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201.06(b) Former 37 CFR 1.62 File Wrapper Continuing Procedure - 200 Types, Cross-Noting, and Status of Application


201.06(b) Former 37 CFR 1.62 File Wrapper Continuing Procedure [R-1]

[Note: 37 CFR 1.62 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A continuation or divisional application filed under former 37 CFR 1.62 on or after December 1, 1997, will be treated as an application filed under 37 CFR 1.53(d) unless the application is a utility or plant application filed on or *>after< May 29, 2000, in which case it will be treated as a request for continued examination (RCE) under 37 CFR 1.11, see MPEP 706.07(h), paragraph IV. If the application filed on or after December 1, 1997, under former 37 CFR 1.62 is a continuation-in-part (CIP) application, the application will be treated as an improper application. In which case, the applicant will be notified and given an opportunity to file a petition under 37 CFR 1.53(e) to have the application converted to an application filed under 37 CFR 1.53(b).

A petition under 37 CFR 1.53(e) to accept and treat an improper application filed under former 37 CFR 1.62 as a proper application filed under 37 CFR 1.53(b) must include: (1) the $130.00 petition fee; (2) a true copy of the complete nonprovisional application, as filed, designated as the prior nonprovisional application in the application papers filed under former 37 CFR 1.62; (3) any amendments entered in the prior nonprovisional application; (4) any amendments submitted but not entered in the prior nonprovisional application and directed to be entered in the application papers filed under former 37 CFR 1.62; and (5) an executed oath or declaration under 37 CFR 1.63, if one has not already been submitted with the application papers filed under former 37 CFR 1.62.

All continuation, divisional and CIP applications filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62. Thus, the following discussion of former 37 CFR 1.62 practice is being retained in the MPEP and all references to the rules in this section are directed to the rules that were in effect prior to December 1, 1997.]

37 CFR 1.62 File wrapper continuing procedure

(a) A continuation, continuation-in-part, or divisional application, which uses the specification, drawings and oath or declaration from a prior nonprovisional application which is complete as defined by § 1.51(a)(1), and which is to be abandoned, may be filed under this section before the payment of the issue fee, abandonment of, or termination of proceedings on the prior application, or after payment of the issue fee if a petition under § 1.313(b)(5) is granted in the prior application. The filing date of an application filed under this section is the date on which a request is filed for an application under this section including identification of the application number and the names of the inventors named in the prior complete application. If the continuation, continuation-in-part, or divisional application is filed by less than all the inventors named in the prior application a statement must accompany the application when filed requesting deletion of the names of the person or persons who are not inventors of the invention being claimed in the continuation, continuation-in-part, or divisional application.

(b) The filing fee for a continuation, continuation-in-part, or divisional application under this section is based on the number of claims remaining in the application after entry of any preliminary amendment and entry of any amendments under § 1.116 unentered in the prior application which applicant has requested to be entered in the continuing application.

(c) In the case of a continuation-in-part application which adds and claims additional disclosure by amendment, an oath or declaration as required by § 1.63 must also be filed. In those situations where a new oath or declaration is required due to additional subject matter being claimed, additional inventors may be named in the continuing application. In a continuation or divisional application which discloses and claims only subject matter disclosed in a prior application, no additional oath or declaration is required and the application must name as inventors the same or less than all the inventors named in the prior application.

(d) If an application which has been accorded a filing date pursuant to paragraph (a) of this section does not include the appropriate basic filing fee pursuant to paragraph (b) of this section, or an oath or declaration by the applicant in the case of a continuation-in-part application pursuant to paragraph (c) of this section, applicant will be so notified and given a period of time within which to file the fee, oath, or declaration and to pay the surcharge as set forth in § 1.16(e) in order to prevent abandonment of the application. The notification pursuant to this paragraph may be made simultaneously with any notification of a defect pursuant to paragraph (a) of this section.

(e) An application filed under this section will utilize the file wrapper and contents of the prior application to constitute the new continuation, continuation-in-part, or divisional application but will be assigned a new application number. Changes to the prior application must be made in the form of an amendment to the prior application as it exists at the time of filing the application under this section. No copy of the prior application or new specification is required. The filing of such a copy or specification will be considered improper, and a filing date as of the date of deposit of the request for an application under this section will not be granted to the application unless a petition with the fee set forth in § 1.17(i) is filed with instructions to cancel the copy or specification.

(f) The filing of an application under this section will be construed to include a waiver of confidence by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to access to, or information concerning either the prior application or any continuing application filed under the provisions of this section may be given similar access to, or similar information concerning, the other application(s) in the file wrapper.

(g) The filing of a request for a continuing application under this section will be considered to be a request to expressly abandon the prior application as of the filing date granted the continuing application.

