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Issue 83 | June 13, 2003
Elimination of CPA Practice for Utility and Plant Patent Applications
 On May 30, 2003, the U.S. Patent and Trademark Office announced that it was amending 37 C.F.R. 1.53(d) of its Rules of Practice to eliminate Continued Prosecution Application Practice for utility and plant patent applications. Those wanting to take advantage of certain provisions of the American Inventor’s Protection Act of 1999 ("AIPA") must file a CPA before July 14, 2003.

The American Inventor’s Protection Act ("AIPA") amended title 35 of the United States Code to provide for a request for continued examination (RCE) in any utility or plant application filed on or after June 8, 1995. The AIPA also provided, with certain exceptions, for the publication of pending patent applications (eighteen months after the earliest claimed filing for utility and plant applications filed on or after November 29, 2000, including any CPA filled on or after November 29, 2000).

Although CPA filings are in the process of being phased out, an ever increasing percentage of requests for a CPA are improper because the prior application was not filed before May 29, 2000. According to the Notice, continuing to permit the filing of a CPA in utility or plant applications (filed before May 29, 2000) would require the USPTO to check every request for a CPA to determine whether it is a proper CPA, and maintain a special eighteen-month publication process for an ever decreasing number of CPAs.

As such, §1.53(d)(1) has been amended to provide that an application may be filed as a CPA only if the application is for a design patent (either an original or reissue design patent) and the prior nonprovisional application (of which the CPA is a continuation or divisional) is a design application that is complete as defined by §1.51(b).

The USPTO recognizes that an RCE is not a complete equivalent to a CPA and that there are several circumstances where a CPA is required in order to obtain certain benefits. For example, one must file a CPA in an application filed before November 29, 1999, to take advantage of the common prior art exclusion in 35 U.S.C. 103(c) as amended by §4807 of the AIPA. A CPA is similarly required in an application filed before May 29, 2000, in order to take advantage of the patent term adjustment provisions of 35 U.S.C. 154(b) as amended by §4402 of the AIPA. One must also file a CPA in an application filed before November 29, 2000 in order to take advantage of the eighteen-month publication provisions of the AIPA (without having to file a copy of the application by the USPTO’s electronic filing system, or "EFS").

There are also other circumstances where an RCE is simply not allowed. For example, one can NOT file an RCE
  • in an application filed before June 8, 1995;
  • to obtain examination of a patentably distinct invention (i.e., analogous to a divisional CPA);
  • to change inventorship without a request to correct inventorship under §1.48;
  • without a submission; or
  • before prosecution in the application is closed.
The official Notice is available at http://www.uspto.gov/web
/offices/com/sol/notices/68fr32376.pdf
.  Please feel free to contact the authors, Kenn Bruley and Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia USA, if you would like to know more about what effect these changes may have on pending patent applications.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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