US patenting proceduresMassimo Barbieri

E-mail: massimo.barbieri@polimi.it

M. Barbieri © 2013

• grace period

• first to invent system: the inventor who can prove to have conceived of the idea first gets the patent

• Provisional application: is a preliminary application that provides an early priority date without counting against the twenty-year life of the patentRequirements for filing a provisional are:• specifications, drawings if necessary, filing fee, and Assignee;• No claims are submitted with the provisional.The provisional application is abandoned 12 months after the filing dateof such application, and cannot be revived thereafter.The provisional application may not claim priority from any other patentapplication.

M. Barbieri © 2013

• Continuation application

- an application filed after the final office action on an earlier filedapplication that consists of the same disclosure;- continuation applications MUST BE filed while the earlier application is

still pending and not issued by the PTO;- no additional disclosure information is allowed to be inserted;- A remarkable difference between the continuation application and theearlier-filed application is that: the claim coverage defining the scope ofprotection (the claims may be the same or there may be a new set ofclaims directed to the same invention claimed in the earlier application);- a continuation application has the same filing date as the earlier filed

application;- there is no limit to the number of continuation applications filed.

M. Barbieri © 2013

• Continuation-in-part (CIP) application

- a CIP application that includes additional subject matter not contained inthe earlier-filed application;

- used to obtain patent protection for improvements on earlier-development inventions;

- some subject matter is different from the original subject matter;

- material in common with the earlier application has the originalapplication’s filing date, new material has the filing date of the CIP;

- CIP applications MUST BE filed while the earlier application is stillpending and not issued by the PTO.

M. Barbieri © 2013

• Request for continued examination (RCE)

“Request for continued examination” (RCE) is just what it sounds like - a request to continue examination of an application (with a fee), which is filed after a final rejection to continue the prosecution of an application by filing amendments or making arguments against the final rejection.

An RCE and a continuation are more or less the same, except that a continuation is a "new" application, with a new serial number, and an RCE just continues on with the same application.

This procedure is not available for:• an application for a design patent;• a patent under reexamination

An RCE COULD NOT BE filed after a reply to a non-final Office Action