MPEP 200: Types, Cross-Noting, and Status of Applications

+ Foreign and Domestic Priority

Inventorship, how to correct inventorship, the definitions and differences between the various types of
patent applications, and the rules for foreign and domestic priority are the primary areas from this
chapter that almost certainly will be tested.

1. Types of U.S. Patent Applications

a. A U.S. patent application can be either a national application which was filed directly as such
at the Patent Office, or an application which has entered the national stage from an
international (PCT) application.
b. National Application (via USPTO)
i. Examiner discretion applies in re restrictions for separating out inventions.
ii. A filing date is rewarded even for applications that are filed without an oath or
declaration. They’ll be sent a Notice of Missing Parts, tho.
c. National Stage Application from PCT (international app)
i. Unity of invention practice applies in re restrictions.
ii. A filing date isn’t rewarded until the oath/declaration is filed and the filing fee is
paid.
2. Correction of Inventorship – this is actually now in MPEP 600 instead, which makes way more sense.
Everything here can be looked up that way.
Just as a reminder, inventorship can be established by submitting a complete signed ADS,
signed oath/declaration, or substitute statement.

a. USPTO can change inventorship for issued patents and pending apps.
b. There is no “diligence” requirement.

c. Pre-AIA: any corrections require the magic words "without deceptive intent" and "with the
written consent of the assignee."

d. AIA:
i. only consent of the assignee has to be obtained, and even that is sometimes not
required. However, there is no "changed my mind" standard of error correction. You
cannot correct purposeful conduct. It must have been an "error."
ii. Correction of inventorship is available for all applications.
iii. Non-Provisional Apps
1. A signed ADS
a. Identifies each inventor by legal name, address info, required fee.
The order of the inventor names can be changed as well.
2. O/D is required for any new inventor listed.
iv. Provisional Apps
1. Once a cover sheet is filed for the provisional app, any request to correct
inventorship must include:
 a. A signed request, the inventors legal names, the required fee.
v. Special circumstances
1. Reissue
2. Issued patents
a. Statement from all assignees, statement from all inventors, fee.
3. Case before the PTAB
a. a request for correction of inventorship in an application must be in
the form of a motion.
vi. Continuing Apps
1. A newly executed O/D or substitute statement isn’t required in a continuing
application that claims the benefit of an earlier-filed application, provided
that an O/D/substitute statement was executed by or with respect to such
inventor and was filed in the earlier-filed application, and a copy is
submitted in the continuing application.
2. The inventorship of a continuing application is the inventors specified in the
application data sheet filed before or concurrently with the copy of the
inventor's O/D from the earlier-filed application. If an ADS wasn’t filed that
way, the inventorship is the inventorship set forth in the copy, unless it is
accompanied by a statement signed ,stating the name of each inventor in
the continuing application.
vii. Miscellaneous Oath/Declaration Facts (also in MPEP 600 instead of 200)
1. Any new joint inventor named in the continuing application must provide an
oath or declaration in compliance with this section.
2. An assignment may serve as an oath or declaration of the assignment as
executed if:
a. It includes the information and statements required;
b. A copy of the assignment is recorded.
3. Any reference to an oath or declaration under this section also includes an
assignment (with the necessary statements) as provided for in this
paragraph.
4. Bla bla. Just look it up.
3. Provisional Apps
Facts which likely will be tested are that IDSs are not permitted, and that regular
applications within the first year after filing can be converted into provisional applications
and, likewise, a provisional application can be treated as a regular application upon request.
a. No’s of Provisional apps:
i. No IDS’s
ii. No claims
iii. No examination or amendment
iv. No O/D
v. No design apps
vi. No priority from other apps
vii. No priority for design apps
b. Required parts
 i. Minimum
1. Any necessary drawings
2. A spec satisfying 112(a)
ii. Within two months of a Notice of Missing Parts:
1. A cover sheet or an ADS specifying:
a. • the application as a provisional application
i. Other will be treated as a non-provisional.
b. • the names or name of the inventor(s);
c. • the residence of each named inventor;
d. • the title of the invention;
e. • the name and registration number of the agent or attorney, if
any;
f. • the docket number of the filer, if any; and
g. • the correspondence address;
2. Filing fee
c. Revival: only possible within its 12-month pendency… allegedly, because if it is
unintentional, then it’s 14 months + a big fee.
d. Effective filing date of app: while the app is pending, the 20-yr clock doesn’t start.
e. Priority from other apps? NO.
f. Provisional design apps don’t exist. Yah NOPE.
g. Conversion from a non-provisional to a provisional is possible via a petition + fee, within one
year of filing. Same, vice versa, if requested.
4. Types of Apps
a. Regular utility app
b. Continuing Apps (co-pending apps)
i. Continuation (continue with the same subject matter of the parent invention)
1. A continuation is the second, n-th, etc. application by the same applicant for
the same invention claimed in a prior, non-provisional application, and filed
before the original (parent) becomes abandoned or is patented. Thus, the
original application and the continuation are "copending." (Copending
simply means that the applications were both alive at the Patent Office for
at least one overlapping day.) Continuing applications are those which are
co-pending and include continuations, continuations-in-part, and divisional
applications.
2. A continuation is typically filed to start fresh with prosecution after a Final
Rejection, rather than taking an appeal or filing an RCE. A continuation can
be in the form of a fresh set of papers with a·fresh oath or copy of the oath
in the parent. No new oath is required to file a continuation.
ii. Continuation-in-part (continue with the same invention + new matter)
1. A continuation-in-part (CIP) is also the second application by the same
applicant for the same invention claimed in a prior, non¬ provisional
application, and filed before the original (parent) becomes abandoned or is
patented (copending). In addition, a CIP repeats some substantial portion of
 the earlier application(s) and adds matter not disclosed in the earlier
application(s) ("New Matter"). A CIP can only be filed under Rule 1.53(b).
iii. Divisional (divides the parent app into separate inventions)
1. A divisional is a later application for a distinct and independent invention
carved out of a pending application, and claiming only subject matter
disclosed in the earlier, parent application.
c. Substitute app
i. have the same disclosure as an earlier application and which, by mistake or on
purpose, are not co-pending with an earlier application. A substitute is not a
continuing application.
d. Timing of Continuing Applications
i. can be filed at any time during prosecution or appeal, as long as the parent is alive
(pending) to adopt the earlier filing date.
ii. Is an bona fide alternative to appealing or filing a response
iii. A continuing app should contain a sentence incorporating the prior application by
reference to guard against a specification copy missing a page.
e. Filing of apps – look up 35 USC 111
i. All applications must be filed under Rule 1.53. Rule 1.53(b) can be used to file any
application or any form of continuation thereof. A copy of the original application
and oath will suffice for continuations and divisions.
ii. Request for Continued Examination can be filed with a request, a fee, and a
submission of something for the Examiner to consider. It is not a new application
filing.

