PATENT APPLICATION

patent application.An inventor’s request for a patent, filed with the U.S. Patent and Trademark Office and accompanied by a specification (ending with at least one claim), drawings, the filing fee, and (except for a provisional patent application) an oath or a declaration. [Cases: Patents  98.C.J.S. Patents §§ 137–139.]

allowed application.A patent application for which the U.S. Patent and Trademark Office examiner has determined that all pending claims meet the conditions for patentability. • When an application is allowed, the PTO notifies the applicant through a Notice of Allowability and a Notice of Allowance. Once a patent application is allowed, a patent normally issues after the applicant has paid the required issue fee.

application for a reissue patent.An application by a patentee to change the scope of a patent that has already been issued, or to correct clerical or technological errors in the issued patent. • The scope of the claims can be broadened only if the application is made within two years of the date on which the patent was issued. See reissue patent under PATENT(3). Cf. CERTIFICATE OF CORRECTION.

child application.A later-filed application in a chain of continuing applications filed during the pendency of an earlier application and sharing common subject matter. • The first-filed application is called the parent application. Cf. parent application. [Cases: Patents  110. C.J.S. Patents § 156.]

continued-prosecution application.A request to abandon a patent application after final rejection and reopen a new case with the same file wrapper as the parent application. • CPAs are available only for applications filed before May 29, 2000. They are authorized in 37 CFR § 1.53(d). — Abbr. CPA. — Also termed Rule 1.53 application. Cf. REQUEST FOR CONTINUED EXAMINATION. [Cases: Patents  110. C.J.S. Patents § 156.]

continuing application.A patent application that is filed while the parent application is pending and that carries on prosecution of some or all of the original application. • Continuation, continuation-in-part, divisional, and reissue applications are all forms of continuing applications. [Cases: Patents  110. C.J.S. Patents § 156.]

Convention application.A patent application filed in accordance with the terms of an international patent treaty such as the Paris Convention or the Patent Cooperation Treaty.

divisional application.A patent application based on the same disclosure as the original application but claiming a different invention. • If an examiner finds that a disclosure reveals two or more distinct inventions, the applicant must restrict the original application to claiming one of the inventions. A divisional application can then be filed on any nonelected invention, and it will keep the same filing date as the parent application. — Often shortened to divisional. — Also termed restriction application. [Cases: Patents  109. C.J.S. Patents §§ 152–155.] file-wrapper continuation application.See CONTINUATION; CONTINUATION-IN-PARTT.

grandparent application.The first-filed application in a chain of at least three continuation or

continuation-in-part patent applications. [Cases: Patents  110. C.J.S. Patents § 156.]

informal application.A patent application that is not in the correct form as required by the U.S. Patent and Trademark Office. • According to the Manual of Patent Examining Procedure, an application is informal if it is printed on both sides of the paper, or is not permanent, legible, or reproducible. An informal application may be corrected and still retain the original filing date. international application.An application under the Patent Cooperation Treaty for patent protection in specified member nations. • A PCT filing may be added as long as 30 months after the initial filing in a national patent office. It allows for simultaneous patent searches and examinations in multiple countries. — Also termed PCT application; PCT filing. See PATENT COOPERATION TREATY.

international application designating the United States.An international-patent application that is filed in accordance with the Patent Cooperation Treaty and specifically seeks patent protection in the United States. • The application may be filed in any nation, including the U.S., that is a party to the treaty.

international application originating in the United States.An international-patent application that is filed in the U.S. Patent and Trademark Office in accordance with the Patent Cooperation Treaty. • Under the treaty, the PTO acts as a receiving office for international applications. The applicant may or may not be seeking patent protection in the U.S. [Cases: Patents  97. C.J.S. Patents §§ 135–138, 145, 178.]

parent application.The first-filed application in a chain of later-filed continuation or continuation-in-part applications. • An application becomes the parent application when another type of application (such as continuation, divisional, or substitute) is filed. The term “parent” is generally not used to refer to a provisional application. Cf. child application. [Cases: Patents  110. C.J.S. Patents § 156.]

provisional application.An application that can be filed up to a year before the patent application itself, in order to establish a date for prior art and constructive reduction to practice. • The PPA must include a full description of the invention, but claims, drawings, and prior-art disclosures are not required. — Abbr. PPA. — Also termed provisional patent application. [Cases: Patents  98. C.J.S. Patents §§ 137–139.] restriction application.See divisional application.

Rule 1.53 application.See continued-prosecution application.

substitute application.A duplicate application filed after the response period for a first office action has expired and the first application has been deemed abandoned. • A substitute application carries some danger for the applicant: the original filing date is lost, and any developments since that date become prior art that the examiner must consider before granting the patent. [Cases: Patents  110. C.J.S. Patents § 156.]

[Blacks Law 8th]