Chapter 200 discusses a wide array of important topics. These include the differences between national and international applications, the correction of inventorship in patent applications and a general overview of the different types of applications that may be filed to the PTO. There are several different application types in all including; provisional, nonprovisional (regular), divisional, continuationinpart, continuing, continued prosecution applications, substitute, statutory invention registration, and reissue applications.

Under specific conditions, an applicant may want to claim the earlier filing date of a previously filed application. This procedure is covered in the section on the right of priority of an application. It is possible to claim the priority of an earlier U.S. application or even applications filed in participating foreign countries filed.

Another important review topic covered in this chapter is application status, such as whether the application is pending, rejected or has been abandoned.

This chapter provides an overview for many other sections of the MPEP and should therefore be thoroughly reviewed. The section on different application types provides a basis for an understanding of patent applications; you should plan to read and then reread this section. The subtle differences between the continuing applications, CIP's and CPA's will most certainly be tested.

The exam will probably contain a specific question or two directed at correcting the inventorship of an application. Priority claims will also be tested in a couple of questions. Usually, the conditions for meeting the right of priority of an application are incorporated into the test in at least one question.

National versus International Applications

201 Types of applications

35 U.S C. 111 Application.
(a) IN GENERAL.
(1) WRITTEN APPLICATION.An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.Such application shall include
(A) a specification as prescribed by section 112 of this title;
(B) a drawing as prescribed by section 113 of this title; and
(C) an oath by the applicant as prescribed by section 115 of this title.
(3) FEE AND OATH.The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.
(1) AUTHORIZATION.A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include
(A) a specification as prescribed by the first paragraph of section 112 of this title; and
(B) a drawing as prescribed by section 113 of this title.
(2) CLAIM.A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.
(3) FEE.
(A) The application must be accompanied by the fee required by law.
(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.
(4) FILING DATE.The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(5) ABANDONMENT.Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) of this title or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c) of this title.
(8) APPLICABLE PROVISIONS.The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.

International vs. National
International applications:
an international application is one that is filed under the Patent Cooperation Treaty (PCT) and has not yet entered national processing at the Designated Office Stage
basically, the individual filed an application, but it has not yet been reviewed by the U.S.

National applications:
there are two ways for an application to receive classification as a national application:
It may be filed as a U.S. application under 35 U.S.C. 111
It may be filed as an international application and then enter the national stage
the national stage is the stage of an internationally filed application once it has entered into the U.S. (this may include PCT applications initially filed in a foreign country)
the date of national stage is treated as the filing date of the application

Basic differences between national and national stage applications.
National applications
Filed under 35 U.S.C. 111
Restriction practice applies (Chapter 800)
Filing date may be awarded without the fee or an oath or declaration
National stage applications
Entered the national stage from an international application
Unity of invention applies (Chapter 1800)
Filing date will not be awarded until the fee is paid and the oath or declaration is submitted

The three broad types of inventions qualifying for status as a national patent application
utility patents (usually mechanicaltype inventions)
plant patents
design patents

Provisional vs. NonProvisional
An original patent filed with the PTO must further be classified as either a:
nonprovisional application a U.S. national application filed under 35 U.S.C.
111(a) or one entering the national stage from an international application; or
provisional application a U.S. national application filed under 35 U.S.C. 111(b)
(note: these classifications will be discussed in greater detail further on, this is just a basic overview)

Correcting Inventorship
There are many instances where an application will be filed, but the inventors listed on the application are incorrect. This may be due to an innocent error or to changes made during the prosecution of the application. For example, some of the claims may have been canceled during the examination process. Therefore, a previously named inventor will no longer have any role in the subject matter that was claimed. No matter what the circumstances are, the PTO has provided ways for an application's inventorship to be corrected. Rule 37 C.F.R. 1.48 addresses these issues. This specific rule and the topic of correcting inventorship will almost certainly be covered on the exam in a question or two.

201.03 Correction of Inventorship in an Application
Inventors are listed in the oath or declaration for nonprovisional applications, and in the cover sheet for provisional applications:
a new oath or declaration is not required to correct the inventorship of a provisional application because provisional applications do not require oaths or declarations
no new oath or declaration is required in rules 1.48(b), 1.48(d), 1.48(e)

An assignee's written consent is not required if an inventor is being deleted due to a cancellation of claims to reflect changes in the application during the prosecution

A petition under 37 C.F.R. 1.48 is not required where:
the claims and inventorship ultimately match in the end (picture a team of engineers that forgot Joe's name, fortunately, the claim he helped with was eventually deleted from the application, so he needn 't be on the application)
there is a spelling error in the name of the inventor
the inventor's name has changed
a court issued an order for the correction of the inventors involved in a patent
there was no change of the individual, but the incorrect name was given
a nonprovisional application, 35 U.S.C. 111(a) filed on or after 12/1/97 that does not include the names of the correct inventors, but also does not yet have an executed oath or declaration
the correct inventors may be listed when the oath or declaration is finally submitted
a provisional application, 35 U.S.C. 111(b), filed on or after 12/1/97 that does not include the names of the correct inventors, but also does not yet have a cover sheet
the correct inventors may be listed when the cover sheet is finally submitted
An error in the inventorship of a provisional application so long as a nonprovisional application naming the correct inventorship contains an overlap of at least one inventor with the provisional application.

