37 CFR 1.60. For more information
 pertaining to practice and procedure under former 37 CFR 1.60, see MPEP §
 201.06(a) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO
 website at www.uspto.gov/web/offices/pac/mpep/mpep.htm ). 

 

 
 201.06(b) Former 37 CFR 1.62 File Wrapper Continuing
 Procedure [R-08.2012]
 

 37 CFR 1.62 was deleted effective December 1, 1997. See 1203 O.G. 63, October
 21, 1997. 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, see MPEP 706.07(h), paragraph IV. A request filed on or
 after December 1, 1997, under former 37 CFR 1.62 for a continuation-in-part (CIP)
 application, or for a continuation or divisional of an application having a filing
 date before June 8, 1995, will be treated as an improper application. 

 All continuation, divisional and CIP applications filed under former 37 CFR
 1.62 prior to December 1, 1997, will continue to be processed and examined under
 the procedures set forth in former 37 CFR 1.62. For more information pertaining to
 practice and procedure under former 37 CFR 1.62, see MPEP § 201.06(b) in the MPEP
 8th Edition, Rev. 1 (February 2003)(available on the USPTO website at
 www.uspto.gov/web/offices/pac/mpep/mpep.htm ). 

 

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

 
 37 CFR 1.53 Application number, filing date, and
 completion of application. 

 [Editor Note: Applicable to patent applications
 filed under 35 U.S.C. 111 on or after
 December 18, 2013.]
 

 *****

 
 (b) Application filing requirements— Nonprovisional
 application. The filing date of an application for patent filed
 under this section, other than an application for a design patent or a
 provisional application under paragraph (c) of this section, is the date on
 which a specification, with or without claims, is received in the Office.
 The filing date of an application for a design patent filed under this
 section, except for a continued prosecution application under paragraph (d)
 of this section, is the date on which the specification as prescribed by
 35
 U.S.C. 112 , including at least one claim, and any
 required drawings are received in the Office. No new matter may be
 introduced into an application after its filing date. A continuing
 application, which may be a continuation, divisional, or
 continuation-in-part application, may be filed under the conditions
 specified in 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) and §
 1.78 .
 
 (1) A continuation or divisional application
 that names as inventors the same or fewer than all of the inventors
 named in the prior application may be filed under this paragraph or
 paragraph (d) of this section.
 

 (2) A continuation-in-part application (which
 may disclose and claim subject matter not disclosed in the prior
 application) or a continuation or divisional application naming an
 inventor not named in the prior application must be filed under this
 paragraph.
 

 
 

 
 *****

 

 
 37 CFR 1.53 (pre-PLT) Application number, filing date, and
 completion of application. 

 [Editor Note: Applicable to patent applications filed under
 35
 U.S.C. 111 (pre-PLT) before December 18, 2013.] 

 *****

 
 (b) Application filing requirements - Nonprovisional
 application. The filing date of an application for patent filed
 under this section, except for a provisional application under paragraph (c)
 of this section or a continued prosecution application under paragraph (d)
 of this section, is the date on which a specification as prescribed by
 35
 U.S.C. 112 containing a description pursuant to §
 1.71 and at least one claim pursuant to §
 1.75 , and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office.
 No new matter may be introduced into an application after its filing date. A
 continuing application, which may be a continuation, divisional, or
 continuation-in-part application, may be filed under the conditions
 specified in 35 U.S.C. 120 ,
 121 or 365(c) and §
 1.78(c) and (d) .
 
 (1) A continuation or divisional application
 that names as inventors the same or fewer than all of the inventors
 named in the prior application may be filed under this paragraph or
 paragraph (d) of this section.
 

 (2) A continuation-in-part application
 (which may disclose and claim subject matter not disclosed in the
 prior application) or a continuation or divisional application naming
 an inventor not named in the prior application must be filed under
 this paragraph.
 

 
 

 
 *****

 
 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 § 211 et seq. 

 II. OATH/DECLARATION 
 37 CFR 1.63 Oath or Declaration. 

 [Editor Note: Applicable only to patent applications filed under
 35 U.S.C. 111 , 363 , or
 385 on or after
 September 16, 2012.] 

 *****

 
 (d)
 
 (1) A newly executed oath or declaration
 under § 1.63 , or
 substitute statement under § 1.64 , is not required under §§
 1.51(b)(2) and
 1.53(f) , or
 under §§ 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 § 1.78 of an
 earlier-filed application, provided that an oath or declaration in
 compliance with this section, or substitute statement under §
 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.
 

 (2) 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 it is accompanied by a statement signed pursuant to §
 1.33(b) stating
 the name of each inventor in the continuing application. 
 

 (3) Any new joint inventor named in the
 continuing application must provide an oath or declaration in
 compliance with this section, except as provided for in §
 1.64 .
 

 
 

 
 *****

 

 
 37 CFR 1.63 (pre-AIA) Oath or Declaration. 

 [Editor Note: Not applicable to patent applications filed under
 35 U.S.C. 111 , 363 , or
 385 on or after
 September 16, 2012.] 

 
 (d)
 
 (1) A newly executed oath or declaration
 is not required under § 1.51(b)(2) and
 § 1.53(f) in a
 continuation or divisional application, provided that:
 
 (i) The prior nonprovisional
 application contained an oath or declaration as prescribed by
 paragraphs (a) through (c) of this section;
 

 (ii) The continuation or divisional
 application was filed by all or by fewer than all of the
 inventors named in the prior application;
 

 (iii) The specification and drawings
 filed in the continuation or divisional application contain
 no matter that would have been new matter in the prior
 application; and
 

 (iv) A copy of the executed oath or
 declaration filed in the prior application, showing the
 signature or an indication thereon that it was signed, is
 submitted for the continuation or divisional application.
 

 
 

 (2) The copy of the executed oath or
 declaration submitted under this paragraph for a continuation or
 divisional application must be accompanied by a statement
 requesting the deletion of the name or names of the person or
 persons who are not inventors in the continuation or divisional
 application.
 

 (3) Where 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 § 1.47 , the copy
 of the executed oath or declaration for such prior application must
 be accompanied by:
 
 (i) A copy of the decision granting
 a petition to accord § 1.47 status to the prior application,
 unless all inventors or legal representatives have filed an
 oath or declaration to join in an application accorded status
 under § 1.47 of
 which the continuation or divisional application claims a
 benefit under 35 U.S.C.
 120 , 121 , or 365(c) ; and
 

 (ii) If one or more inventor(s) or
 legal representative(s) who refused to join in the prior
 application or could not be found or reached has subsequently
 joined in the prior application or another application of
 which the continuation or divisional application claims a
 benefit under 35 U.S.C.
 120 , 121 , or 365(c) , a copy of the subsequently
 executed oath(s) or declaration(s) filed by the inventor or
 legal representative to join in the application.
 

 
 

 (4) 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 during the prosecution of the
 prior application.
 

 (5) A newly executed oath or declaration
 must be filed in a continuation or divisional application naming an
 inventor not named in the prior application.
 

 
 

 
 *****

 

 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 §
 211 et 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 §
 211 et 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 §
 602.05 et 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.
 

 ¶ 2.03 Affidavits or Declarations in Prior Application

 Applicant refers to an affidavit or declaration filed in the prior
 application. Affidavits or declarations, such as those submitted under 37 CFR 1.130 ,
 1.131 
 and 1.132 , filed during the prosecution of the prior application do not
 automatically become a part of this application. Where it is desired to rely on an
 earlier-filed affidavit or declaration, the applicant should make the remarks of record in
 this application and include a copy of the original affidavit or declaration filed in the
 prior application.
 

 Examiner Note:

 This form paragraph is to be used in applications filed under
 37 CFR
 1.53(b) . Do not use this form paragraph in applications filed under
 37 CFR
 1.53(d) since affidavits and/or declarations, such as those submitted
 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
 37 CFR
 1.53(d) 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 .
 

 

 
 201.06(d) 37 CFR 1.53(d) Continued Prosecution Application
 (CPA) Practice [R-01.2024]
 

 
 37 CFR 1.53 Application number, filing date, and
 completion of application. 

 *****

 
 (d) Application filing requirements - Continued
 prosecution (nonprovisional) application. 
 
