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Continued Prosecution Application (CPA) Practice

Continued Prosecution Application (CPA) Practice

Summary : This notice will clarify how the Patent and Trademark Office (PTO) processes requests for a continued prosecution application (CPA) under 37 C.F.R. § 1.53(d), indicate that patent examiners act on a CPA with priority, and, in addition, inform the public about a new PTO service to acknowledge receipt of a request for a CPA which has been transmitted by facsimile to the PTO.

First : If a request for a CPA also includes an instruction and/or reference that is inconsistent with the CPA practice ( e.g. , an instruction "not to abandon the prior application" and/or a reference to a "continuation-in-part CPA" and/or "CPA under 37 C.F.R. § 1.53(b)"), the request will be processed by the PTO solely as a request for a continuation CPA under 37 C.F.R. § 1.53(d) (unless it is also designated as a divisional application, in which case the request will be processed as a request for a divisional CPA under 37 C.F.R. § 1.53(d)) and the inconsistent instruction and/or reference will be ignored.

Second: The PTO will treat continuation CPAs, for examination priority purposes only, as if they were "amended" applications (as of the CPA filing date) and not as "new" applications. As "amended" applications generally have a shorter time frame for being acted on by examiners than "new" applications, this treatment (of CPAs as "amended" applications) will result in first Office actions being mailed in continuation CPAs much sooner than if they had been filed as continuations under 37 C.F.R. § 1.53(b) (or under former 37 C.F.R. §§ 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.

Third : The PTO shall offer, as a new service, the following: The PTO will acknowledge receipt of a CPA filed by facsimile transmission, if: (1) the CPA is accompanied by a "Receipt for Facsimile Transmitted CPA" (PTO/SB/29A) properly identifying the prior application; and (2) the CPA is transmitted by facsimile directly to a technology center/examining group. The PTO will stamp the "Receipt for Facsimile Transmitted CPA" with the date of receipt of the CPA and return the "Receipt for Facsimile Transmitted CPA" by mail to the mailing address indicated thereon. The CPA request form (PTO/SB/29) has been modified to include a separate "Receipt for Facsimile Transmitted CPA" (PTO/SB/29A) which must be used in order to take advantage of this new service.

Discussion : Effective December 1, 1997, the PTO adopted the CPA practice (37 C.F.R. § 1.53(d)) to provide a streamlined procedure to obtain further examination via a continuation/divisional application. See Changes to Patent Practice and Procedure ; Final Rule Notice, 62 Fed. Reg. 53131 (October 10, 1997), 1203 Off. Gaz. Pat. Office 63 (October 21, 1997), and Changes to Continued Prosecution Application Practice ; Interim Rule Notice, 63 Fed. Reg. 5732 (February 4, 1998), 1207 Off. Gaz. Pat. Office 83 (February 24, 1998).

With respect to the first subject : A CPA, by definition, is an application filed under 37 C.F.R. § 1.53(d). The filing of a CPA is, by rule, a request to expressly abandon the prior application as of the filing date of the CPA. See 37 C.F.R. § 1.53(d)(2)(v). An applicant may file a continuation or divisional application as a CPA, but a continuation-in-part may not be filed as a CPA. See 37 C.F.R. § 1.53(d)(1); see also 37 C.F.R. § 1.53(b)(2) (a continuation-in-part must be filed under this paragraph) and § 1.53(d)(5) (no amendment in a CPA may introduce new matter or matter that would have been new matter in the prior application). The PTO, however, has received a number of papers requesting a CPA, but also containing some instruction and/or reference that is inconsistent with the CPA practice. Since streamlined processing is the essence of the CPA practice, the PTO will not hold the request to be improper and deny a filing date to a CPA simply because it contains an instruction and/or reference that is inconsistent with the CPA practice. Rather, assuming that the request otherwise meets the requirements to be entitled to a filing date as a CPA ( see 37 C.F.R. § 1.53(d)(1)), the inconsistent instruction and/or reference will be ignored and the request will be processed solely as a request for a continuation (or divisional, if so indicated) CPA under 37 C.F.R. § 1.53(d).

If applicant wants the PTO to disregard a previously filed request for a CPA (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 C.F.R. § 1.53(b), the applicant must file a petition under 37 C.F.R. § 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 C.F.R. § 1.53(d)(2)(v). See Changes to Patent Practice and Procedure ; Training and Implementation Guide, Question and Answer 66 (December 1997). 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 C.F.R. § 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 C.F.R. § 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: (1) continuing the prosecution of the original application via the CPA; and (2) filing a new continuation/divisional under 37 C.F.R. § 1.53(b) claiming benefit of the CPA and its parent applications under 35 U.S.C. § 120 during the pendency of the CPA.

Any (new) specification filed with a CPA request will not be considered part of the original CPA papers, but will be treated as a submission of a substitute specification in accordance with 37 C.F.R. § 1.125. See  37 C.F.R. § 1.53(d)(5). Thus, applicant will have to comply with the requirements of 37 C.F.R. § 1.125(b) before the substitute specification will be entered into the CPA. See Changes to Patent Practice and Procedure ; Training and Implementation Guide, Question and Answer 61. Since 37 C.F.R. § 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. See Final Rule Notice, 62 Fed. Reg. at 53141, 1203 Off. Gaz. Pat. Office at 71. Further, any claim(s) which relies upon such new matter for support will be rejected under 35 U.S.C. § 112, first paragraph. 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 C.F.R. § 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 C.F.R. § 1.182 requesting that the substitute specification or preliminary amendment be removed from the CPA application file.