The Proper Use of 37 C.F.R. 1.48

When to use 1.48(a)
If the mistake in inventorship occurred in the executed oath or declaration of a nonprovisional application. Basically, an innocent error occurred and inventorship was wrong from the beginning

§ 1.48 Correction of inventorship in a patent application, other than a reissue application.
(a) Nonprovisional application after oath/declaration filed. If the inventive entity is set forth in error in an executed § 1.63 oath or declaration in a nonprovisional application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the inventorship of the nonprovisional application may be amended to name only the actual inventor or inventors. If the nonprovisional application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under § 1.634. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change;
(2) A statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;
(3) An oath or declaration by the actual inventor or inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43 or § 1.47;
(4) The processing fee set forth in § 1.17(i); and
(5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

A 1.48(a) filing must be accompanied by:
a request to correct the inventorship of the application
a statement from each person being added and each person being deleted acknowledging that the error occurred without deceptive intention on his or her part
an oath or declaration executed by actual inventors
the required fee
the written consent of an assignee (if applicable)

When to use 1.48(b)
If a correction in the inventorship became necessary during the prosecution (usually due to the cancellation or amending of the claims) of a nonprovisional application and one or more inventors must now be deleted.
in this case, the executed oath or declaration of the nonprovisional application must be amended
usually, a claim cancellation or amendment will result in less inventors (i.e., inventor A came up with claim 3 and since claim 3 was canceled, inventor A needs to be taken off the application)

§ 1.48 Correction of inventorship in a patent application, other than a reissue application
(b) Nonprovisional application fewer inventors due to amendment or cancellation of claims. If the correct inventors are named in a nonprovisional application, and the prosecution of the nonprovisional application results in the amendment or cancellation of claims so that fewer than all of the currently named inventors are the actual inventors of the invention being claimed in the nonprovisional application, an amendment must be filed requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed. If the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under § 1.634. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the named inventor or inventors being deleted and acknowledges that the inventor's invention is no longer being claimed in the nonprovisional application; and
(2) The processing fee set forth in § 1.17(i).

A 1.48(b) filing must be accompanied by:
a request including a statement identifying each named inventor who is being deleted and acknowledging that the inventor's invention is no longer being claimed
a. the statement may be signed by the applicant's registered patent practitioner or all of the applicants
the required fee

When to use 1.48(c)
The amending of the claims during the prosecution of a nonprovisional application results in the addition of an inventor in this case, the executed oath or declaration of the nonprovisional application must be amended

§ 1.48 Correction of inventorship in a patent application, other than a reissue application.
(c) Nonprovisional application inventors added for claims to previously unclaimed subject matter. If a nonprovisional application discloses unclaimed subject matter by an inventor or inventors not named in the application, the application may be amended to add claims to the subject matter and name the correct inventors for the application. If the application is involved in an interference, the amendment must comply with the requirements of this section and must be accompanied by a motion under § 1.634. Amendment of the inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change;
(2) A statement from each person being added as an inventor that the addition is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intention on his or her part;
(3) An oath or declaration by the actual inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43, or § 1.47;
(4) The processing fee set forth in § 1.17(i); and
(5) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

A 1.48(c) filing must be accompanied by:
a request to correct inventorship
a statement from each person being added as an inventor that the addition is necessitated by an amendment of the claims and that the inventorship error occurred without deceptive intent on his or her part
an oath or declaration by each actual inventor
the required fee
the written consent of an assignee (if applicable)

When to use 1.48(d)
In the case of a provisional application where an inventor needs to be added.

§ 1.48 Correction of inventorship in a patent application, other than a reissue application
(d) Provisional application adding omitted inventors. If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive intention on the part of the omitted inventor or inventors, the provisional application may be amended to add the name or names of the omitted inventor or inventors. Amendment of the inventorship requires:
(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the inventor or inventors being added and states that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and
(2) The processing fee set forth in § 1.17(q).

A 1.48(d) filing must be accompanied by:
a request to correct inventorship
a statement that the inventorship error occurred without deceptive intent
the statement may be signed by the registered patent practitioner
the required fee

When to use 1.48(e)
In the case of a provisional application where an inventor needs to be deleted.

§ 1.48 Correction of inventorship in a patent application, other than a reissue application
(e) Provisional application deleting the name or names of the inventor or inventors. If a person or persons were named as an inventor or inventors in a provisional application through error without any deceptive intention on the part of such person or persons, an amendment may be filed in the provisional application deleting the name or names of the person or persons who were erroneously named. Amendment of the
inventorship requires:
(1) A request to correct the inventorship that sets forth the desired inventorship change;
(2) A statement by the person or persons whose name or names are being deleted that the inventorship error occurred without deceptive intention on the part of such person or persons;
(3) The processing fee set forth in § 1.17(q); and
(4) If an assignment has been executed by any of the original named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

A 1.48(e) filing must be accompanied by:
a request to correct inventorship
a statement of lack of deceptive intent by the person who is being deleted
the required fee
written consent of any assignee

When to use 1.48(f)
When the inventorship needs to be corrected in a nonprovisional application that does not yet have an executed oath or declaration; or in a provisional application that was submitted without a cover sheet.

§ 1.48 Correction of inventorship in a patent application, other than a reissue application
(f) (1) Nonprovisional applicationfiling executed oath/declaration corrects inventorship. If the correct inventor or inventors are not named on filing a nonprovisional application under § 1.53(b) without an executed oath or declaration under § 1.63 by any of the inventors, the first submission of an executed oath or declaration under § 1.63 by any of the inventors during the pendency of the application will act to correct the earlier identification of inventorship. See §§ 1.41(a)(4) and
1.497(d) for submission of an executed oath or declaration to enter the national stage under 35 U.S.C. 371 and § 1.494 or § 1.495 naming an inventive entity different from the inventive entity set forth in the international stage.
(2) Provisional application filing cover sheet corrects inventorship. if the correct inventor or inventors are not named on filing a provisional application without a cover sheet under § 1.51(c)(1), the later submission of a cover sheet under § 1.51(c)(1) during the pendency of the application will act to correct the earlier identification of inventorship.

A petition under this rule will automatically correct the inventorship once an executed oath or declaration under 37 C.F.R. 1.63 in a nonprovisional application is filed or upon filing of a cover sheet in a provisional application

Inventorship is automatically corrected with the filing of a corrected oath

You cannot use 1.48(f) if the inventor declared he or she was the sole inventor in the original application

When to use 1.48(g)
The office may require more information at their discretion in order to correct the inventorship of any particular application.

§ 1.48 Correction of inventorship in a patent application, other than a reissue application
(g) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.