 (1) A continuation or divisional application
 (but not a continuation-in-part) of a prior nonprovisional application
 may be filed as a continued prosecution application under this
 paragraph, provided that: 
 
 (i) The application is for a design
 patent; 
 

 (ii) The prior nonprovisional
 application is a design application, but not an international
 design application, that is complete as defined by §
 1.51(b) ,
 except for the inventor’s oath or declaration if the application
 is filed on or after September 16, 2012, and the prior
 nonprovisional application contains an application data sheet
 meeting the conditions specified in § 1.53(f)(3)(i) ; and 
 

 (iii) The application under this
 paragraph is filed before the earliest of: 
 
 (A) Payment of the issue fee on
 the prior application, unless a petition under §
 1.313(c) is granted in the prior
 application; 
 

 (B) Abandonment of the prior
 application; or 
 

 (C) Termination of proceedings
 on the prior application. 
 

 
 

 
 

 (2) The filing date of a continued
 prosecution application is the date on which a request on a separate
 paper for an application under this paragraph is filed. An application
 filed under this paragraph:
 
 (i) Must identify the prior
 application;
 

 (ii) Discloses and claims only subject
 matter disclosed in the prior application;
 

 (iii) Names as inventors the same
 inventors named in the prior application on the date the
 application under this paragraph was filed, except as provided
 in paragraph (d)(4) of this section; 
 

 (iv) Includes the request for an
 application under this paragraph, will utilize the file jacket
 and contents of the prior application, including the
 specification, drawings and the inventor's oath or declaration
 from the prior application, to constitute the new application,
 and will be assigned the application number of the prior
 application for identification purposes; and 
 

 (v) Is a request to expressly abandon
 the prior application as of the filing date of the request for
 an application under this paragraph. 
 

 
 

 (3) The filing fee, search fee, and
 examination fee for a continued prosecution application filed under
 this paragraph are the basic filing fee as set forth in §
 1.16(b) , the search fee as set forth in §
 1.16(l) , and the examination fee as set forth
 in § 1.16(p) . 
 

 (4) An application filed under this paragraph
 may be filed by fewer than all the inventors named in the prior
 application, provided that the request for an application under this
 paragraph when filed is accompanied by a statement requesting deletion
 of the name or names of the person or persons who are not inventors of
 the invention being claimed in the new application. No person may be
 named as an inventor in an application filed under this paragraph who
 was not named as an inventor in the prior application on the date the
 application under this paragraph was filed, except by way of
 correction of inventorship under § 1.48 . 
 

 (5) Any new change must be made in the form
 of an amendment to the prior application as it existed prior to the
 filing of an application under this paragraph. No amendment in an
 application under this paragraph (a continued prosecution application)
 may introduce new matter or matter that would have been new matter in
 the prior application. Any new specification filed with the request
 for an application under this paragraph will not be considered part of
 the original application papers, but will be treated as a substitute
 specification in accordance with § 1.125 . 
 

 (6) The filing of a continued prosecution
 application under this paragraph will be 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 § 1.14 to access to, copies of, or information
 concerning either the prior application or any continuing application
 filed under the provisions of this paragraph, may be given similar
 access to, copies of, or similar information concerning the other
 application or applications in the file jacket. 
 

 (7) A request for an application under this
 paragraph is the specific reference required by 35 U.S.C.
 120 to every application assigned the
 application number identified in such request. No amendment in an
 application under this paragraph may delete this specific reference to
 any prior application.
 

 (8) In addition to identifying the
 application number of the prior application, applicant should furnish
 in the request for an application under this paragraph the following
 information relating to the prior application to the best of his or
 her ability:
 
 (i) Title of invention; 

 (ii) Name of applicant(s); and 

 (iii) Correspondence address.

 
 

 (9) See § 1.103(b) for requesting a limited suspension of
 action in an application filed under this paragraph.
 

 
 

 
 *****

 

 

 
 37 CFR 1.53 (pre-AIA) Application number, filing date, and
 completion of application. 

 *****

 
 (d) Application filing requirements - Continued prosecution
 (nonprovisional) application. 
 (1) A continuation or divisional application
 (but not a continuation-in-part) of a prior nonprovisional application
 may be filed as a continued prosecution application under this
 paragraph, provided that:
 
 (i) The application is for a design
 patent:
 

 (ii) The prior nonprovisional
 application is a design application that is complete as defined
 by § 1.51(b) ;
 and
 

 (iii) The application under this
 paragraph is filed before the earliest of:
 
 (A) Payment of the issue fee on
 the prior application, unless a petition under §
 1.313(c) is granted in the prior
 application;
 

 (B) Abandonment of the prior
 application; or
 

 (C) Termination of proceedings on
 the prior application.
 

 
 

 
 

 (2) The filing date of a continued
 prosecution application is the date on which a request on a separate
 paper for an application under this paragraph is filed. An application
 filed under this paragraph:
 
 (i) Must identify the prior
 application;
 

 (ii) Discloses and claims only subject
 matter disclosed in the prior application;
 

 (iii) Names as inventors the same
 inventors named in the prior application on the date the
 application under this paragraph was filed, except as provided
 in paragraph (d)(4) of this section;
 

 (iv) Includes the request for an
 application under this paragraph, will utilize the file jacket
 and contents of the prior application, including the
 specification, drawings and oath or declaration from the prior
 application, to constitute the new application, and will be
 assigned the application number of the prior application for
 identification purposes; and
 

 (v) Is a request to expressly abandon
 the prior application as of the filing date of the request for
 an application under this paragraph.
 

 
 

 (3) The filing fee, search fee, and
 examination fee for a continued prosecution application filed under
 this paragraph are the basic filing fee as set forth in §
 1.16(b) , the search fee as set forth in §
 1.16(l) , and the examination fee as set forth
 in § 1.16(p) .
 

 (4) An application filed under this
 paragraph may be filed by fewer than all the inventors named in the
 prior application, provided that the request for an application under
 this paragraph when filed is accompanied by a statement requesting
 deletion of the name or names of the person or persons who are not
 inventors of the invention being claimed in the new application. No
 person may be named as an inventor in an application filed under this
 paragraph who was not named as an inventor in the prior application on
 the date the application under this paragraph was filed, except by way
 of correction of inventorship under § 1.48 .
 

 (5) Any new change must be made in the form
 of an amendment to the prior application as it existed prior to the
 filing of an application under this paragraph. No amendment in an
 application under this paragraph (a continued prosecution application)
 may introduce new matter or matter that would have been new matter in
 the prior application. Any new specification filed with the request
 for an application under this paragraph will not be considered part of
 the original application papers, but will be treated as a substitute
 specification in accordance with § 1.125 .
 

 (6) The filing of a continued prosecution
 application under this paragraph will be 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 § 1.14 to access to, copies of, or information
 concerning either the prior application or any continuing application
 filed under the provisions of this paragraph, may be given similar
 access to, copies of, or similar information concerning the other
 application or applications in the file jacket.
 

 (7) A request for an application under this
 paragraph is the specific reference required by 35 U.S.C.
 120 to every application assigned the
 application number identified in such request. No amendment in an
 application under this paragraph may delete this specific reference to
 any prior application.
 

 (8) In addition to identifying the
 application number of the prior application, applicant should furnish
 in the request for an application under this paragraph the following
 information relating to the prior application to the best of his or
 her ability:
 
 (i) Title of invention;

 (ii) Name of applicant(s); and

 (iii) Correspondence address.

 
 

 (9) See § 1.103(b) for
 requesting a limited suspension of action in an application filed
 under this paragraph.
 

 
 

 
 *****

 

 

 I. CPA PRACTICE ELIMINATED AS TO UTILITY AND PLANT APPLICATIONS Effective July 14, 2003, continued prosecution
 application (CPA) practice was eliminated as to utility and plant applications.
 Henceforth, 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 . For more information on RCE practice, see
 MPEP §
 706.07(h) . Applicants who wish to file a continuation,
 divisional, or continuation-in-part application should file an application under
 37 CFR
 1.53(b) . See MPEP §
 201.06(c) . CPAs filed prior to July 14, 2003, are
 processed and examined under the procedures set forth in prior 37 CFR
 1.53(d) . Any request for a CPA filed on or after July 14,
 2003, in a utility or plant application is improper, regardless of the filing date
 of the utility or plant application in which the CPA is filed.
 

 The Office will not convert an improper CPA into an
 application under 37 CFR 1.53(b) unless the
 applicant shows that there are extenuating circumstances that warrant the
 burdensome process of such conversion.
 

