Patent terminology can be daunting at times, making it quite unapproachable for a novice inventor to understand what is really going on and what options are available in terms of filing a patent application. Take for example the various types of national patent applications that one can file. A national patent application means a U.S. application for patent that was either filed in the Patent Office under 35 U.S.C. 111 (i.e., directly with the USPTO as a domestic U.S. patent application), or which entered the national stage from an international patent application after compliance with 35 U.S.C. 371 (i.e., initially filed as an international application invoking the benefits of the Patent Cooperation Treaty).
Let’s hold off discussing international patent applications for now and instead focus on national patent applications filed under § 111, which is what most independent inventors and small business would file in the U.S. If you are interested in information on international patent applications please see PCT Basics: Understanding the International Filing Process and PCT Basics: Obtaining Patent Rights Around the World.
Domestically filed U.S. patent applications filed under 35 U.S.C. 111(a) include original non-provisional utility patent applications, plant patent applications, design patent applications, divisional applications, continuation applications, continuation-in-part applications, reissue applications, and design patent continued prosecution applications (CPAs). Provisional patent applications are filed under 35 U.S.C. 111(b), and hence a different type of patent application altogether.
A non-provisional patent application means a U.S. national application for patent filed in the Office under 35 U.S.C. 111(a), or which entered the national stage from an international application after compliance with 35 U.S.C. 371. That sentence should sound familiar. Look to the first paragraph, third sentence. This time I added “non-provisional” and 111(a). Said another way, all of the applications that you can file under 111(a) are considered non-provisional patent applications. They are called non-provisional to distinguish them from a provisional patent application. That means when you file a design patent application you are technically filing a non-provisional design patent application. You don’t often hear it called that because there is no such thing as a provisional design patent application.
So what is the point? A non-provisional patent application is a domestic U.S. patent application that has the possibility to mature into an issued U.S. patent if after examination the patent examiner is satisfied that the patentability requirements have been met. So you can get a plant patent, a design patent or a utility patent. Obviously, plant patents come from plant patent applications and design patents come from either design patent applications or design patent continued prosecution applications. Utility patents, however, can come from a non-provisional utility patent application, a divisional application, continuation, continuation-in-part and/or a reissue application.
Last week I spent time discussing the non-provisional utility patent application, so I won’t rehash that here. But let’s focus on the other utility patents and discuss the various types of patent applications that can result in a utility patent.
A divisional application or “divisional” is a later filed patent application for an independent or distinct invention, which has been carved out of a pending patent application and which further discloses and claims only subject matter disclosed in that earlier patent application, which we call a parent application. A divisional application is filed as a result of a restriction requirement made by the examiner, who has indicated that the pending patent application in question has more than one invention present.
There is nothing wrong with filing a patent application that has more than a single invention, but before a patent examiner will examine any patent application it must have only one invention claimed. Thus, if the patent examiner believes there is more than one independent or distinct invention he/she will require you to elect which invention you wish to proceed with. You do not lose the other independent or distinct inventions, but you can’t have them in the same patent. In this case you file a divisional application to proceed to continue with those independent or distinct inventions that you want to patent.
A continuation is a subsequent application for the same invention claimed in a prior non-provisional application and filed before the original prior application becomes abandoned or patented. The applicant in the continuation application must include at least one inventor named in the prior non-provisional application. The disclosure presented in the continuation must be the same as that of the original application. In other words, the continuation should not include anything, which would constitute new matter if inserted in the original application.
At any time before the patenting or abandonment of or termination of proceedings on his or her earlier non-provisional application, an applicant may have recourse to filing a continuation in order to introduce into the application a new set of claims and to establish a right to further examination by the examiner. In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior non-provisional application is a design application.
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A continuation-in-part application is a patent application filed during the lifetime of an earlier non-provisional application, repeating some substantial portion or all of the earlier non-provisional application and adding matter not disclosed in the said earlier non-provisional application.
This is the application you use when you want to add new material to your previously filed disclosure. The previous sentence may seem confusing because there is an absolute prohibition against adding “new matter.” The prohibition against adding new matter relates to the situation where someone tries to sneak new matter into a previously filed patent application. You can always add new material and information at the time of filing. So when you file a continuation-in-part patent application you are going to get a new filing priority date with respect to the new material. The material that is the same as the previously filed patent application will enjoy the previous filing date as its priority date provided the continuation-in-part was filed prior to the earlier patent application becoming abandoned or patented.
The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections that may be outstanding in the co-pending non-provisional application or applications upon which the continuation-in-part application relies for priority benefit.
A reissue application is an application for a patent to take the place of an unexpired patent that is defective for one reason or another. Whenever any patent is deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the patentee can surrender the patent and seek a reissue patent that is not defective. Upon filing a reissue patent application the patent examiner will again examine the patent application.
No new matter shall be introduced into the application for reissue, which is another way to say that the reissue patent must be limited to cover the invention disclosed in the original patent. The reissue patent does not get a new patent term, but instead will survive for the unexpired part of the term of the original patent.
One key limitation on reissue patents relates to broadening reissues. No reissued patent can be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent. A narrowing reissue (i.e., one that narrows the claims) can be obtained at any time during the pendency of the patent. With respect to defining what is considered broadening, if any aspect of even a single claim is broadened then the reissue will be considered to be a broadening reissue that must be filed within two years of the original patent being granted.