What is the earliest effective filing date of a divisional application? (102 date)
ANSWER
Earliest effective filing date for determining prior art (102) of a divisional (or any continua-
tion) is the earliest filed priority application (i.e. provisional, foreign app, or US nonprov par-
ent)
What date is used to determine patent term?
ANSWER
The earliest filed US nonprov app or PCT date for national phase applications; provisionals
and foreign priority dates do not affect patent term
When is a translation of a priority application required?
ANSWER
To overcome a prior art rejection by perfecting priority claim; A translation is required to
prove to the Examiner that a foreign app in a language other than English actually supports
the priority that it's being purported to provide
What is the main difference between a continuation app and a continuation-in-part?
ANSWER
CIPs must contain new matter; continuations must have an identical disclosure to the parent
application
What is the earliest effective filing date in a CIP?
ANSWER
1
,Depends on when the matter was introduced; matter introduced in parent app has effective
filing date of parent, and new matter has effective date of CIP filing date
When is a substitute app filed?
ANSWER
When the copendency period of the parent app has been allowed to expire, either acci-
dentally or intentionally; chain of priority is broken when a substitute app is filed instead of a
continuation
37 CFR 1.53(d)
ANSWER
rule for filing design applications and CPAs of designs; CPAs result in the death of the parent
(can't be copending like utility app continuations)
Power to Inspect
ANSWER
allows patent practitioner to view the whole file history of an app; not the same as POA
suspending prosecution
ANSWER
can only be done when it is the Examiner's turn for action; must be done via a Petition to
Suspend, not a letter to the USPTO
When is filing a substitute app preferable?
ANSWER
Never; means you've messed up and missed the period of copendency and broken the chain
of priority, which is never good
PASSING TIP: fee vs no fee
2
, ANSWER
If you see two answers that look correct and one involves paying a fee, the one with the fee
will likely be the more correct answer
How do you retain foreign priority in a continuation?
ANSWER
Must claim the benefit of foreign priority and must identify the app containing the certified
copy of the foreign app; do not need to keep re-filing the certified copy
37 CFR 1.48(a)
ANSWER
rule that inventorship is corrected under
If the contribution of an inventor is no longer being claimed, how is inventorship affected?
ANSWER
Claimed subject matter determines inventorship, so if someone's contribution is no longer
being claimed, person must be removed as an inventor under 1.48(a), even if their contribu-
tion is still in the disclosure
Can provisional apps claim priority to an earlier filing?
ANSWER
No
PASSING TIP: rule 48 vs rule 76
ANSWER
Sometimes correcting inventorship will be talked about under rule 48 and sometimes under
rule 76, depending on what is being asked. Rule 48 is the rule that talks about the ability and
responsibility to change inventorship; rule 76 is the mechanical rule about how you actually
go about getting the inventorship changed
3
ANSWER
Earliest effective filing date for determining prior art (102) of a divisional (or any continua-
tion) is the earliest filed priority application (i.e. provisional, foreign app, or US nonprov par-
ent)
What date is used to determine patent term?
ANSWER
The earliest filed US nonprov app or PCT date for national phase applications; provisionals
and foreign priority dates do not affect patent term
When is a translation of a priority application required?
ANSWER
To overcome a prior art rejection by perfecting priority claim; A translation is required to
prove to the Examiner that a foreign app in a language other than English actually supports
the priority that it's being purported to provide
What is the main difference between a continuation app and a continuation-in-part?
ANSWER
CIPs must contain new matter; continuations must have an identical disclosure to the parent
application
What is the earliest effective filing date in a CIP?
ANSWER
1
,Depends on when the matter was introduced; matter introduced in parent app has effective
filing date of parent, and new matter has effective date of CIP filing date
When is a substitute app filed?
ANSWER
When the copendency period of the parent app has been allowed to expire, either acci-
dentally or intentionally; chain of priority is broken when a substitute app is filed instead of a
continuation
37 CFR 1.53(d)
ANSWER
rule for filing design applications and CPAs of designs; CPAs result in the death of the parent
(can't be copending like utility app continuations)
Power to Inspect
ANSWER
allows patent practitioner to view the whole file history of an app; not the same as POA
suspending prosecution
ANSWER
can only be done when it is the Examiner's turn for action; must be done via a Petition to
Suspend, not a letter to the USPTO
When is filing a substitute app preferable?
ANSWER
Never; means you've messed up and missed the period of copendency and broken the chain
of priority, which is never good
PASSING TIP: fee vs no fee
2
, ANSWER
If you see two answers that look correct and one involves paying a fee, the one with the fee
will likely be the more correct answer
How do you retain foreign priority in a continuation?
ANSWER
Must claim the benefit of foreign priority and must identify the app containing the certified
copy of the foreign app; do not need to keep re-filing the certified copy
37 CFR 1.48(a)
ANSWER
rule that inventorship is corrected under
If the contribution of an inventor is no longer being claimed, how is inventorship affected?
ANSWER
Claimed subject matter determines inventorship, so if someone's contribution is no longer
being claimed, person must be removed as an inventor under 1.48(a), even if their contribu-
tion is still in the disclosure
Can provisional apps claim priority to an earlier filing?
ANSWER
No
PASSING TIP: rule 48 vs rule 76
ANSWER
Sometimes correcting inventorship will be talked about under rule 48 and sometimes under
rule 76, depending on what is being asked. Rule 48 is the rule that talks about the ability and
responsibility to change inventorship; rule 76 is the mechanical rule about how you actually
go about getting the inventorship changed
3