iii. Continued Prosecution Applications (CPAs) – look up 37 CFR 1.53(d) Continued

Prosecution Application (CPA) Practice
1. Are for design patents only.
2. In a CPA application, the file of the parent is continued and, while the parent
is indeed abandoned, the CPA has the same serial number as its parent and
no reference to the parent is inserted into the specification. A CPA
application therefore cannot be filed unless the parent is to be abandoned.
3. A CPA can be filed of a CPA.
4. Everything from the parent carries over: the small entity statement, claims
for foreign priority, etc.
iv. Naming of inventors isn’t necessary to get a filing date.
1. If an app is filed with an inventor name but no O/D: an O/D with a different
inventor name will establish inventorship.
2. If no inventor name is set forth (until a later O/D, compliant ADS, or
substitute statement), and alphanumeric identifier should be used.
v. Reference Filing:
1. When an app has previously been filed (foreign, provisional, non-
provisional), and applicant nearly needs to submit an ADS that references
the previously filed application by country, serial number and filing date. A
complete, certified copy of the "reference" application must be submitted
 within 4 months of filing or within 16 months of the original reference filing
date.
2. This style of "reference" filing is not considered a best practice by the
USPI'O, and should only be used when a copy of the specification, claims and
drawings of the referenced application are not readily available.
vi. Continuing Apps Summary

1.53(b) 1.53(d) (CPA)

New File Created Uses Old File

New Serial Number No New Serial Number

Cannot File by Fax Fax Submission Allowed

CIP NoCIP

For utility, plant, or design applications. For design applications only. after
July 14,
2003
New Application, CIP, Continuation or Continuation or Division only
Division

Nothing carries forward. Everything in parent carries forward

except election in a CPA Divisional.

Parent not automatically abandoned. Parent is abandoned.

Can submit copy of Oath or Declaration Can submit copy of Oath or

from Parent Declaration from Parent

Can add or delete inventor in a Can delete but cannot add

continuation, CIP or division. inventors in a continuation, or
division without petition and fee.

Must include reference to parent for No reference to parent required.

domestic priority. (Either in application
or in ADS (Application Data Sheet).)

Must make claim for foreign priority. No claim for foreign priority required.

5. Priority
Straightforward though they are, the different effects of domestic priority under 35 U.S.C. §
120 and foreign priority under 35 U.S.C. § 119 have tripped up many an Exam taker.
 Favorite Patent Office tricks are based upon facts establishing that an application can be
reissued (or, under certain circumstances, a Certificate of Correction issued) to properly
claim foreign priority, and that a translation of a foreign priority application is only required
to be filed in the Patent Office if the applicant wants to overcome a rejection based upon an
intervening reference, i.e., a reference which has a date as prior art between the U.S. filing
date and the earlier foreign priority date.

a. Priority refers to the right to obtain the benefit of a filing date of an earlier filed application.
b. different claims can have different effective filing dates
c. Requirements to secure priority:
i. the prior application must satisfy 112(a) (be enabling, have a proper written
description, disclose best mode), and
ii. a proper claim for priority must be made in the subsequent app.
d. Domestic priority: a chain of co-pending U.S. apps
e. Foreign priority: foreign app filed less than 12 months before the U.S. app (or 6 months for
designs), and the country is a treaty country, then yes.
f. Priority claim: the claim is made within 16 months from the filing date of the earliest-filed
application or 4 months from the filing of the later-filed patent application; and
g. Correcting inventorship: file a signed ADS + a oath by the missing inventor.