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|Top of Notices (385) December 27, 2016||US PATENT AND TRADEMARK OFFICE||Print This Notice 1433 CNOG 2820|
|Helpful Hints, Notices||Referenced Items (385, 386, 387, 388, 389, 390, 391)|
(385) Pre-Grant Publication Helpful Hint: File Continuation or Divisional Application with a New Specification and Copy of Oath or Declaration from Prior Application If a continuing application is being filed that has any differences in the specification (including claims) relative to the prior application, the guidelines in this notice should be followed to ensure that the desired information gets published. 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 (including the claims), and drawings, that applicant would like to have published. This is important because the Office will generally publish the specification (including the claims) and drawings as filed and, 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 application publication. 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 because the changes made by the preliminary amendment will generally not be reflected in the patent application publication even if the preliminary amendment is referred to in an oath or declaration. 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, so long as no matter is included in the new specification and corrected drawings 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. See Changes to Patent Practice and Procedure, Final Rule, 62 Fed. Reg. 53132, 53148 (October 10, 1997); 1203 Off. Gaz. Pat. Office 63, 77 (October 21, 1997), and 37 CFR 1.63(d)(1). 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. If the continuation or divisional application is filed with a copy of the specification from the prior application along with a preliminary amendment which cancels, amends and/or adds new claims, publication of the application, as amended, would only occur if a copy of the specification (with the amended set of claims) was also submitted through the Office's Electronic Filing System (EFS). See 37 CFR 1.215(a) and (c), and Assignment of Confirmation Number and Time Period for Filing a Copy of an Application by EFS for Eighteen-Month Publication Purposes, 1241 Off. Gaz. Pat. Office 97 (December 26, 2000). General questions regarding publication of patent applications should be directed to the Customer Service Center, Office of Patent Publication, by telephone at (703) 305-8283. Questions regarding EFS should be directed to the Electronic Business Center Help desk at (703) 305-3028. Questions regarding filing applications under 37 CFR 1.53(b) should be directed to Eugenia Jones or Fred Silverberg, Senior Legal Advisors in the Office of Patent Legal Administration. Ms. Jones can be reached by telephone at (703)306-5586 and by e-mail at Eugenia.Jones@uspto.gov. Mr. Silverberg can be reached by telephone at (703)305-8986 and by e-mail at Fred.Silverberg@uspto.gov. September 12, 2001 STEPHEN G. KUNIN Deputy Commissioner for Patent Examination Policy [1251 OG 54]