 If an examiner discovers that an improper or
 incomplete CPA has been processed as a proper CPA in error, the examiner should
 immediately notify a Legal Instrument Examiner or other technical support staff
 within the Technology Center (TC) who will reprocess the CPA and correct the
 application records as appropriate.
 

 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,
 is treated as a request for continued examination (RCE) under 37 CFR
 1.114 . See MPEP § 706.07(h) and form
 paragraph 7.42.15 . If the improper CPA does not satisfy
 the requirements of 37 CFR 1.114 (e.g., the
 request lacks a submission or the fee under 37 CFR
 1.17(e) , or the prosecution of the application is not
 closed), the Office treats the improper CPA as an improper RCE, and the time
 period set in the last Office action (or notice) will continue to run. The
 Office will send the applicant a Notice of Improper Request for Continued
 Examination (RCE), PTO-2051. If the time period for reply to the last Office
 action (or notice) has expired, the application is abandoned and the applicant
 must file a petition under 37 CFR 1.137 and the
 required petition fee to revive the abandoned application. Unless prosecution
 in the application was not closed, the petition must be accompanied by a
 submission as defined by 37 CFR 1.114(c) and the fee
 set forth in 37 CFR 1.17(e) , unless
 previously filed. If the last Office action is a notice of allowance, the issue
 fee must also be paid at the time of filing the petition to revive. If
 prosecution in the application was not closed, the petition must be accompanied
 by a reply to the non-final Office action.
 

 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). See 37 CFR 1.145 . 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 as set
 forth in 37 CFR 1.17(e) 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. See MPEP § 821.03 . Any newly
 submitted claims that are directed to an invention distinct from and
 independent of the invention previously claimed will be withdrawn from
 consideration. Applicants should be notified by using form paragraph
 8.04 
 or 8.26 . 
 

 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. The Office will notify the applicant of
 the improper CPA by mailing a notice of improper CPA. The time period for reply
 set in the last Office action (or notice) will continue to run. Applicant may
 file a continuing application under 37 CFR 1.53(b) . If the time
 period for reply has expired, the application is abandoned. If the application
 in which the improper CPA is filed is abandoned when a continuing application
 is filed, applicant would need to file a petition under 37 CFR
 1.137 to revive the prior application to establish
 copendency with the continuing application under 37 CFR
 1.53(b) .
 

 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 meeting the conditions specified
 in 37 CFR 1.53(f)(3)(i) (i.e., an application data sheet
 indicating the name, residence, and mailing address of each inventor). A
 continuation or divisional application filed under 37 CFR
 1.53(d) is called a “Continued Prosecution Application”
 (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. This treatment is limited to CPAs in which the prior
 application has an Office action issued by the examiner. If no Office action
 has been issued in the prior application, the CPA will be treated, for
 examination purposes, like a “new” application unless a petition to make
 special under 37 CFR 1.102 or a request for expedited examination
 under 37 CFR
 1.155 is filed in the CPA. As “amended” applications
 generally have a shorter time frame for being acted on by examiners than “new”
 applications, the treatment of a CPA as an “amended” application will result in
 a first Office action being mailed in the CPA much sooner than if it had been
 filed as a continuation application under 37 CFR
 1.53(b) (or under former 37 CFR
 1.60 or 1.62 ). Therefore,
 applicants are strongly encouraged to file any preliminary amendment in a CPA
 at the time the CPA is filed. See 37 CFR 1.115 and
 MPEP §
 714.03(a) .
 

 A request for a CPA expressly abandons the prior
 application as of the filing date of the request for the CPA. See
 37 CFR
 1.53(d)(2)(v) . Therefore, where the prior application is
 not to be abandoned, any continuation or divisional application must be filed
 under 37
 CFR 1.53(b) . If applicant wants the USPTO to disregard a
 previously filed request for a CPA filed in a design application (and not
 recognize its inherent request to expressly abandon the prior application) and
 to treat the paper as the filing of an application under 37 CFR
 1.53(b) , the applicant must file a petition under
 37 CFR
 1.182 . A request to expressly abandon an application is
 not effective until the abandonment is acknowledged, including the express
 abandonment of the prior application of a CPA that occurs by operation of
 37 CFR
 1.53(d)(2)(v) . The express abandonment of the prior
 application is acknowledged and becomes effective upon processing and entry of
 the CPA into the file of the prior application. Thus, such a petition under
 37 CFR
 1.182 should be filed expeditiously since the petition
 will not be granted once the request for a CPA has been entered into the prior
 application (and the inherent request to expressly abandon the prior
 application has been acknowledged). If the request for a CPA has been entered
 into the prior application by the time the petition under 37 CFR
 1.182 and the application file are before the deciding
 official for a decision on the petition, the petition will be denied. It is
 noted, however, that if the applicant intended to file a second application
 (either a continuation or a divisional) without abandoning the prior
 application, applicant can still achieve that result without loss of the
 benefit of the original filing date by: (A) continuing the prosecution of the
 original application via the CPA; and (B) filing a new continuation/divisional
 under 37
 CFR 1.53(b) claiming benefit of the CPA and its parent
 applications under 35 U.S.C. 120 during the
 pendency of the CPA. 
 

 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. Any changes to
 the continuation or divisional application desired when filing the CPA must be
 made in the form of an amendment to the prior application as it existed prior
 to filing the CPA, see 37 CFR 1.53(d)(5) . Any new
 specification filed with the CPA request will not be considered part of the
 original application papers, but will be treated as a substitute specification
 in accordance with 37 CFR 1.125 . However, the
 applicant must comply with the requirements of 37 CFR
 1.125(b) before the substitute specification will be
 entered into the CPA. Since 37 CFR 1.125(b) requires
 that a substitute specification be accompanied by, inter
 alia, a statement that the substitute specification includes no
 new matter, any substitute specification containing new matter will be denied
 entry by the examiner. Any preliminary amendment to the written description and
 claims, other than a substitute specification, filed with a CPA request will
 ordinarily be entered. Any new matter which is entered, however, will be
 required to be canceled pursuant to 35 U.S.C. 132 from the
 descriptive portion of the specification. Further, any claim(s) which relies
 upon such new matter for support will be rejected under 35 U.S.C.
 112(a) . See MPEP § 2163.06 . In the event
 that a substitute specification or preliminary amendment containing new matter
 was filed with a request for a CPA, applicant may file a petition under
 37 CFR
 1.182 requesting that the substitute specification or
 preliminary amendment be removed from the CPA application file, and be accorded
 the status as a separate application by being placed in a new file wrapper and
 assigned a new application number, with the new application being accorded a
 filing date as of the date the request for a CPA and substitute
 specification/preliminary amendment were filed. Of course, a request for a CPA
 is not improper simply because the request is accompanied by a substitute
 specification or preliminary amendment containing new matter. Thus, an
 applicant will not be entitled to a refund of the filing fee paid in a proper
 CPA as a result of the granting of a petition under 37 CFR
 1.182 requesting that the substitute specification or
 preliminary amendment be removed from the CPA application file.
 

 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. There is no other limit to the number of
 CPAs that may be filed in a chain of continuing applications. However, only one
 CPA may be pending at one time based on the same prior nonprovisional
 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 in accordance with 35 U.S.C.
 41 and 37 CFR 1.16 . No search and
 examination fees are required for a CPA filed before December 8, 2004. The only
 other statutory requirement under 35 U.S.C. 111(a) is a
 signed oath or declaration. Since a CPA cannot contain new matter, the oath or
 declaration filed in the prior nonprovisional application would supply all the
 information required under the statute and rules to have a complete application
 and to obtain a filing date. Accordingly, the previously filed oath or
 declaration (if any) will be considered to be the oath or declaration of the
 CPA. However, for continuing applications (including CPAs) filed 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. 
 

 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 . See subsection I, above.
 

 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, that is complete as defined by
 37 CFR
 1.51(b) . 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.
 

 Note that 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.
 