Alternate ways to change inventorship:
another way to correct inventorship is by filing a continuing application under 37 C.F.R. 1.53:
in order to add inventors:
file a continuing application under 37 C.F.R. 1.53(b) with a newly executed oath or declaration
in order to delete inventors:
file a continuing application with a request for deletion with the name of the inventor(s) under 37 C.F.R. 1.53(b) or (d)
using a continuing application to correct inventorship can only be done if at least one of the correct inventors is named in the prior application

Changing the inventorship of issued patents:
it is not too late to change inventorship in an issued patent, this can be done pursuant to rules 1.48(a) and 1.48(b)

The Different Application Types

MPEP 201.04 201.09
The different classifications of patent applications include the following:
nonprovisional, also called regular
provisional.
divisional
continuation applications
continued prosecution applications
continuationinpart applications
reissues
substitute applications
statutory invention registrations

37 C.F.R. 1.53 discusses some application requirements. This is a very important law to know. Be prepared to answer several questions pertaining to its details on the exam.

All about provisionals:
By filing a provisional application, patent pending status is held without filing any claims. An inventor can file for a provisional patent application and if it sufficiently describes the invention, his or her idea will be protected under the provisional application for 12 months. Provisional applications cost much less than filing for a regular, nonprovisional application. They allow the inventor time to show his/her invention to potential investors while it is protected.
Basically, a provisional application just holds the idea for a limited amount of time. The application will not be examined, and it will expire at the end of the 12 months. At this time, the provisional application will be abandoned. There is no way to prevent this. However, the applicant may file a nonprovisional application claiming the same subject matter presented in the provisional application. If a regular patent application is filed within one year of the provisional application, the inventor will receive the earlier provisional filing date. Therefore, if these rules are followed, the invented subject matter will have been protected ever since the filing of the provisional application.

§ 1.53 Application number, filing date, and completion of application.
(a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.
(b) Application filing requirements Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph
(c) of this section or a continued prosecution application under paragraph
(d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuationinpart application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and §1.78(a).
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuationinpart application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph. (c) Application filing requirements Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application. (1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section. (2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section;
(ii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or
(iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, an oath or declaration by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the oath or declaration was not present on the filing date accorded the resulting nonprovisional application (i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design application based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regarding application disclosures containing nucleotide and/ or amino acid sequences are not mandatory for provisional applications.
(d) Application filing requirements Continued prosecution (nonprovisional) application.
(1) A continuation or divisional application (but not a continuationinpart) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent;
(ii) The prior nonprovisional application is a design application that is complete as defined by § 1.51(b); and
(iii) The application under this paragraph is filed before the earliest of:
(A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior application;
(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16 (I), and the examination fee as set forth in § 1.16(p).
(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under §1.48.
(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality 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 § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
(e) Failure to meet filing date requirements.
(1) If an application deposited under paragraph (b), (c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so notified, if a correspondence address has been provided, and given a period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design application, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114.
(2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or drawing(s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(1). In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a filing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.
(3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f)) take action pursuant § 1.53 to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an application are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.
(f) Completion of application subsequent to filingNonprovisional (including continued prosecution or reissue) application.
(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, the search fee, or the examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has provided a correspondence address (§1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration in an application under paragraph (b) of this section, and pay the surcharge if required by § 1.16(1) to avoid abandonment.
(2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, the search fee, the examination fee, or an oath or declaration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration, and pay the surcharge required by § 1.16(t) to avoid abandonment.
(3) If the excess claims fees required by §§ 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by §§ 1.16(h), (i) and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.
(4) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to continuationinpart applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divisional application under paragraph (b) of this section.
(5) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
(g) Completion of application subsequent to filingProvisional application.
(1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.
(2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment. (3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment. (4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.
(h) Subsequent treatment of application Non provisional (including continued prosecution) application.
An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts, complying with the rules relating thereto, are received, except that certain minor informalities may be waived subject to subsequent correction whenever required.
(i) Subsequent treatment of application Provisional
application. A provisional application for a patent filed under paragraph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).
(j) Filing date of international application. The filing date of an international application designating the United States of America is treated as the filing date in the United States of America under PCT Article 11(3), except as provided in 35 U.S.C. 102(e).

Continued prosecution application (CPA): no search and examination fees are required for a CPA filed prior to December 8th, 2004.

35 U.S.C. 111 Application.
(b) PROVISIONAL APPLICATION.
(1) AUTHORIZATION.A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include
(A) a specification as prescribed by the first paragraph of section 112 of this title; and
(B) a drawing as prescribed by section 113 of this title.
(2) CLAIM.A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.
(3) FEE.
(A) The application must be accompanied by the fee required by law.
(B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional.
(4) FILING DATE.The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.
(5) ABANDONMENT.Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) of this title or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c) of this title.
(8) APPLICABLE PROVISIONS.The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.

Provisional applications are:
1. filed under 35 U.S.C. 111(b)
2. automatically abandoned 12 months after their filing date
3. only allowed for utility patents
4. they are not allowed for design and plant applications

The following are not required for provisional applications:
1. claims
2. oaths/declarations
3. examination
4. amendments
5. IDS statements

A provisional application must include:
1. a properly prepared cover sheet identifying the application as a provisional application (otherwise it will be treated as a nonprovisional application)
2. a specification that fulfills the first paragraph of 35 U.S.C. 112 a drawing when it is necessary to understand the invention
3. the required fee

If a provisional application is filed in a language other than English, an English translation of the nonEnglish language provisional application will not be required in the provisional application
a. the English translation of the nonEnglish provisional application and a statement that the translation is accurate must be submitted in any nonprovisional application claiming the benefit of the nonEnglish language provisional application

Filing date specifics:
1. a provisional application is never entitled to the right of priority of a copending utility application for a patent filed in a different country
a. if an applicant attempts to claim the benefit of an earlier U.S. or foreign application in a provisional application, the filing receipt will not reflect the improper priority claim

if the 1 year due date to replace a provisional application falls on a Saturday, Sunday or a holiday, the due date is the first working day after the holiday or weekend
Completeness of the provisional:
if the provisional application is not complete, a notice of missing parts will be sent out, as in following situations:
when the cover sheet is missing
when the cover sheet is incomplete
when the provisional filing fee is not paid
the two months are given to complete the filing or else the provisional application will be abandoned

All about nonprovisionals (regular)
These are regular applications. Nonprovisional applications may be filed for either utility, plant or design related inventions. An applicant will file an application of this type when he or she is ready to present the claims relating to the subject matter to the PTO. Nonprovisional applications are examined for patentability upon filing to the PTO (although they sure do take their time about it). In addition, nonprovisional applications may be a first filing (parent application), a divisional,
continuationinpart or a continuing application.