(h) The applicant is urged to furnish the following information relating to the prior and continuing applications to the best of his or her ability:

(1) Title as originally filed and as last amended;

(2) Name of applicant as originally filed and as last amended;

(3) Current correspondence address of applicant;

(4) Identification of prior foreign application and any priority claim under 35 U.S.C. 119.

(5) The title of the invention and names of the applicants to be named in the continuing application.

(i) Envelopes containing only application papers and fees for filing under this section should be marked "Box FWC".

(j) If any application filed under this section is found to be improper, the applicant will be notified and given a time period within which to correct the filing error in order to obtain a filing date as of the date the filing error is corrected provided the correction is made before the payment of the issue fee, abandonment of, or termination of proceedings on the prior application. If the filing error is not corrected within the time period set, the application will be returned or otherwise disposed of; the fee, if submitted, will be refunded less the handling fee set forth in § 1.21(n).


An applicant may file a continuation or division of a pending patent application by simply filing a request therefor under 37 CFR 1.62 identifying the Application Number. (series code and serial number) of the prior complete nonprovisional application and paying the necessary application filing fee. The filing of a copy of the prior nonprovisional application (required under 37 CFR 1.60) is unnecessary and improper under the procedure set forth in 37 CFR 1.62. To file a continuation-in-part application, an amendment (not a new specification) adding the additional subject matter and an oath or declaration relating thereto are also required.

A request for an FWC application under 37 CFR 1.62 may be signed by a registered practitioner acting in a representative capacity under 37 CFR 1.34(a). However, correspondence concerning the continuing application will be sent by the Office to the correspondence address as it appears on the prior nonprovisional application until a new power of attorney, or change of correspondence address signed by an attorney or agent of record in the prior application, is filed in the FWC.

The "file wrapper continuing" (FWC) procedure is set forth in 37 CFR 1.62. Under this simplified procedure, any continuing application such as a continuation, continuation-in-part, or divisional application may be filed. The papers in the copending prior nonprovisional application, which application will become automatically expressly abandoned will be used and any changes thereto desired when filing the FWC application must be made by amendment. Under the FWC procedure, a new application number is assigned and the specification, drawings, and other papers in the parent application file wrapper are used as the papers in the continuing application. Changes in inventorship may be made. The "file wrapper continuing" (FWC) procedure is available for utility, design, plant, and reissue applications to file continuing applications of the same type (utility, design, plant, reissue) as the parent application. An application which claims the benefits of a provisional application may not be filed under the provisions of 37 CFR 1.62. Use of the FWC procedure will automatically result in express abandonment of the prior nonprovisional application as of the filing date accorded the continuation, continuation-in-part, or divisional application.

The FWC procedure can be used for any continuation, continuation-in-part, or divisional application provided the applicant wishes the copending prior nonprovisional application to become abandoned. If a continuation or divisional application is desired without abandonment of the parent application, the procedure under 37 CFR 1.60 should be used. Applicant also has the option of filing new application papers with a reexecuted oath or declaration under 37 CFR 1.53(b)(1).

Under 37 CFR 1.62, the specification, claims, and drawings, and any amendments in the prior nonprovisional application are used in the continuation, continuation-in-part, or divisional application. A new filing fee is required in accordance with 35 U.S.C. 41 and 37 CFR 1.16. The only other statutory requirement under 35 U.S.C. 111(a) is a signed oath or declaration. Since a continuation or divisional application cannot contain new matter, the oath or declaration filed in the prior nonprovisional application would supply all the information required under the statute and rules to have a complete application and to obtain a filing date. Accordingly, the previously filed oath or declaration will be considered to be the oath or declaration of the 37 CFR 1.62 continuation or division. However, if a continuation-in-part application is being filed, or a correction of inventorship is being made, then a new oath or declaration must be signed and filed by the applicant.

The original disclosure of an application filed under 37 CFR 1.62 will be the original parent application, amendments entered in the parent application, and amendments filed on the filing date and referred to in the oath or declaration by the inventor(s). However, the filing fee will be based on the claims in the 37 CFR 1.62 application after entry of any unentered amendments under 37 CFR 1.116 in the prior application whose entry has been requested by the applicant and any preliminary amendment which may accompany the FWC request and filing fee. The Certificate of Mailing Procedure under 37 CFR 1.8 does not apply to filing a request for a "File Wrapper Continuing" application since the filing of such a request is considered to be a filing of national application papers for the purpose of obtaining an application filing date ( 37 CFR 1.8(a)(i)).

The applicant may file a signed FWC request and the regular filing fee under 37 CFR 1.16 and other necessary papers with the Patent and Trademark Office, either by mail addressed to "Box FWC" or in person with the Customer Service Center. An individual check or deposit account authorization should accompany each FWC application, since combined checks delay processing.