 C. Initial Processing A CPA request will be initially processed by the
 TC assigned the prior application. The TC will verify that (A) the prior
 application is a design application, but not an international design
 application, (B) the correct application number of the prior nonprovisional
 application is identified in the request, (C) the request is properly signed,
 (D) the prior nonprovisional application was pending on, and that the issue fee
 has not been paid in the prior nonprovisional application on or prior to, the
 filing date of the CPA request, (E) the prior nonprovisional application was
 complete under 37 CFR 1.51(b) (e.g., the
 filing fee has been paid and a signed oath or declaration under
 37 CFR
 1.63 has been filed in the prior application), except for
 the inventor’s oath or declaration if the CPA is filed on or after September
 16, 2012, and the prior application contains an application data sheet
 indicating the name, residence, and mailing address of each inventor, and (F)
 the proper filing fee has been paid in the CPA. If one or more other conditions
 for filing a CPA have not been satisfied or the proper basic filing fee, search
 fee, and examination fee have not been paid, the applicant will be so notified
 and no examination will be made in the CPA until the filing error has been
 corrected or the proper fees have been submitted. See 37 CFR
 1.53(h) . If an examiner discovers that an improper or
 incomplete CPA has been processed as a proper CPA in error, the examiner should
 immediately notify a Legal Instrument Examiner or other technical support staff
 within the TC who will reprocess the CPA and correct the application
 records.
 

 D. Incorrect Patent Application Number Identified A request for a CPA must identify the prior
 nonprovisional application ( 37 CFR 1.53(d)(2)(i) ) by
 application number (series code and serial number) or by serial number and
 filing date. Where a paper requesting a CPA is filed which does not properly
 identify the prior nonprovisional application number, the TC should attempt to
 identify the proper application number by reference to other identifying
 information provided in the CPA papers, e.g., name of the inventor, filing
 date, title of the invention, and attorney’s docket number of the prior
 application. If the TC is unable to identify the application number of the
 prior application and the party submitting the CPA papers is a registered
 practitioner, the practitioner may be requested by telephone to supply a letter
 signed by the practitioner providing the correct application number. If all
 attempts to obtain the correct application number are unsuccessful, the paper
 requesting the CPA should be returned by the TC to the sender where a return
 address is available. The returned CPA request must be accompanied by a cover
 letter which will indicate to the sender that if the returned CPA request is
 resubmitted to the U.S. Patent and Trademark Office with the correct
 application number within two weeks of the mail date on the cover letter, the
 original date of receipt of the CPA request will be considered by the U.S.
 Patent and Trademark Office as the date of receipt of the CPA request. See
 37 CFR
 1.5(a) . A copy of the returned CPA request and a copy of
 the date-stamped cover letter should be retained by the TC. Applicants may use
 either the Certificate of Mailing or Transmission procedure under
 37 CFR
 1.8 or the Priority Mail
 Express ® procedure under 37 CFR
 1.10 for resubmissions of returned CPA requests if they
 desire to have the benefit of the date of deposit in the United States Postal
 Service. If the returned CPA request is not resubmitted within the two-week
 period with the correct application number, the TC should cancel the original
 “Office Date” stamp on the CPA request and re-stamp the returned CPA request
 with the date of receipt of the resubmission or with the date of deposit as
 Priority Mail Express ® with the United States Postal
 Service, if the CPA request is resubmitted under 37 CFR
 1.10 . Where the CPA request is resubmitted later than two
 weeks after the return mailing by the U.S. Patent and Trademark Office, the
 later date of receipt or date of deposit as Priority Mail
 Express ® of the resubmission will be considered
 to be the filing date of the CPA request. The two-week period to resubmit the
 returned CPA request is not extendible. See 37 CFR 1.5(a) .
 

 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
 applicant's ability: (A) title of invention; (B) name of applicant(s); and (C)
 correspondence address. See 37 CFR 1.53(d)(8) . 
 

 E. Signature Requirement A CPA is a request to expressly abandon the prior
 application ( 37 CFR 1.53(d)(2)(v) ) and,
 therefore, must be properly signed. For a listing of the individuals who may
 properly sign a CPA request, see 37 CFR 1.33(b) . A CPA
 request filed on or after September 16, 2012, must be signed by: 
 

 
 (1) A patent practitioner of record appointed
 in compliance with 37 CFR 1.32(b) ; 
 

 (2) A patent practitioner not of record who acts
 in a representative capacity under the provisions of 37 CFR
 1.34 ; or 
 

 (3) The applicant ( 37 CFR
 1.42 ). 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 
 

 
 (1) A patent practitioner of record appointed in
 compliance with 37 CFR 1.32(b) ; 
 

 (2) A patent practitioner not of record who acts
 in a representative capacity under the provisions of 37 CFR
 1.34 ; 
 

 (3) An assignee as provided for under
 37 CFR 3.71(b) ; or 
 

 (4) All of the applicants ( 37 CFR
 1.41(b) ) for patent, unless there is an assignee of
 the entire interest and such assignee has taken action in the application
 in accordance with 37 CFR 3.71 . 
 

 
 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, except when one or more of the joint
 inventor-applicants is appointed to represent all of the joint
 inventor-applicants. See MPEP § 402.02(a) , subsection
 I. An unsigned or improperly signed CPA request will be placed in the file of
 the prior application, and is entitled to an application filing date, but is
 ineffective to abandon the prior application. A CPA will NOT be examined until
 the CPA request is properly signed.
 

 A request for a CPA may be signed by a registered
 practitioner acting in a representative capacity under 37 CFR
 1.34 . However, correspondence concerning the CPA will be
 sent by the Office to the correspondence address as it appears in the prior
 nonprovisional application until a new power of attorney, or change of
 correspondence address signed by an attorney or agent of record in the prior
 application, is filed in the CPA.
 

 A request for a CPA filed prior to September 16,
 2012, may also be signed by the assignee or assignees of the entire interest.
 However, the request must be accompanied by papers establishing the assignee's
 ownership under pre-AIA 37 CFR 3.73(b) ,
 unless such papers were filed in the prior application and ownership has not
 changed.
 

 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. A request for a CPA
 cannot be submitted as a part of papers filed for another purpose, see
 37 CFR
 1.53(d)(2) , (e.g., the filing of a request for a CPA
 within an amendment after final for the prior application is an improper
 request for a CPA).
 

 A paper requesting a CPA may be filed via the
 USPTO patent electronic filing system. CPA requests are filed as follow-on
 documents, and may only be filed by registered e-filers. See
 MPEP §
 502.05 for additional information regarding filing
 correspondence via the USPTO patent electronic filing system. The date of
 receipt accorded to a CPA request submitted via the USPTO patent electronic
 filing system is the date the complete request is received by the Office. See
 37 CFR
 1.6(a)(4) . 
 

 A request for a CPA may also be sent to the
 U.S. Patent and Trademark Office by mail (see MPEP § 501 ),
 facsimile transmission (see MPEP § 502.01 ) or hand
 delivery to the USPTO Customer Service Window in Alexandria, VA 22314. The date
 of receipt accorded to a CPA request sent by facsimile transmission is the date
 the complete transmission is received by an Office facsimile unit, unless the
 transmission is completed on a Saturday, Sunday, or federal holiday within the
 District of Columbia. Correspondence for which transmission was completed on a
 Saturday, Sunday, or federal holiday within the District of Columbia, will be
 accorded a receipt date of the next succeeding day which is not a Saturday,
 Sunday, or federal holiday within the District of Columbia. See
 37 CFR
 1.6(a)(3) .
 

 Applicants filing a CPA by facsimile transmission
 may include a “Receipt for Facsimile Transmitted CPA” (PTO/SB/29A) containing a
 mailing address and identifying information (e.g., the prior application
 number, filing date, title, first named inventor) with the request for a CPA.
 The USPTO will: (A) separate the “Receipt for Facsimile Transmitted CPA” from
 the CPA request papers; (B) date-stamp the “Receipt for Facsimile Transmitted
 CPA”; (C) verify that the identifying information provided by the applicant on
 the “Receipt for Facsimile Transmitted CPA” is the same information provided on
 the accompanying request for a CPA; and (D) mail the “Receipt for Facsimile
 Transmitted CPA” to the mailing address provided on the “Receipt for Facsimile
 Transmitted CPA.” The “Receipt for Facsimile Transmitted CPA” cannot be used to
 acknowledge receipt of any paper(s) other than the request for a CPA. A
 returned “Receipt for Facsimile Transmitted CPA” may be used as prima facie
 evidence that a request for a CPA containing the identifying information
 provided on the “Receipt for Facsimile Transmitted CPA” was filed by facsimile
 transmission on the date stamped thereon by the USPTO. As the USPTO will verify
 only the identifying information contained on the request for a CPA, and will
 not verify whether the CPA was accompanied by other papers (e.g., a preliminary
 amendment), the “Receipt for Facsimile Transmitted CPA” cannot be used as
 evidence that papers other than a CPA were filed by facsimile transmission in
 the USPTO. Likewise, applicant-created “receipts” for acknowledgment of
 facsimile transmitted papers (whether created for the acknowledgment of a CPA
 or other papers) cannot be used as evidence that papers were filed by facsimile
 in the USPTO. Applicants are cautioned not to include information on a “Receipt
 for Facsimile Transmitted CPA” that is intended for retention in the
 application file, as the USPTO does not plan on retaining a copy of such
 receipts in the file of the application.
 