§ 1.53 Application number, filing date, and completion of application.
(b) Application filing requirements Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuationinpart application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(a).
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuationinpart application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
35 U.S.C. Ill Application.
(a) IN GENERAL.
(1) WRITTEN APPLICATION.An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) CONTENTS.Such application shall include
(A) a specification as prescribed by section 112 of this title;
(B) a drawing as prescribed by section 113 of this title; and
(C) an oath by the applicant as prescribed by section 115 of this title.
(3) FEE AND OATH.The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

nonprovisional applications:
are filed under 35 U.S.C. 111(a)
have a filing date that is the date the specification and any required drawings are received by the Office
may claim the benefit of an earlier filed application
either a provisional or another nonprovisional that meets the proper criteria

the following are required for nonprovisional applications: specification
claims
drawings, if required
oath/declarations which may be submitted later
filing fee which may be submitted later

Provisional vs. nonprovisional applications

Conversions:

Conversion of a provisional to a nonprovisional:
provisional applications will become abandoned 12 months after the filing date of the provisional application:
therefore, the conversion of a provisional to a nonprovisional application must be done before the 12 months is up
if the day that is 12 months after the filing date of the provisional application falls on a Sat, Sun or a Federal holiday in the District of Columbia, then the pendency of the provisional application will be extended to the next secular or business day
an application replacing a provisional application can be filed by Express Mail
on a Saturday, Sunday or a Holiday

in order to convert a provisional application to a nonprovisional application, the applicant must send in a request accompanied by:
a conversion fee
an amendment with at least one valid claim (unless the provisional application already contained a claim)
the PTO will set a time period within which a claim must be submitted for the Office to grant the request if the provisional application is without a claim and a claim is not filed with the conversion request

Effects on the patent term:
the conversion of a provisional application to a nonprovisional will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application

in the case of a successful conversion, there is only one application and that application has a single filing date, which is the filing date of the provisional application
therefore, the conversion of a provisional application to a nonprovisional application will adversely impact on the term of any patent to issue from the application however, there is another way to do this*

*a nonprovisional application may claim the benefit of a provisional application under 35 U.S.C. 119(e)
instead of converting the provisional to the nonprovisional, a nonprovisional application is filed claiming the priority of the provisional application
the patent term will begin on the filing date of the nonprovisional application, but it will claim the benefit of the filing date of the provisional (we will talk more about this in the next section The Right of Priority of an Application)

Conversion of a nonprovisional to a provisional application:
in order to convert a regular, nonprovisional `back' to a provisional: a petition requesting the conversion must be sent to the PTO a fee must be included (but of course)

the nonprovisional must be pending, it must be less than 12 months after the filing date:
it is too late to convert a nonprovisional to a provisional if it is abandoned
orif the issue fee has been paid
ora statutory invention registration (SIR) has been filed

applications filed under 37 C.F.R. 1.53(b), (nonprovisional application) may be converted to a provisional application in accordance with the procedure described in 37 C.F.R. 1.53(c)(2)
if successful, the nonprovisional application will be converted to a provisional application and have the original filing date of the nonprovisional application

the acceptance of the petition for the conversion from a nonprovisional to a provisional application does not entitle an applicant to a refund of the fees he or she paid for the original nonprovisional application

Offspring (or subsequent) applications:
Now, life would be easier if provisional and nonprovisional applications were the end of the story. Unfortunately, as you will come to see, they are not. Sometimes the applicant will need to file a subsequent application in addition to the parent (a nonprovisional or provisional application). An earlier application by an inventor that discloses the same information as the latest version is called the parent application. Any later filed applications fit under the category of offspring or subsequent applications.

examples of subsequent applications include:
divisional applications
continuation applications
continuationinpart applications (CIP)
continuing prosecution applications (CPA)
reissue applications
substitute applications

If you need to split material from one giant parent application into a few applications, you should file divisional applications for the extra material. If you need to get the PTO to start from scratch with the examination process of your application, you may file a continuing or CPA application claiming the same subject matter. In addition, you may also file a request for continuing examination (RCE) which is not an application type, but part of the examination process (this will be discussed in greater detail in Chapter 700). If you make improvements to your claimed invention after filing the original application you may file a CIP.

The PTO loves to test over the subtle differences between these application types. The three C 's, continuing, CPA 's and CIP's are favorite targets of theirs. Throw in the RCE (covered in Chapter 700) and you have spelled disaster (OK, well maybe not quite), but you've got a real mess. Plan to spend some quality time on these topics.

Copending status:
if the first application is abandoned, the second application will not be considered copending with it
the second application must be filed before the abandonment of the first in order for it to be copending with the first

Divisional application:
If an inventor initially tries to patent an invention that is actually two or more separate inventions, he or she will be required to cut some of the claims from the original patent application. If he or she still wants to patent the invention(s) that were cut, a separate application called a divisional application should be filed. The divisional application will have the same filing date as the original (now known as the parent) application.

divisional applications may be filed for a distinct or independent invention carved out of a pending application and claiming only subject matter disclosed in the earlier parent application
divisionals are often filed as a result of a restriction requirement made by the examiner

the PTO requires that there be at least one common inventor between the original application and the divisional application

the original application will not become a statutory bar against other claims until one year from the issuance of the patent

A few facts about divisionals:
they may be filed under 37 C.F.R. 1.53(b) or (d), however:
a utility or plant divisional application filed on or after May 29, 2000 must be filed under 37 C.F.R. 1.53(b)
a utility, design, plant or the national stage of an international divisional
application filed before May 29, 2000 may be filed under 37 C.F.R. 1.53(d)
no new oath or declaration is required if all or less than all the inventors share the two applications
it is only required if someone new is added
a new assertion as to small entity status (Chapter 500) is required
the prior nonprovisional is not abandoned after filing a 37 C.F.R. 1.53(b) divisional application

Continuation application:
A continuation is a second application for the same invention claimed in a prior nonprovisional application. It must be filed before the original prior application becomes abandoned or is allowed to patent. A continuation may be filed under 37 C.F.R. 1.53(b) or (d).