The Mail Center sorts out all "Box FWC" envelopes upon receipt and delivers them to a reader for prompt special handling. The reader applies the "Mail Room" date stamp and marks the categories of the fees. The papers for each FWC application are assigned a regular national application number and placed in a "Jumbo" size file wrapper. The Special Handling Branch reviews the FWC request for accuracy and completeness and assigns the filing date if everything appears to be in order. There is no need for any processing of the FWC application by the Initial Patent Examination Division of the Office of Initial Patent Examination (OIPE) since there are no papers to be examined and the FWC application is routed to the group assigned the prior nonprovisional application. When the FWC application file wrapper is received in the examining group, the parent application is promptly obtained and processed by a technical support staff member.

All of the correspondence from the Office in a FWC application refers to the FWC application number and filing date and is processed in the same manner as any other continuation, continuation-in-part or divisional application. The first action final rejection procedures set forth in MPEP § 706.07(b) apply to FWC applications filed under 37 CFR 1.62. The PALM system can supply information to authorized persons as to the location of the parent application file wrapper and ties the parent application number to the FWC application number.

The provisions of 37 CFR 1.62 provide that if any application in the file wrapper is available to the public that all applications in the file wrapper will be available to the public.

Paragraph (a) of 37 CFR 1.62 sets forth the minimum requirements for obtaining a filing date. Paragraphs (b) and (c) of 37 CFR 1.62 set forth the filing fee and oath or declaration requirements. Paragraph 1.62(d) relates to later filing of the filing fee or oath or declaration as provided for in 35 U.S.C. 111(a).

EXTENSIONS OF TIME

If an extension of time is necessary to establish continuity between the prior application and the FWC application, the petition for extension of time must be filed as a separate paper directed to the prior nonprovisional application. A general authorization to charge fees to a deposit account filed in the FWC application will not be construed as a petition for extension of time in the prior application. See In re Kokaji, 2 USPQ2d 1309 (Comm'r Pat. 1987). Any petition for extension of time directed to the prior application must be accompanied by its own certificate of mailing under 37 CFR 1.8 (if mailed by first class mail (including "Priority Mail" and "Express Mail"); see  MPEP § 512) or should have the "Express Mail" mailing label number in accordance with 37 CFR 1.10 (if mailed by "Express Mail"; see MPEP § 513), if the benefits of those rules are desired. For the purposes of 37 CFR 1.8(a)(1)(i)(A), first class mail is interpreted as including "Express Mail" and "Priority Mail" deposited with the USPS.

CERTIFIED COPY

A certified copy of a continuation-in-part application filed under 37 CFR 1.62 will be prepared by the Cer­tification Branch upon request. The certified copy will consist of a copy of the prior complete application as filed, all amendments entered in the prior application as of the FWC filing date, any amendment filed with the request for a continuation-in-part application under 37 CFR 1.62, any unentered amendment under 37 CFR 1.116 in the prior application whose entry was requested by the applicant in the FWC application, and the oath or declaration under 37 CFR 1.63 filed to complete the FWC application.

SMALL ENTITY STATUS

If small entity status was established in the parent application of an application filed under 37 CFR 1.62, and such status is desired and proper in a 37 CFR 1.62 application, it is not necessary that a new statement under 37 CFR 1.27 be filed but rather reference may be made to the statement filed in the parent application.

PRIORITY CLAIM

Claims under 35 U.S.C. 119(a)-(d) and 120 for the benefit of the filing dates of earlier applications in a parent application will automatically carry over to an application filed under 37 CFR 1.62. Applicants are encouraged to repeat and update such claims at the time of filing a 37 CFR 1.62 application so that such claims will not be overlooked. A member of the technical support staff should check if priority data has been entered on the file wrapper.

Form paragraph 2.28 may be used to remind applicant to insert parent application data.

¶ 2.28 Reference in Former 37 CFR 1.62 Continuing Applications

This application filed under former 37 CFR 1.62 lacks the necessary reference to the prior application. A statement reading "This is a [1] of Application No. [2], filed [3]." should be entered following the title of the invention or as the first sentence of the specification. Also, the current status of the nonprovisional parent application(s) should be included.

Examiner Note

1. In bracket 1, insert --division--, --continuation--, or --continuation-in-part--.

2. Use only in "file wrapper continuing" applications under former 37 CFR 1.62.


Form PTO/SB/14 is designed as an aid for use by applicant for filing an application under 37 CFR 1.62.

Form PTO/SB/14. Request Form for Filing a Patent Application under 37 CFR 1.62.image

Form PTO/SB/14. Request Form for Filing a Patent Application Under 37 CFR 1.62image

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