 If an applicant filing a CPA by facsimile does
 not include an authorization to charge the basic filing fee, search fee, and
 examination fee to a deposit account or to a credit card using PTO-2038 (See
 MPEP §
 509 ), the application will be treated under
 37 CFR
 1.53(f) as having been filed without the appropriate fees
 (as fees cannot otherwise be transmitted by facsimile).
 

 37 CFR
 1.6(f) provides for the situation in which the Office has
 no evidence of receipt of a CPA transmitted to the Office by facsimile
 transmission. 37 CFR 1.6(f) requires that a showing thereunder
 include, inter alia, a copy of the sending unit’s report
 confirming transmission of the application or evidence that came into being
 after the complete transmission of the application and within one business day
 of the complete transmission of the application.
 

 The Certificate of Mailing Procedure under
 37 CFR
 1.8 does not apply to filing a request for a CPA, other
 than for resubmissions of returned CPA requests as discussed in subsection D
 above, 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 ( 37 CFR
 1.8(a)(2)(i)(A) ). Thus, if (A) the Office mails a final
 Office action on July 2, 1997 (Wednesday), with a shortened statutory period of
 3 months to reply and (B) a petition for a three-month extension of time (and
 the fee) and a CPA are received in the Office on January 5, 1998 (Monday),
 accompanied by a certificate of mailing under 37 CFR
 1.8 dated January 2, 1998 (Friday), then the prior
 application was abandoned on January 3, 1998, and the CPA is improper because
 the CPA was not filed before the abandonment of the prior application. As a
 further example, if (A) the Office mails a final Office action on July 2, 1997
 (Wednesday), with a shortened statutory period of 3 months to reply and (B)
 applicant submits a petition for a three-month extension of time (and the fee)
 and a CPA request via facsimile transmission accompanied by a certificate of
 transmission under 37 CFR 1.8 at 9:00 PM
 Pacific Time on January 2, 1998 (Friday), but the Office does not receive the
 complete transmission until 12:01 AM Eastern Time on January 3, 1998
 (Saturday), then the CPA is improper because the CPA request was not filed
 until January 5, 1998, see 37 CFR 1.6(a)(3) , which is
 after the abandonment (midnight on Friday, January 2, 1998) of the prior
 application.
 

 G. Filing Fee The filing fees for a CPA are the basic filing
 fee as set forth in 37 CFR 1.16(b) , the search
 fee as set forth in 37 CFR 1.16(l) , and the
 examination fee as set forth in 37 CFR 1.16(p) . See
 37 CFR
 1.53(d)(3) .
 

 A general authorization to charge fees to a deposit
 account which was filed in the prior application carries over from the prior
 nonprovisional application to a CPA. Thus, where a general authorization to
 charge fees to a deposit account was filed in the prior application the Office
 should charge the necessary filing fee of the CPA to the deposit account.
 

 Where a general authorization to charge fees to a
 deposit account was filed in the prior application and applicant desires to
 file a CPA without paying the filing fee on the filing date of the application,
 applicant may file the CPA with specific instructions revoking the general
 authorization filed in the prior application.
 

 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 set
 forth in 37
 CFR 1.16(f) in order to prevent abandonment of the
 application. For CPAs filed on or after December 8, 2004, but prior to July 1,
 2005, which have been accorded a filing date under 37 CFR
 1.53(d) , if the search and/or examination fees are paid
 on a date later than the filing date of the application, the surcharge under
 37 CFR
 1.16(f) is not required. For CPAs filed on or after July
 1, 2005, which have been accorded a filing date under 37 CFR
 1.53(d) , if any of the basic filing fee, search fee, or
 examination fee are paid on a date later than the filing date of the CPA, the
 surcharge under 37 CFR 1.16(f) is required.
 For CPAs filed on or after September 16, 2012, if the prior application does
 not contain the inventor’s oath or declaration, the surcharge under
 37 CFR
 1.16(f) is required (unless the inventor’s oath or
 declaration is being filed with the CPA). The time period usually set is 2
 months from the date of notification. This time period is subject to the
 provisions of 37 CFR 1.136(a) . A CPA will not be placed upon the files
 for examination until all of its required parts, including the basic filing
 fee, search fee, examination fee, and any necessary surcharge, are received.
 See 37
 CFR 1.53(h) . Thus, it would be inappropriate to conduct
 an interview or to issue an action on the merits in the CPA until the basic
 filing fee, search fee, examination fee, and any necessary surcharge, are
 received.
 

 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. 37 CFR 1.27(c)(4) provides
 that the refiling of an application as a continued prosecution application
 under 37
 CFR 1.53(d) requires a new assertion of continued
 entitlement to small entity status. Similarly, pursuant to 37 CFR
 1.29(e) , 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 § 1.53(d) ) requires a new certification of entitlement to
 micro entity status for the continuing application. See also
 MPEP § 509.04 .
 

 Because small entity status and micro entity
 status do not automatically carry over from the prior application to the CPA,
 unless the request for a CPA specifically indicates that the filing fee is to
 be charged in the small entity or micro entity amount, or otherwise includes an
 assertion of entitlement to small entity or micro entity status, the regular
 undiscounted entity filing fee should be charged.
 

 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. However, a CPA is not improper simply because the
 request for a CPA is combined in a single paper with a petition for extension
 of time. The “separate paper” requirement of 37 CFR
 1.53(d)(2) is intended to preclude an applicant from
 burying a request for a CPA in a paper submitted primarily for another purpose,
 e.g., within an amendment after final for the prior application. 
 

 While the filing of a CPA is not strictly a reply
 to an Office action mailed in a prior application, a request for a CPA is a
 paper directed to and placed in the file of the prior application, and seeks to
 take action in (i.e., expressly abandon) the prior application. Thus, it will
 be considered a “reply” for purposes of 37 CFR 1.136(a)(3) . As a
 result, an authorization in the prior application to charge all required fees,
 fees under 37 CFR 1.17 , or all
 required extension of time fees to a deposit account or to a credit card (See
 MPEP §
 509 ) will be treated as a constructive petition for
 an extension of time in the prior application for the purpose of establishing
 continuity with the CPA. The correct extension fee to be charged in the prior
 application would be the extension fee necessary to establish continuity
 between the prior application and the CPA on the filing date of the CPA.
 

 If an extension of time directed to the prior
 application is filed as a separate paper, it 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.
 

 J. Notice of CPA Filing Since a “Notice of Abandonment” is not mailed in
 the prior application as a result of the filing of a CPA nor is a filing
 receipt normally mailed for a CPA, the examiner should advise the applicant
 that a request for a CPA has been granted by including form paragraph
 2.30 
 in the first Office action of the CPA.
 

 ¶ 2.30 CPA Status Acceptable (for Design Applications)

 The request filed on [1] 
 for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application
 No. [2] is acceptable and a CPA has been established. An action on the CPA
 follows.
 

 Examiner Note:
 
 1. Use this form paragraph in the
 first Office action of a CPA to advise the applicant that a request for a CPA is
 acceptable and that a CPA has been established. This notice should be given, since
 applicant is not notified of the abandonment of the parent nor is a filing receipt
 normally sent for a CPA. If the request for a CPA in a utility or plant application is
 improper and the CPA has been treated as an RCE, do not use this form paragraph (use
 form paragraph 7.42.15 instead). See MPEP §
 706.07(h) .
 

 2. In bracket 1 insert the filing
 date of the request for a CPA.
 

 3. In bracket 2 insert the
 Application Number of the parent application.
 
 
 

 A “conditional” request for a CPA will not be
 permitted. Any “conditional” request for a CPA submitted as a separate paper
 with an amendment after final in an application will be treated as an
 unconditional request for a CPA of the application. This will result (by
 operation of 37 CFR 1.53(d)(2)(v) ) in
 the abandonment of the prior application, and (if so instructed in the request
 for a CPA) the amendment after final in the prior application will be treated
 as a preliminary amendment in the CPA. The examiner should advise the applicant
 that a “conditional” request for a CPA has been treated as an unconditional
 request for a CPA and has been accepted by including form paragraph
 2.35 
 in the first Office action of the CPA.
 

