| |
Continued prosecution application (CPA) under 37 CFR 1.53(d) |
URAA transitional practice under 37 CFR 1.129(a) |
Request for continued examination (RCE) under 37 CFR 1.114 |
| 1 |
CPA practice is not applicable to provisional applications or during
reexamination Note: CPA practice has been made inapplicable to any utility
or original plant applications filed on or after May 29, 2000 (including
reissue) |
37 CFR 1.129(a) practice is applicable only to original utility
or original plant applications filed before or on June 8, 1995, and
which have been pending for at least two years as of June 8, 1995
(date-wise virtual mutual exclusivity with RCE practice) |
RCE practice is not applicable to provisional applications, design
applications, applications filed before June 8, 1995, or during reexamination |
| 2 |
A CPA may be filed before the prosecution in an application is closed |
A submission under 37 CFR 1.129(a) must be filed after final rejection
and before an appeal brief is filed |
After August 16, 2000, a RCE must be filed after the prosecution in
an application is closed |
| 3 |
Statutory authority: 35 U.S.C. §§ 111(a), 120, and 121 |
Statutory authority: Section 532(a)(2)(A) of Pub. L. 103-465 (uncodified) |
Statutory authority: 35 U.S.C. § 132(b) |
| 4 |
The Office treats a CPA as continued examination of the same application,
but it is technically/legally a new application |
Further examination under 37 CFR 1.129(a) is in fact continued
examination of the same application |
A RCE is in fact continued examination of the same application |
| 5 |
The applicant may defer paying the filing fee for a CPA under 37 CFR 1.53(g) |
The applicant may not defer paying the fee for a submission under 37 CFR 1.129(a) |
The applicant may not defer paying the fee for a RCE |
| 6 |
The fee for a CPA must be the statutory filing fee: basic filing fee
plus any applicable excess claims fees (even if previously paid in the prior application) |
The Office sets the fee (fee need not include excess claims fee for
claims previously paid for): the fee is set at an amount equal to the
basic filing fee of a utility application (small entity reduction is available) |
The Office sets the fee for a RCE (RCE fee need not include excess
claims fee for claims previously paid for): the RCE fee is set at an amount
equal to the basic filing fee of a utility application (small entity reduction
is available) |
|
|
Continued prosecution application (CPA) under 37 CFR 1.53(d) |
URAA transitional practice under 37 CFR 1.129(a) |
Request for continued examination (RCE) under 37 CFR 1.114
|
| 7 |
A patent issuing on a CPA filed on or after May 29, 2000, is entitled
to the patent term adjustment provisions of the AIPA, regardless of the
filing date of any prior application of the CPA A patent issuing on a
CPA is not entitled to any patent term adjustment accumulated during
prosecution of any prior application of the CPA |
An application that is eligible for the transitional practice of 37 CFR
1.129(a) is not entitled to the patent term adjustment provisions
of the AIPA |
Filing a RCE on or after May 29, 2000, will not cause an
application to be entitled to the patent term adjustment provisions of
the AIPA If an application is entitled to the patent term adjustment provisions
of the AIPA (i.e., was itself filed on or after May 29, 2000),
filing a RCE cuts-off the applicant’s ability to accumulate any additional
patent term adjustment against the three-year pendency provision, but
does not otherwise affect patent term adjustment |
| 8 |
No limit on the number of times an applicant may file a CPA to obtain
continued examination |
An applicant may have only two (2) submissions entered as a matter
of right under 37 CFR 1.129(a) |
No limit on the number of times an applicant may file a RCE to obtain
continued examination |
| 9 |
A CPA is not entitled to the benefit of a Certificate of Mailing under
37 CFR 1.8 |
A submission under 37 CFR 1.129(a) is entitled to the benefit
of a Certificate of Mailing under 37 CFR 1.8 |
A RCE is entitled to the benefit of a Certificate of Mailing under
37 CFR 1.8 |
| 10 |
Applicants may file a continuation or divisional CPA, but not a CIP CPA |
Applicants may not switch inventions (divisional equivalent) as a matter
of right or add new matter (CIP equivalent) |
Applicants may not switch inventions (divisional equivalent) as a matter
of right or add new matter (CIP equivalent) |
| 11 |
A CPA abandons the (previously) pending application: appeals to the
BPAI or courts in the prior application become moot automatically |
A submission under 37 CFR 1.129(a) does not abandon the (previously
and currently) pending application: no appeal issues because Office requires
such submission to be filed before an appeal (to BPAI) brief is filed |
A RCE does not abandon the (previously and currently) pending application:
appeals to the BPAI are dismissed by operation of 37 CFR 1.114 but
any pending court action must be dismissed to restore jurisdiction over
the application to the Office |
| |
Continued prosecution application (CPA) under 37 CFR
1.53(d) |
URAA transitional practice under 37 CFR 1.129(a) |
Request for continued examination (RCE) under 37 CFR 1.114 |
| 12 |
Inventorship carries over unless the applicant provides a statement
deleting inventors |
Inventorship carries/continues: any change must be via 37 CFR 1.48 |
Inventorship carries/continues: any change must be via 37 CFR 1.48 |
| 13 |
Small entity status does not carry (but can be claimed by reference
to status in prior application or payment of small entity filing fee) |
Small entity status carries/continues |
Small entity status carries/continues |
| 14 |
A CPA accompanied by an amendment (preliminary) cancelling all claims
makes the CPA improper (not entitled to a filing date) |
Submission under 37 CFR 1.129(a) accompanied by an amendment cancelling
all claims is simply a non-responsive amendment |
RCE accompanied by an amendment cancelling all claims is simply a non-responsive
amendment |
| 15 |
Submission need not include a reply that is a bona fide attempt
to advance the application |
Submission must include a reply that is a bona fide attempt to
advance the application (37 CFR 1.111) |
Submission must include a reply that is a bona fide attempt to
advance the application (37 CFR 1.111) if a reply to an Office action
is outstanding |
| 16 |
A CPA filed on or after November 29, 2000, will be subject to the
eighteen-month publication provisions of the AIPA, and the changes to
35 U.S.C. § 102(e) |
Submission on or after November 29, 2000, does not subject application
to the eighteen-month publication provisions of the AIPA or the changes
to 35 U.S.C. § 102(e); voluntary publication may be requested
|
Submission on or after November 29, 2000, does not subject application
to the eighteen-month publication provisions of the AIPA or the changes
to 35 U.S.C. § 102(e); voluntary publication may be requested |
| 17 |
A CPA based on the national stage of an international application is
an application filed under 35 U.S.C. § 111(a) and thus it is
subject to restriction practice in accordance with 37 CFR 1.141-1.146 |
If a submission is filed in a national stage application under 35 U.S.C.
§ 371, the application is still subject to unity of invention practice
in accordance with 37 CFR 1.475 and 1.499 |
If a submission is filed in a national stage application under 35 U.S.C.
§ 371, the application is still subject to unity of invention practice
in accordance with 37 CFR 1.475 and 1.499 |
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