Any utility or plant application, including a continuing application, that will be published should be filed with the specification, claims and drawings that the applicant would like to have published
changes made by a preliminary amendment will generally not be reflected in the patent application publication, even if the preliminary amendment is referred to in the oath or declaration
A few facts about continuations:
they may be filed under 37 C.F.R. 1.53(b) or (d)
they must be filed during the pendency of the parent
the prior nonprovisional must not be abandoned or allowed to issue
a continuation must have at least one inventor in common with the original application
the disclosure must be the same (no new matter may be presented)
it may be a second, third, etc. application by the same applicant for the same invention
it must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120
a new assertion as to small entity status is required
no new oath or declaration is needed to name all or fewer than all inventors named in the prior nonprovisional application
the prior nonprovisional is not abandoned after filing a 1.53(b) continuation application

ContinuationInPart application (CIP):
If an inventor makes improvements after he or she files the original application, he or she may file a continuationinpart application to cover the improvements. The new material will have the filing date of the CIP application while the old material will still retain the filing date of the original application.

CIP's must filed during the lifetime of an earlier nonprovisional application. They always repeat at least a substantial portion of the earlier application and add matter not disclosed in the earlier application.

A few facts about continuationinpart applications:
they may only be filed under 37 C.F.R. 1.53(b)
they must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120
CIP's must contain a specific reference to the earlier application
the prior nonprovisional must still be pending
at least one inventor must be in common between the two applications
the CIP must contain new matter over the parent application while a substantial portion of the earlier application(s) is repeated
a fresh set of papers with a new oath must be sent in

a CIP application will not be disapproved according to 37 C.F.R. 1.115 (Preliminary amendments to an application MPEP 700)

Continued prosecution application (CPA):
CPA 's are no longer allowed for utility and plant applications. Instead of filing a CPA for these types of applications, you may file a request for continuing application (RCE see Chapter 700). An RCE does not apply to designs, therefore CPA 's will remain in place for design applications.

37 C.F.R. 1.53 (d) Application number, filing date, and completion of application. (d) Application filing requirements Continued prosecution (nonprovisional) application.
(1) A continuation or divisional application (but not a continuationinpart) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:
(i) The application is for a design patent:
(ii) The prior nonprovisional application is a design application that is complete as defined by § 1.51(b); and
(iii) The application under this paragraph is filed before the earliest of:
(A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior application;
(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3) The filing fee for a continued prosecution application filed under this paragraph is the basic filing fee as set forth in § 1.16(0.
(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.
(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality 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 § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following
information relating to the prior application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) Envelopes containing only requests and fees for filing an application under this
paragraph should be marked "Mail Stop CPA." Requests for an application under this paragraph filed by facsimile transmission should be clearly marked "Mail Stop CPA."
(10) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.

as of July 14, 2003, CPA's (which are filed under 37 C.F.R. 1.53(d)) may only be filed for design applications
CPA's have been eliminated for utility and plant applications

advantages of a CPA:
papers are minimal
it may be delivered by facsimile or hand
prosecution by the PTO will usually be shorter
if prior application has an Office action, the CPA will be treated as an "amended application" and prosecution will be sped up
if no previous Office action was made, the CPA will be treated as a "new application" and the prosecution will be as slow as usual

CPA's must be filed before the following occur to the prior nonprovisional application:
payment of the issue fee
abandonment
termination of proceedings

the filing date granted to the CPA is the date the request for the CPA is made:
although it may claim the benefit of an earlier application under 35 U.S.C. 120

a CPA must:
identify the prior application(s)
disclose the same subject matter
name the same inventors
less may be named, but no extras

A few more facts about CPA's:
the prior application will be abandoned
small entity status must be reestablished
any terminal disclaimers in the prior application will carry over to the CPA
the material needed to accord an application a filing date may not be incorporated by reference
the applicant may file a request for suspension of action (Chapter 700) under 37 C.F.R. 1.103(b) if they need more time to prepare a preliminary amendment or to file an Information Disclosure Statement (Chapter 600) in a CPA
the request for suspension of action must be filed at the time of filing of the CPA
CPA's have the same application number as the parent, but no reference to the parent is inserted into the specification

Differences between application types

Compare/contrast 1.53(b) and 1.53(d)?
both 1.53(b) and (d) are filed under 35 U.S.C. 111(a)

all applications are filed under 1.53(b) except:
an application resulting from entry of an international application into the national stage
a provisional application
these are always filed under 37 C.F.R. 1.53(c)
continued prosecution applications (CPA's)
these are always filed under 37 C.F.R. 1.53(d)

utility, design and plant applications may all be filed under 37 C.F.R. 1.53(b)

the following application types may be filed under 37 C.F.R. 1.53(b):
nonprovisional
continuation
divisional
CIP
substitute

37 C.F.R. 1.53(b) is the 'default' application

37 C.F.R. 1.53(d) is currently used for CPA's where the prior nonprovisional is based on:
design applications
it is no longer allowed for utility or plant applications

Reissue application (Chapter 1400):
A reissue application will take the place of an unexpired patent that is defective in one or more areas. If an inventor submits an original application and the claims or the specification are not quite right, the inventor may revise the mistakes in a reissue patent. If issued, the reissued patent will expire when the original patent term ends.