 ¶ 2.35 CPA Status Acceptable - Conditional Request (for Design Applications)

 Receipt is acknowledged of the “conditional” request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on prior Application No. [2] . Any “conditional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA. Accordingly,
 the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.
 

 Examiner Note:
 
 1. Use this form paragraph in the
 first Office action of a CPA to advise the applicant that a “conditional” request for a
 CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has
 been established. This notice should be given, since applicant is not notified of the
 abandonment of the parent nor is a filing receipt normally sent for a CPA. If the
 request for a CPA in a utility or plant application is improper and the CPA has been
 treated as an RCE, do not use this form paragraph (use form paragraph
 7.42.15 
 instead). See MPEP §
 706.07(h) .
 

 2. In bracket 1 insert the filing date of the request for a CPA.

 3. In bracket 2 insert the Application Number identified in the CPA request.
 
 

 Where the examiner recognizes that a paper filed
 in the prior application contains a request for a CPA, but the request is not
 in a separate paper, the examiner should, if possible, contact applicant by
 telephone to notify applicant that the request for a CPA is ineffective or
 notify the applicant in the next Office action that the CPA request is
 ineffective by using form paragraph 2.31 .
 

 ¶ 2.31 CPA Status Not Acceptable - Request Not on Separate Paper (for Design Applications)

 Receipt is acknowledged of the request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on Application No. [2] . However, because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2) 
 , the request is not acceptable and no CPA has been established.
 

 Examiner Note:
 
 1. Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) 
 and, therefore, no CPA has been established.
 

 2. In bracket 1 insert the filing date of the paper containing the request for a CPA.

 3. In bracket 2 insert the Application Number identified in the CPA request.
 
 
 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. 37 CFR
 1.53(d)(4) . 
 

 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 pursuant to
 37 CFR
 1.33(b) 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: 
 

 
 (1) A patent practitioner of record appointed in
 compliance with 37 CFR 1.32(b) ; 
 

 (2) A patent practitioner not of record who
 acts in a representative capacity under the provisions of
 37
 CFR 1.34 ; or 
 

 (3) The applicant ( 37 CFR
 1.42 ). 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:
 

 
 (1) A patent practitioner of record appointed
 in compliance with 37 CFR 1.32(b) ;
 

 (2) A patent practitioner not of record who
 acts in a representative capacity under the provisions of
 37
 CFR 1.34 ;
 

 (3) An assignee as provided for under
 37 CFR 3.71(b) ; or
 

 (4) All of the applicants ( 37 CFR
 1.41(b) ) for patent, unless there is an assignee of
 the entire interest and such assignee has taken action in the application
 in accordance with 37 CFR 3.71 . 
 

 
 The examiner should acknowledge receipt of a
 statement filed with a CPA 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 in the first Office action in the CPA by using form paragraph
 2.32 .
 

 ¶ 2.32 Request To Delete a Named Inventor in CPA (for Design
 Applications)
 

 Receipt is acknowledged of the statement
 requesting that [1] be deleted as a named inventor which was filed with the
 Continued Prosecution Application (CPA) on [2] . The inventorship has been
 corrected as requested.
 

 Examiner Note:
 
 1. Use this form paragraph where a
 Continued Prosecution Application (CPA) is filed accompanied by a statement requesting
 deletion of the name or names of the person or persons who are not inventors of the
 invention being claimed in the new application. Any request to delete a named inventor
 in a CPA filed after the CPA is filed must be accompanied by a
 request under 37 CFR
 1.48 . 
 

 2. In bracket 1 insert the name or
 names of the inventor(s) requested to be deleted.
 

 3. In bracket 2 insert the filing
 date of the CPA.
 
 
 

 After the first Office action is mailed, the
 application file should be sent to OPAP for revision of its records to reflect
 the change of inventorship. Any request by applicant for a corrected filing
 receipt to show the change in inventorship should not be submitted until after
 the examiner has acknowledged the change in inventorship in an Office action.
 Otherwise, the “corrected” filing receipt may not show the change in
 inventorship.
 

 The inventive entity of the CPA will be the same
 as the inventive entity of the prior application even if the CPA papers include
 a transmittal letter or a new oath or declaration naming an inventor not named
 in the prior application. However, the new oath or declaration will be placed
 in the application file. Upon review of the application, the examiner will
 notify the applicant in the first Office action using form paragraph
 2.33 
 that the inventive entity of the prior application has been carried over into
 the CPA. If the inventive entity set forth in the transmittal letter of the new
 oath or declaration is desired, then a request under 37 CFR
 1.48 , including the required fee set forth in
 37 CFR 1.17(i) , must be
 filed. See MPEP § 602.01(c)(1) for
 requests under 37 CFR 1.48 filed on or
 after September 16, 2012. For requests filed before September 16, 2012, see
 MPEP §
 602.01(c)(3) in Revision 08.2017 of the Ninth Edition
 of the MPEP, published in January 2018. No new oath or declaration need be
 filed with the later-filed request under 37 CFR 1.48 if such was
 submitted on filing of the CPA. For continuing applications filed 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 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. For the oath or declaration requirements in
 applications filed prior to September 16, 2012, see MPEP §
 602.01(b) . 
 

 If a request under 37 CFR
 1.48 is not filed, it should be noted that the filing in
 a CPA of a transmittal letter or a new oath or declaration containing an
 inventor not named in the prior nonprovisional application may result in the
 claims in the CPA being rejected under pre-AIA 35 U.S.C.
 102(f) .
 

 ¶ 2.33 New Inventor Identified in CPA (for Design
 Applications)
 

 It is noted that [1] 
 identified as a named inventor in the Continued Prosecution Application (CPA) filed under
 37 CFR
 1.53(d) on [2] , but no request under 37 CFR 1.48 , as is
 required, was filed to correct the inventorship. Any request to add an inventor must be in the
 form of a request under 37
 CFR 1.48 . Otherwise, the inventorship in the CPA shall be the same as in
 the prior application.
 

 Examiner Note:
 
 1. Use this form paragraph where a
 request for a Continued Prosecution Application (CPA) identifies one or more inventors
 who were not named as inventors in the prior application on the filing date of the
 CPA.
 

 2. In bracket 1 insert the name or
 names of the inventor(s) requested to be added followed by either --was-- or --were--,
 as appropriate.
 

 3. In bracket 2 insert the filing
 date of the CPA.
 
 
 
 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. That is, the CPA includes the request for an application under
 37 CFR
 1.53(d) and the recitation of the application number of
 the prior application in such request is the “specific reference to the earlier
 filed application” required by 35 U.S.C. 120 . No further
 amendment to the specification of the CPA nor a reference in the CPA’s
 application data sheet is required by 35 U.S.C. 120 or
 37 CFR
 1.78(d) to identify or reference the prior application,
 as well as any other application assigned the application number of the prior
 application (e.g., in instances in which a CPA is the last in a chain of
 CPAs).
 

 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. See Sampson v. Ampex Corp., 463
 F.2d 1042, 1044-45, 174 USPQ 417, 418-19 (2d Cir. 1972); Sticker
 Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 93, 160 USPQ
 177, 179 (7th Cir. 1968); Hovlid v. Asari, 305 F.2d 747,
 751, 134 USPQ 162, 165 (9th Cir. 1962). See also MPEP §
 211 et seq. In addition, every intermediate application must
 also make a reference to the first (earliest) application and every application
 after the first application and before such intermediate application.
 

 In the situation in which there is a chain of
 CPAs, each CPA in the chain will, by operation of 37 CFR
 1.53(d)(7) , contain the required specific reference to
 its immediate prior application, as well as every other application assigned
 the application number identified in such request. Put simply, 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.
 

 Where the non-continued prosecution application
 originally assigned such application number itself claims the benefit of a
 prior application or applications under 120 , 121 ,
 or 386(c) , 37 CFR 1.78(d)(2) continues
 to require that the non-continued prosecution application originally assigned
 such application number contain a reference to any such prior application(s).
 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. 37 CFR
 1.78(d)(4) provides that “[t]he identification of an
 application by application number under this section is the identification of
 every application assigned that application number necessary for a specific
 reference required by 35 U.S.C. 120 to every such
 application assigned that application number.” Thus, where a referenced CPA is
 in a chain of CPAs, this reference will constitute a reference under
 35
 U.S.C. 120 and 37 CFR
 1.78(d)(4) to every CPA in the chain as well as the
 non-continued prosecution application originally assigned such application
 number.
 

