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-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.
____________ ________________________________
Date Stephen G. Kunin
Deputy Assistant Commissioner for
Patent Policy and Projects