a reissue filed within two years may be entitled to broader claims than in the parent application:
if the intention to broaden the claims is not brought up until after the 2 year period has expired, the inventor may not file broader claims

if a new invention was disclosed, but not claimed in the original application, the inventor may file the claims directed to the new invention at any time (during the life of the patent) since claiming entirely different subject matter in entirely new claims does not constitute broadening as long as the original claims are not broadened

all reissue applications for the same patent must issue simultaneously
therefore, it is never advantageous to file two reissue applications

deliberately canceled claims cannot be recaptured by filing a reissue

the specification, including the claims of the patent for which the reissue is requested must be furnished in the form of a copy of the printed patent, in double column format, with each page on only one side of a single sheet of paper

Substitute application
Substitute applications are, in essence, the duplicate of an abandoned application by the same applicant. A substitute is an entirely new application; it is never considered a copending application. The substitute application will not gain the original filing date therefore, it will not have been protected during the time between the two filings. It will have the same disclosure as an earlier application.

Statutory Invention Registration (SIR) (see Chapter 1100)
An SIR is not a patent. If an invention gains SIR status it will be placed in the public domain (meaning any and all members of the public will have access to it), therefore, no one will ever be able to gain a patent on that invention. It will be published in the Official Gazette and become a prior art reference. The inventor must agree to waive the right to receive a
patent. An SIR does not confer any rights to exclude an individual from using the invention (no patent rights are gained).

an SIR requires a complete description of the invention in the form of a specification, but without:
formal drawings
claim(s)
an oath or declaration

Right of Priority of an Application

MPEP 201.11 201.16
Under certain conditions an application or a patent filed in the U.S. may be entitled to the benefit of the filing date of a prior application.
One criteria is that the two applications must share at least one common inventor in order to qualify. 35 U.S.C. 120 sets out the conditions for claiming the benefit of a prior nonprovisional application. 35 U.S.C. 119(e) sets out the conditions for claiming the benefit of prior provisional applications. `What about foreign applications? ' you ask. Well these are explained in 35 U S. C. 119 (a)(d) and (f).
When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement of the prior application unless an incorporation by reference statement of the previous application was presented at the time of filing the application
A claim in an application is entitled to the benefit of the filing date of an earlier provisional or nonprovisional application only if the earlier application provides an enabling disclosure of the subject matter of the claim under 35 U.S.C. 112, first paragraph.

Priority for domestic applications:
There are six conditions. for receiving the benefit of an earlier filing date under 35 U.S.C. 120 (nonprovisionals) or 35 U.S.C. 119(e) (provisionals). These conditions are outlined here.

35 U.S.C. 120 Benefit of earlier filing date in the United States.
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.

35 U.S.C. 119 Benefit of earlier filing date; right of priority.
(e) (1)An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection during the pendency of the application
(2) A provisional application filed under section 111(b) of this title may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) of this title has been paid.
(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day.

§ 1.78 Claiming benefit of earlier filing date and crossreferences to other applications.
(a) (1) A nonprovisional application or international application designating the United States of America may claim an invention disclosed in one or more priorfiled copending nonprovisional applications or international applications designating the United States of America. In order for an application to claim the benefit of a priorfiled copending nonprovisional application or international application designating the United States of America, each priorfiled application must name as an inventor at least one inventor named in the laterfiled application and disclose the named inventor's invention claimed in at least one claim of the laterfiled application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each priorfiled application must be:
(i) An international application entitled to a filing date in accordance with PCT Article 11 and the United States of America; or
(ii) Complete as set forth in § 1.51(b); or
(iii) Entitled to a filing date as set forth in § 1.53(b) or § 1.53(d) and include the basic filing fee set forth in § 1.16; or
(iv) Entitled to a filing date as set forth in § 1.53(b) and have paid therein the processing and retention fee set forth in § 1.21(1) within the time period set forth in § 1.53(f).
(2) (i) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application claiming the benefit of one or more priorfiled copending nonprovisional applications or international applications designating the United States of America must contain or be amended to contain a reference to each such priorfiled application, identifying it by application number (consisting of the series code and serial number) or international application number and international filing date and indicating the relationship of the applications. Cross references to
other related applications may be made when appropriate (see § 1.14).
(ii) This reference must be submitted during the pendency of the laterfiled application. If the laterfiled application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the laterfiled application or sixteen months from the filing date of the priorfiled application. If the laterfiled application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371 (b) or (f) in the laterfiled international application or sixteen months from the filing date of the priorfiled application. These time periods are not extendable. Except as provided in paragraph (a)(3) of this section, the failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (a)(2)(i) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such priorfiled application. The time periods in this paragraph do not apply if the laterfiled application is:
(A) An application for a design patent;
(B) An application filed under 35 U.S.C. 111 (a) before November 29, 2000; or
(C) A nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an international application filed under 35 U.S.C. 363 before November 29, 2000.
(iii) If the laterfiled application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76), or the specification must contain or be amended to contain such reference in the first sentence following the title.
(iv) The request for a continued prosecution application under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the priorfiled application. The identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
(3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) of this section is presented in a nonprovisional application after the time period provided by paragraph (a)(2)(ii) of this section, the claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a priorfiled copending nonprovisional application or international application designating the United States of America may be accepted if the reference identifying the priorfiled application by application number or international application number and international filing date was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a priorfiled application must be accompanied by:
(i) The reference required by 35 U.S.C. 120 and paragraph (a)(2) of this section to the priorfiled application, unless previously submitted;
(ii) The surcharge set forth in § 1.17(t); and
(iii) A statement that the entire delay between the date the claim was due under paragraph (a)(2)(ii) of this section and the date the claim was filed was unintentional. The Commissioner may require additional information where there is a question whether the delay was unintentional.
(4) A nonprovisional application, other than for a design patent, or an international application designating the United States of America may claim an invention disclosed in one or more priorfiled provisional applications. In order for an application to claim the benefit of one or more prior filed provisional applications, each priorfiled provisional application must name as an inventor at least one inventor named in the laterfiled application and disclose the named inventor's invention claimed in at least one of the laterfiled application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each priorfiled provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(k) must be paid within the time period set forth in § 1.53(g).
(5) (i) Any nonprovisional application or international application designating the United States of America claiming the benefit of one or more priorfiled provisional applications must contain or be amended to contain a reference to each such priorfiled provisional application, identifying it by the provisional application number (consisting of series code and serial number).
(ii) This reference must be submitted during the pendency of the laterfiled application. If the laterfiled application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the laterfiled application or sixteen months from the filing date of the priorfiled provisional application. If the laterfiled application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the laterfiled international application or sixteen months from the filing date of the priorfiled provisional application. These time periods are not extendable. Except as provided in paragraph(a)(6) of this section, the failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) to such priorfiled provisional application. The time periods in this paragraph do not apply if the laterfiled application is:
(A) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
(B) A nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an international application filed under 35 U.S.C. 363 before November 29, 2000.
(iii) If the laterfiled application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76), or the specification must contain or be amended to contain such reference in the first sentence following the title.
(iv) If the priorfiled provisional application was filed in a language other than English and an Englishlanguage translation of the priorfiled provisional and a statement that the translation is accurate were not previously filed in the priorfiled
provisional application or the laterfiled nonprovisional application, applicant will be notified and given a period of time within which to file an Englishlanguage translation of the nonEnglishlanguage priorfiled provisional application and a statement that the translation is accurate. In a pending nonprovisional application, failure to timely reply to such a notice will result in abandonment of the application.
(6) If the reference required by 35 U.S.C. 119(e) and paragraph (a)(5) of this section is presented in a nonprovisional application after the time period provided by paragraph (a)(5)(ii) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior filed provisional application may be accepted during the pendency of the laterfiled application if the reference identifying the priorfiled application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior filed provisional application must be accompanied by:
(i) The reference required by 35 U.S.C. 119(e) and paragraph (a)(5) of this section to the priorfiled provisional application, unless previously submitted;
(ii) The surcharge set forth in § 1.17(t); and
(iii) A statement that the entire delay between the date the claim was due under paragraph (a)(5)(ii) of this section and the date the claim was filed was unintentional. The Commissioner may require additional information where there is a question whether the delay was unintentional.
(b) Where two or more applications filed by the same applicant contain conflicting claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
(c) If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same party and contain conflicting claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, the Office may require the assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person at the time the later invention was made, and, if not, indicate which named inventor is the prior inventor.

