37 CFR 1.53 d is an application filing requirement that allows for a second or subsequent application for a continued prosecution in certain conditions.

Application Filing Requirements-Continued Prosecution (Nonprovisional) Application

An application can be filed under this paragraph in the following instances:

  • When the application is for a design patent.
  • When the original nonprovisional application is a design application, however, it must not be an international design application, according to the definition of subsection 1.51(b), except on the oath or declaration of the applicant if the filing of the application occurs on or after September 16, 2012, and there is an application data sheet attached to the initial nonprovisional application that meets all the requirements defined in subsection 1.53(f)(3)(I).
  • When an application is filed under this paragraph before the earliest of:
    • Payment of the issue fee for the initial application, except the initial application is granted a petition under subsection 1.313(c);
    • The original application was abandoned; or
    • Proceedings on the original application were terminated.

This paragraph allows inventors who were not listed in the original application to file another application, as long as the application filed under paragraph 37 CFR 1.53 d includes a statement which requests the removal of the name(s) of the people who have no claim to the invention in the new application.

This means that the name of an individual who was not included as an inventor in the prior application cannot be included in an application filed under paragraph 37 CFR1.53 d on the filing date, except through a correction of inventorship, according to subsection 1.48.

Thus, any changes to the prior application will take the form of an amendment to the application before it was filed under paragraph 37 CFR 1.53 d; in essence, no new matter can be added to the original application but will rather be considered as a substitute matter under subsection 1.125.

The 35 U.S.C. 120 requires that all applications filed under this paragraph must carry a specific application number unique to the original application. Additionally, amendments to the prior application through a continued application under this paragraph may not delete such specific reference.

Apart from stating the application number of the initial application, the request for an application filed under paragraph 37 CFR 1.53 d should also include the following:

  • Title of Invention
  • Name(s) of applicant(s)
  • Correspondence address

To request for a limited suspension of action in an application filed under the paragraph, see the provisions of subsection 1.103(b).

Petitions Requesting Continued Reexamination (RCR)

Following the provisions of 37 CFR 1.53 (b) or 1.53 (d) or 37 CFR 1.114, patent owners applying for patent prosecution have the right to file an RCE or continuation to continue prosecution. However, patent reexaminations do not allow these mechanisms.

Before May 2004, patent owners filed subsequent reexamination requests using the same art as the prior request to continue prosecution. The subsequent filing aimed to overturn the verdict of the first request for a new reexamination to take place. This strategy was successfully used to contest the patentability of inventions.

However, this practice ended in May 2004 when new USPTO regulations came into effect stipulating that second or subsequent requests for reexamination cannot be filed unless the new request cites additional arts apart from that of the first reexamination.

The USPTO in 2005 set new rules guiding how to file requests for second or subsequent reexaminations for patentability, including entry of evidence and amendments which were rejected in prior reexaminations.

If patent owners wish to request for continued reexamination, they can do the following:

1. File a petition under 37 C.F.R. 1.181 requesting for the review of a denial of entry of an amendment tendered after final rejection during an ex parte reexamination or after an action closing prosecution during an inter partes reexamination.

2. File a petition under 37 CFR 1.182 requesting relief which is not currently available under any existing name, rule, or request for continued reexamination (RCR). 28

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