With respect to the second subject : The PTO has received several comments from practitioners who have been surprised at receiving a first Office action (in a CPA application) fairly quickly after filing a request for the CPA. The CPA procedure permits the PTO to perform all pre-examination processing of a CPA in a technology center/examining group to which the prior application is assigned, which reduces the time it takes to provide a first Office action in a CPA. See Final Rule Notice, 62 Fed. Reg. at 53145, 1203 Off. Gaz. Pat. Office at 74 (response to comment 29). In addition, the PTO has decided to treat all continuation CPAs, for examination priority purposes only, as though they are amended applications (as of the filing date of the CPA) which generally results in examiners acting on the CPAs fairly quickly, as amended applications will ordinarily be acted on by examiners within one or two months of docketing of the applications to the examiners. As a result, continuation CPAs would be acted on by an examiner much sooner than if they were treated, for examination priority purposes, as new applications. See Final Rule Notice, 62 Fed. Reg. at 53144, 1203 Off. Gaz. Pat. Office at 74 (comment 27). Therefore, applicants are strongly encouraged to file any preliminary amendment in a CPA at the time the CPA is filed, especially where the preliminary amendment is a resubmission of an amendment filed after final rejection which was denied entry via an advisory action in the prior application. While the PTO consistently encourages applicants to file a complete application in condition for examination, applicants should note that the PTO will not examine a CPA, or any new application, until the appropriate filing fee (37 C.F.R. § 1.16) has been submitted. Applicants should also note, however, that deposit account charge authorizations carry-over to a CPA from the prior application. See Changes to Patent Practice and Procedure ; Training and Implementation Guide, Question and Answer 39. Thus, an authorization in the prior application to charge all fees, fees under 37 C.F.R. § 1.16, or filing fees to a deposit account in the prior application will be treated as payment of the basic filing fee (and result in a charge to the deposit account) in a CPA of the prior application.

With respect to the third subject : While 37 C.F.R. § 1.6(f) provides a remedy (if the appropriate records are maintained) in the event that a CPA transmitted to the PTO by facsimile is lost, the PTO has received several comments from practitioners indicating that they do not file CPAs by facsimile transmission due to the lack of a prompt acknowledgment of receipt of the CPA by the PTO. To address this concern, the PTO has decided that it will acknowledge receipt of requests for CPAs transmitted to the PTO by facsimile, if: (1) the CPA is accompanied by a "Receipt for Facsimile Transmitted CPA" (PTO/SB/29A) properly identifying the prior application; and (2) the CPA is transmitted by facsimile directly to a technology center/examining group.

The PTO has modified its CPA request form (PTO/SB/29) to include a separate "Receipt for Facsimile Transmitted CPA" (PTO/SB/29A). A CPA request form (PTO/SB/29) including a "Receipt for Facsimile Transmitted CPA" (PTO/SB/29A) is appended to this notice for illustrative purposes. Applicants are not required to use the PTO created "Receipt for Facsimile Transmitted CPA" (PTO/SB/29A), or the PTO created CPA request form (PTO/SB/29), when filing a CPA. The PTO, however, will acknowledge receipt of a facsimile transmitted CPA as set out in this notice only if the CPA is accompanied by a copy of the PTO created "Receipt for Facsimile Transmitted CPA" (PTO/SB/29A) completed by the applicant, and will not acknowledge non-PTO versions of a "Receipt for Facsimile Transmitted CPA."

A request for a CPA transmitted to the PTO by facsimile should be transmitted directly to the technology center/examining group to which the prior application is assigned. See Changes to Patent Practice and Procedure ; Training and Implementation Guide, Question and Answer 44. In order to encourage applicants to transmit CPA requests directly to the technology centers/examining groups, the PTO will only acknowledge receipt of a CPA request filed by facsimile transmission where the CPA request is transmitted directly to a technology center/examining group.

All PTO forms, including the CPA request form (PTO/SB/29) and "Receipt for Facsimile Transmitted CPA" (PTO/SB/29A), are available on the PTO Home Page, either individually or in a single zip-compressed file from the PTO ftp server at ftp://ftp.uspto.gov/pub/forms/. Individual forms for patent and trademark submissions can also be requested from 800-PTO-9199 (incorrectly printed in the OG as 800-PTO-8199) or 703-308-HELP. A specimen book of Patent Forms can be purchased for $25 from the Office of Electronic Information Products, telephone number 703-306-2600.

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 PTO will: (1) separate the "Receipt for Facsimile Transmitted CPA" from the CPA request papers; (2) date-stamp the "Receipt for Facsimile Transmitted CPA"; (3) 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 (4) 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 PTO. As the PTO 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 PTO. 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 PTO.

Finally, 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 PTO does not plan on retaining a copy of such receipts in the file of the application.

Inquiries regarding this matter should be directed to Fred A. Silverberg or John F. Gonzales, Senior Legal Advisors, at (703) 305-9285.

Stephen G. Kunin
Deputy Assistant Commissioner for
Patent Policy and Projects

United States Patent and Trademark Office
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Last Modified: 7/4/2009 2:55:48 PM