Outline of the six conditions for receiving priority benefit under 35 U.S.C. 120 or 35 U.S.C. 119(e):
both applications must have the same disclosure
both applications must be copending
the claim for benefit must be filed before the expiration of the prior application, therefore, before the prior application:
issues to a patent
becomes abandoned
terminates proceedings

a specific reference to the prior application(s) in the specification or application data sheet must be made:
the relationship to the prior application must be clear (i.e. is it a continuation, divisional or CIP?)
this is irrelevant with CPA's since the same application number is assigned to both
must make reference to intermediates and the original if the application is claiming the benefit of the original filing date
both applications must have at least one inventor in common
the claim must be made within the appropriate time period (although a petition for unintentional delay may be made)
for utility or plant applications filed on or after Nov 11, 2000, benefit claims must be made during the pendency of the application
for applications filed under 35 U.S.C. 111(a), the benefit claim must also be made within the later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior application
for applications entering the national stage, the benefit claim must be made within the later of 4 months from the date on which the national stage commenced or 16 months from the filing date of the prior application
provisional applications must be translated to English with a statement that the
translation is accurate for each application claiming the benefit of the provisional
application

no renewal of previously made claims for foreign priority under 35 U.S.C. 119 or continuation status of an application under 35 U.S.C. 120 is necessary during reexamination

Priority for foreign applications:
An application for a patent filed in the US. may be entitled to the benefit of the filing date of a
previously filed application in a foreign country. This may be important for applications that attempt to overcome an intervening reference. The details for receiving the benefit of a foreign application are discussed here in this section.

35 U.S.C. 119 Benefit of earlier filing date; right of priority.
(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing.
(b) (1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.
(2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed claim under this section.
(3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.
(c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.
(d) Applications for inventors' certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor's certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing.
(f) Applications for plant breeder's rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents.

§ 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).
(1) (i) In an original application filed under 35 U.S.C. 111(a), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable. The claim must identify the foreign application for which priority is claimed, as well as any foreign application for the same subject matter and having a filing date before that of the application for which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply in an application under 35 U.S.C. 111(a) if the application is:
(A) A design application; or
(B) An application filed before November 29, 2000
(ii) In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT.
(2) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by the processing fee set forth in § 1.17(i), but the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and § 1.323
(3) When the application becomes involved in an interference (§ 1.630), when necessary to overcome the date of a reference relied upon by the examiner, or when deemed necessary by the examiner, the Office may require that the claim for priority and the certified copy of the foreign application be filed earlier than provided in paragraphs (a)(1) or (a)(2) of this section.
(4) An English language translation of a nonEnglish language foreign application is not required except when the application is involved in an interference (§ 1.630), when necessary to overcome the date of a reference relied upon by the examiner, or when specifically required by the examiner. If an English language translation is required, it must be filed together with a statement that the translation of the certified copy is accurate.
(b) An applicant in a nonprovisional application may under certain circumstances claim priority on the basis of one or more applications for an inventor's certificate in a country granting both inventor's certificates and patents. To claim the right of priority on the basis of an application for an inventor's certificate in such a country under 35 U.S.C. 119(d), the applicant when submitting a claim for such right as specified in paragraph (a) of this section, shall include an affidavit or declaration. The affidavit or declaration must include a specific statement that, upon an investigation, he or she is satisfied that to the best of his or her knowledge, the applicant, when filing the application for the inventor's certificate, had the option to file an application for either a patent or an inventor's certificate as to the subject matter of the identified claim or claims forming the basis for the claim of priority.
(c) Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a)(d) or 365(a) not presented within the time period provided by paragraph (a) of this section is considered to have been waived. If a claim for priority under 35 U.S.C. 119(a)(d) or 365(a) is presented after the time period provided by paragraph (a) of this section, the claim may be accepted if the claim identifying the prior foreign application by specifying its application number, country (or intellectual property authority), and the day, month, and year of its filing was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a)(d) or 365(a) must be accompanied by:
(1) The claim under 35 U.S.C. 119(a)(d) or 365(a) and this section to the prior foreign
application, unless previously submitted;
(2) The surcharge set forth in § 1.17(t); and
(3) A statement that the entire delay between the date the claim was due under paragraph (a)(1) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was
unintentional.

