The United States Patent and Trademark Office (Office) has adopted an interim rule, effective March 5, 2014, pertaining to Continued Prosecution Applications (CPAs), which are only available for design patent applications.
A CPA is typically filed when prosecution on the merits is closed in a design patent application. For example, after the Examiner issues a final rejection in a design application, the Applicant may file a CPA in order to continue prosecution in front of the Examiner, instead of appealing the final rejection to the Patent Trial and Appeals Board. A Request for Continued Examination (RCE) is not allowed in a design patent application.
The interim rule permits the filing of a CPA even if the prior design application does not contain the inventor's declaration if the CPA is filed on or after September 16, 2012, and the prior design application contains an application data sheet indicating the name, residence, and mailing address of each inventor.
The Leahy-Smith America Invents Act (AIA) generally revised and streamlined the requirements for the inventor's declaration. In implementing the AIA inventor’s declaration provisions, the Office provided that an applicant may postpone the filing of the inventor’s declaration until allowance if the applicant provides an application data sheet indicating the name, residence, and mailing address of each inventor.
However, the rules pertaining to CPAs still required that the prior design application of a CPA be complete, which required that the prior design application contain the inventor's declaration. The interim rule eliminates this requirement for CPAs in order to align CPA practice with the general provisions of the AIA. Under the new rules, applicants no longer need to file the inventor's declaration in a prior design application in order to file a CPA of that application.
As a side note, the Office found "good cause to adopt the changes in this interim rule without prior notice and an opportunity for public comment, as such procedures are contrary to the public interest."