(376) 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]
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