 Therefore, regardless of whether an application
 is filed under 37 CFR 1.53(b) or
 (d) , a claim under 35 U.S.C.
 120 to the benefit of a CPA is, by operation of
 37 CFR
 1.53(d)(7) and 37 CFR
 1.78(d)(4) , a claim to every application assigned the
 application number of such CPA. In addition, applicants will not be permitted
 to delete such a benefit claim as to certain applications assigned that
 application number (e.g., for patent term purposes). See 37 CFR
 1.53(d)(7) .
 

 Further, an applicant in a CPA is not permitted
 to amend the first sentence(s) of the specification to provide the specific
 reference to the prior application, or to provide such a reference in an
 application data sheet. Any such amendment will not be entered. The applicant
 should be advised in the next Office action that any such amendment to the
 specification or reference in the application data sheet has not been entered
 by using form paragraph 2.34 . 
 

 ¶ 2.34 Reference in CPA to Prior Application (by Amendment to the
 Specification; for Design Applications)
 

 The amendment filed [1] 
 requesting that the specification be amended to refer to the present Continued Prosecution
 Application (CPA) as a [2] application of Application No. [3] has
 not been entered. As set forth in 37 CFR 1.53(d)(7) , a request for a CPA is
 the specific reference required by 35 U.S.C. 120 to every application
 assigned the application number identified in such request. Thus, there is no need to amend
 the first sentence(s) of the specification to refer back to the prior application and any such
 amendment shall be denied entry.
 

 Examiner Note:
 
 1. Use this form paragraph to inform
 the applicant that an amendment to the first sentence(s) of the specification referring
 to the CPA as a continuing application of the prior application has not been entered and
 will not be entered if submitted again.
 

 2. In bracket 1, insert the filing
 date of the amendment.
 

 3. In bracket 2, insert either
 --continuation-- or --divisional--.
 

 4. In bracket 3, insert the
 Application Number of the prior nonprovisional application.
 
 
 

 Priority claims under 35 U.S.C.
 119(a) - (d) made in a parent
 application will automatically carry over to a CPA.
 

 B. Terminal Disclaimer A terminal disclaimer filed in the parent
 application carries over to a CPA. The terminal disclaimer filed in the parent
 application carries over because the CPA retains the same application number as
 the parent application, i.e., the application number to which the previously
 filed terminal disclaimer is directed. If applicant does not want the terminal
 disclaimer to carry over to the CPA, applicant must file a petition under
 37 CFR
 1.182 along with the required petition fee, requesting
 the terminal disclaimer filed in the parent application not be carried over to
 the CPA. See MPEP § 1490 , “Withdrawing a Recorded Terminal
 Disclaimer,” subheading entitled “A. Before Issuance of Patent.”
 

 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: (A) the CPA is designated as a continuation or is
 not designated at all (i.e., the CPA is NOT designated as a divisional); (B)
 there was an express election by the applicant in reply to a restriction
 requirement in the prior application; (C) 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. 
 

 Where all of the conditions are met, the
 examiner’s first action should repeat the restriction requirement made in the
 prior application to the extent it is still applicable in the CPA and include a
 statement that prosecution is being continued on the invention elected and
 prosecuted by applicant in the prior application.
 

 D. Information Disclosure Statements and Preliminary
 Amendments All information disclosure statements filed in
 the prior application that comply with the content requirements of
 37 CFR
 1.98 will be considered in a CPA by the examiner. No
 specific request that the previously submitted information be considered in a
 CPA is required. 
 

 In addition, 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. The
 submission of an information disclosure statement after the first Office action
 is mailed could delay prosecution. Therefore, applicants are encouraged to file
 any information disclosure statement in a CPA as early as possible, preferably
 at the time of filing the CPA. For further discussion of information disclosure
 statements, see MPEP § 609 .
 

 Applicants are also encouraged to file all
 preliminary amendments at the time of filing a CPA because the entry of any
 preliminary amendment filed after the filing date of the CPA could be denied
 under 37 CFR
 1.115 if the preliminary amendment unduly interferes with
 the preparation of a first Office action. See MPEP §
 714.03(a) . In a situation where the applicant needs
 more time to prepare a preliminary amendment or to file an information
 disclosure statement, applicant can request a three-month suspension of action
 under 37 CFR
 1.103(b) . The three-month suspension of action under
 37 CFR
 1.103(b) must be filed at the time of filing a CPA. See
 MPEP §
 709 .
 

 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. Therefore, no copy of the original
 affidavit or declaration filed in the parent nonprovisional application need be
 filed in 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. 37 CFR 1.53(d)(6) . 
 

 B. Certified Copy A certified copy of a CPA will be prepared by the
 Certification Section of the Patent and Trademark Copy Fulfillment Branch upon
 request. The certified copy will consist of a copy of the most recent
 non-continued prosecution application in the chain of CPAs. The filing date of
 the CPA will be shown in the certified copy as the filing date of the most
 recent non-continued prosecution application in the chain of CPAs.
 

 V. FORMS Form PTO/SB/29, “For Design Applications Only:
 Continued Prosecution Application (CPA) Request Transmittal,” may be used by
 applicant for filing a CPA under 37 CFR 1.53(d) . The form is
 available on the Office website at www.uspto.gov/PatentForms .
 

 

 

 
 201.07 Continuation Application [R-08.2017]

 
 37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other
 applications. 

 *****

 
 (d) Claims under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) for the benefit
 of a prior-filed nonprovisional application, international application, or
 international design application. An applicant in 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 may claim the benefit of one
 or more prior-filed copending nonprovisional applications, international
 applications designating the United States, or international design
 applications designating the United States under the conditions set forth in
 35
 U.S.C. 120 , 121 , 365(c) ,
 or 386(c) and this section.
 
 *****

 (2) Except for a continued prosecution
 application filed under § 1.53(d) , any
 nonprovisional application, international application designating the
 United States, or international design application designating the United
 States that claims the benefit of one or more prior-filed nonprovisional
 applications, international applications designating the United States,
 or international design applications designating the United States must
 contain or be amended to contain a reference to each such prior-filed
 application, identifying it by application number (consisting of the
 series code and serial number), international application number and
 international filing date, or international registration number and
 filing date under § 1.1023 . If the
 later-filed application is a nonprovisional application, the reference
 required by this paragraph must be included in an application data sheet
 (§ 1.76(b)(5) ). The reference also must identify the
 relationship of the applications, namely, whether the later-filed
 application is a continuation, divisional, or continuation-in-part of the
 prior-filed nonprovisional application, international application, or
 international design application.
 

 
 

 
 *****

 

 A continuation application is an application for the
 invention(s) disclosed in a prior- filed copending nonprovisional application,
 international application designating the United States, or international design
 application designating the United States. The disclosure presented in the continuation
 must not include any subject matter which would constitute new matter if submitted as an
 amendment to the parent application. 
 

 The continuation application may be filed under
 37 CFR
 1.53(b) (or 1.53(d) if the application is a
 design application, but not an international design application). The inventorship in
 the continuation application must include at least one inventor named in the prior-filed
 application, and the continuation application must also claim the benefit of the
 prior-filed application under 35 U.S.C. 120 , 121 ,
 365(c) , or 386(c) . See 37 CFR 1.78 ,
 especially paragraphs (d) and (e), and MPEP §
 211 et seq. for additional requirements and more information regarding
 entitlement to the benefit of the filing date of a prior-filed copending application. 
 

 An application claiming the benefit of a provisional
 application under 35
 U.S.C. 119(e) should not be called a “divisional” of the
 provisional application. See 37 CFR 1.78 , especially paragraphs
 (a)-(c), and MPEP § 211 et seq. for requirements and information pertaining to entitlement to
 the benefit of the filing date of a provisional application. 
 

 At any time before the patenting, abandonment, or
 termination of proceedings on an earlier application, an applicant may have recourse to
 filing a continuation application under 37 CFR 1.53(b) in order to introduce
 into the application a new set of claims and to establish a right to further examination
 by the Office. A continued prosecution application (CPA) under 37 CFR 1.53(d) 
 (available only for design applications, but not international design applications),
 however, must be filed prior to payment of the issue fee unless a petition under
 37 CFR
 1.313(c) is granted in the prior application. In addition, a
 continuation or divisional application may only be filed under 37 CFR 1.53(d) 
 if the prior application is a nonprovisional 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
 indicating the name, residence, and mailing address of each inventor. Use form paragraph
 2.05 to
 remind applicant of possible continuation status.
 