35 U.S.C. 119(a)(d) and (f) list the information need to claim the priority benefit of foreign applications

the deadline for filing a utility patent originally patented in a foreign country is one year:
the period of 12 months specified in this section is 6 months in the case of designs
the date that a U.S. patent becomes prior art under 102(e) does not move back as a result of a foreign priority
if an application is modified in another country because of incompleteness, then the one year term for filing in the U.S. begins when the application is fully complete, not the original filing date

in order to gain the benefit of a foreign priority claim, an applicant must:
claim priority in a statement
provide the application number and the date of the foreign application
provided the name of the treaty under which the application was filed
provide the name and location of the national authority which received the application

Specific rules:
Outline for claiming the benefit of the filing date of a prior application filed in a foreign country:
the foreign application must be one filed in "a foreign country which affords similar privileges in the case of applications filed in the U.S. or to citizens of the U.S. or in a WTO member country"
the foreign application must have been filed by the same applicant (inventor) as the applicant in the U.S., or by his or her legal representatives or assigns
however, a right of priority does not exist in the case of an application
involving inventor A in the foreign country and inventor B in the U.S.,
even though the 2 applications may be owned by the same party
the application, or its earliest parent U.S. application under 35 U.S.C. 120, must have been filed within 12 months from the date of the earliest foreign filing in a "recognized" country
the foreign application must be for the same invention as the application in the U.S.
for original applications filed under 35 U.S.C. 111(a) on or after Nov 29, 2000, the claim for priority must be presented during the pendency of the application and within the later of 4 months from the actual filing date of the application or 16 months from the filing date of the prior foreign application (this is nonextendable)
6. for original applications entering the national stage on or after Nov 29, 2000, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT (see MPEP 1800)
7. in the case where the basis of the claim is an application for an inventor's certificate, the requirements of 37 C.F.R. 1.55(b) must also be met

the list of countries for which 35 U.S.C. 119(a)(d), and (f) priority is granted has been updated to include WTO member countries

a priority claim does not amount to an incorporation by reference of the application to which priority is claimed and furthermore, a mere reference to another application, patent, or publication is not an incorporation by reference unless a statement is included that such referenced application, patent, or publication is "hereby incorporated herein by reference"

the foreign priority claim may be submitted in an application data sheet

if a claim for foreign priority is presented after the time period set in 37 C.F.R. 1.55(a)(1)(i), the claim may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed claim for priority

if the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by a processing fee
in such case, the certified copy of the foreign application will be placed in the application file but will not be reviewed and the patent will not include the priority claim unless corrected by a Certificate of correction

a sole or joint applicant may rely on two or more different foreign applications and may be entitled to the filing date of one of them with respect to certain claims and to another with respect to other claims
no renewal of previously made claims for foreign priority under 35 U.S.C. 119 or continuation status of an application under 35 U.S.C. 120 is necessary during reexamination

Deadlines:
if the deadline to file an application for a foreign priority application falls on a weekend or holiday, the deadline is automatically extended to the first business day following the weekend or holiday
the deadline for filing a design patent originally patented in a foreign country is six months
Correcting applications requesting priority of another application: the failure to perfect a claim to foreign priority benefit prior to issuance of the patent may also be cured by:
filing a reissue application

filing a Certificate of Correction
there must be a previously expressed desire by the applicant to receive benefits under a claim of priority before a Certificate of Correction request will be granted
while a continuation application can rely on a previously expressed desire to receive benefits under a claim of priority in a parent case, a parent case has no prior application to look to
for continuing applications, issued as a patent which were filed on or after Nov 29, 2000, the applicant must also file a petition for unintentional delay with the Certificate of Correction

Claiming the priority benefit of another application

Definitions for Application Status

203 Status of applications
This section defines the various status `levels' of an application.

New:
A "new" application is a nonprovisional one that has not yet received an Office action by the examiner. An amendment filed prior to the first Office action does not alter the status of a "new" application.

Rejected:
A nonprovisional application which contains an unanswered examiner's action and is designated as a "rejected" application. Its status as a "rejected" application will continue until the applicant replies satisfactorily to the examiner's action (within a given period of time) or until the application becomes abandoned.

Amended:
An "amended" or "old" nonprovisional application is one that has been acted on by the
applicant in response to an examiner's action. Such a reply may be an election, an
attempt to overcome a rejection by an examiner or an amendment of the application.
for amended applications, if the applicant files a reply to an Office action and 6 months have elapsed since the filing of the reply and no response from the Office is received, the applicant should inquire as to the status of the application to avoid potential abandonment

Allowed or in issue:
An "allowed" nonprovisional application or an application "in issue" is one which, after having been examined, is passed to issue as a patent, subject to payment of the issue fee. Its status as an "allowed" application continues from the date of the notice of allowance until it is withdrawn from issue or until it issues as a patent or becomes abandoned.

Abandoned:
an abandoned application is one which is removed from the Office docket of pending applications for one of the following reasons:
through formal abandonment by the applicant or by the attorney or agent of record
through failure of the applicant to take the appropriate action at some stage in the prosecution of a nonprovisional application
for failure to pay the issue fee
or, in the case of a provisional application, it will automatically be abandoned 12 months after the filing date of the provisional application