 ¶ 2.05 Possible Status as Continuation

 This application discloses and claims only subject matter disclosed in prior
 Application No. [1] , filed [2 ], and names the inventor or at least
 one joint inventor named in the prior application. Accordingly, this application may
 constitute a continuation or divisional. Should applicant desire to claim the benefit of the
 filing date of the prior application, attention is directed to 35 U.S.C. 120 ,
 37 CFR
 1.78 , and MPEP § 211 et seq .
 

 Examiner Note:
 
 1. In brackets 1 and 2, insert the application number (series code and
 serial number) and filing date of the prior application, respectively.
 

 2. This form paragraph should only be used if it appears that the
 application may be a continuation, but a benefit claim has not been properly
 established. 
 

 3. An application claiming the benefit of a provisional application
 under 35 U.S.C.
 119(e) should not be called a "continuation" of the provisional
 application. 
 
 
 

 

 
 201.08 Continuation-in-Part Application [R-07.2022]

 
 37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other
 applications. 

 *****

 
 (d) Claims under 35 U.S.C. 120 ,
 121 , 365(c) , or
 386(c) for the benefit
 of a prior-filed nonprovisional application, international application, or
 international design application. An applicant in 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 may claim the benefit of one
 or more prior-filed copending nonprovisional applications, international
 applications designating the United States, or international design
 applications designating the United States under the conditions set forth in
 35
 U.S.C. 120 , 121 , 365(c) ,
 or 386(c) and this section.
 
 *****

 (2) Except for a continued prosecution
 application filed under § 1.53(d) , any
 nonprovisional application, international application designating the
 United States, or international design application designating the United
 States that claims the benefit of one or more prior-filed nonprovisional
 applications, international applications designating the United States,
 or international design applications designating the United States must
 contain or be amended to contain a reference to each such prior-filed
 application, identifying it by application number (consisting of the
 series code and serial number), international application number and
 international filing date, or international registration number and
 filing date under § 1.1023 . If the
 later-filed application is a nonprovisional application, the reference
 required by this paragraph must be included in an application data sheet
 (§ 1.76(b)(5) ). The reference also must identify the
 relationship of the applications, namely, whether the later-filed
 application is a continuation, divisional, or continuation-in-part of the
 prior-filed nonprovisional application, international application, or
 international design application.
 

 
 

 
 *****

 

 A continuation-in-part is an application filed during the
 lifetime of a prior-filed nonprovisional application, international application
 designating the United States, or international design application designating the
 United States repeating some substantial portion or all of the prior-filed application
 and adding matter not disclosed in the prior-filed 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-filed application
 under 35 U.S.C.
 120 , 121 , 365(c) , or
 386(c) . For more information on claiming the benefit of a
 prior-filed application, see MPEP § 211 et seq. A continuation-in-part application CANNOT be filed as a
 continued prosecution application (CPA) under 37 CFR 1.53(d) . 
 

 An application claiming the benefit of a provisional
 application under 35
 U.S.C. 119(e) should not be called a “continuation-in-part” of the
 provisional application because such an application claims the benefit of the
 provisional application and is not a continuation, division, or continuation-in-part of
 the provisional application.
 

 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 conditions set
 forth in 35 U.S.C.
 120 and 37 CFR 1.78 . 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:
 

 
 (A) The first application and the alleged
 continuation-in-part application were filed with the same inventor or at least one
 common joint inventor;
 

 (B) 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
 

 (C) 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 (see
 37 CFR
 1.76(b)(5) ).)
 

 
 See MPEP § 211 et seq. for more information on claiming the benefit of a prior
 nonprovisional application.
 

 For notation to be put in the file history by the examiner
 in the case of a continuation-in-part application see MPEP §
 202 . See MPEP § 708 for order of
 examination.
 

 Use form paragraph 2.06 to remind applicant of possible
 continuation-in-part status.
 

 ¶ 2.06 Possible Status as Continuation-in-Part

 This application repeats a substantial portion of prior Application No.
 [1] , filed [2] , and adds disclosure not presented in the prior
 application. Because this application names the inventor or at least one joint inventor named
 in the prior application, it may constitute a continuation-in-part of the prior application.
 Should applicant desire to claim the benefit of the filing date of the prior application,
 attention is directed to 35 U.S.C. 120 , 37 CFR 1.78 , and MPEP § 211 et
 seq.
 

 Examiner Note:
 
 1. In brackets 1 and 2, insert the application number (series code and
 serial number) and filing date of the prior application, respectively.
 

 2. This form paragraph should only be used if it appears that the
 application may qualify as a continuation-in-part, but no benefit claim has been
 properly established. 
 

 3. An application claiming the benefit of a provisional application
 under 35 U.S.C.
 119(e) should not be called a "continuation-in-part" of the
 provisional application. 
 
 
 

 

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 201-Types of Applications 
 201.01-National Applications 

 201.02-General Terms Used to Describe Applications 

 201.03-[Reserved] 

 201.04-Provisional Application 

 201.05-Reissue Application 

 201.06-Divisional Application 
 201.06(a)-Former 37 CFR 1.60 Divisional Continuation Procedure 

 201.06(b)-Former 37 CFR 1.62 File Wrapper Continuing Procedure 

 201.06(c)-37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure 

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

 
 

 201.07-Continuation Application 

 201.08-Continuation-in-Part Application 

 
 

 202-Cross-Noting 

 203-Status of Applications 
 203.01-New 

 203.02-Rejected 

 203.03-Amended 

 203.04-Allowed or in Issue 

 203.05-Abandoned 

 203.06-Incomplete 

 203.07-[Reserved] 

 203.08-Status Inquiries 
 203.08(a)-Congressional and Other Official Inquiries 

 
 

 
 

 204‑209-[Reserved] 

 210-Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application 

 211-Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) 
 211.01-Requirements Related to the Prior-Filed Application 
 211.01(a)-Claiming the Benefit of a Provisional Application 

 211.01(b)-Claiming the Benefit of a Nonprovisional Application 

 211.01(c)-Claiming the Benefit of an International Application Designating the United States 

 211.01(d)-Claiming the Benefit of an International Design Application Designating the United States 

 
 

 211.02-Reference to Prior Application(s) 
 211.02(a)-Correcting or Adding a Benefit Claim After Filing 

 
 

 211.03-Time Period for Making a Claim for Benefit Under 37 CFR 1.78 

 211.04-Delayed Benefit Claims 

 211.05-Sufficiency of Disclosure in Prior-Filed Application 

 
 

 212-[Reserved] 

 213-Right of Priority of Foreign Application 
 213.01-Recognized Countries and Regional Patent Offices of Foreign Filing 

 213.02-Formal Requirements Relating to Foreign Priority Application 

 213.03-Time for Filing U.S. Nonprovisional Application 

 213.04-Requirement to File Priority Claim and Certified Copy During Pendency of Application 

 213.05-Right of Priority Based Upon an Application for an Inventor’s Certificate 

 213.06-Claiming Priority and Filing a Certified Copy in a National Stage Application (35 U.S.C. 371) 

 213.07-Claiming Priority and Filing a Certified Copy in a Nonprovisional International Design Application 

 
 

 214-Formal Requirements of Claim for Foreign Priority 
 214.01-Time for Filing Priority Claim 

 214.02-Unintentionally Delayed Priority Claims 

 214.03-Office Acknowledgement of Priority Claims 

 214.04-Proper Identification of Priority Application in Foreign Priority Claim 

 
 

 215-Certified Copy of Foreign Application 
 215.01-Electronic Priority Document Exchange 

 215.02-Time For Filing Certified Copy – Application Filed On or After March 16, 2013 
 215.02(a)-Timeliness Requirement – Met By Priority Document Exchange 

 215.02(b)-Timeliness Requirement – Met By Interim Copy of Foreign Application 

 
 

 215.03-Time For Filing Certified Copy – Application Filed Before March 16, 2013 

 
 

 216-Entitlement to Priority 
 216.01-Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent 

 
 

 217-Incorporation by Reference Under 37 CFR 1.57(b) 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:31