How should an applicant handle potentially conflicting claims in copending applications?

How should an applicant handle potentially conflicting claims in copending applications?

When dealing with potentially conflicting claims in copending applications, applicants must be proactive and transparent. MPEP 2001.06(b) provides guidance:

“If the copending application is not commonly owned and the applicant is aware of the copending application, the applicant should disclose the existence of the copending application to the Office.”

To handle potentially conflicting claims:

• Disclose the existence of the copending application to the USPTO
• Identify the potentially conflicting claims
• Explain any material differences between the claims
• Consider filing a terminal disclaimer if appropriate
• Be prepared to address potential double patenting rejections

It’s crucial to address these issues proactively to avoid complications later in the prosecution process or after patent issuance. Failure to disclose potentially conflicting claims could be considered a violation of the duty of disclosure under 37 CFR 1.56.

To learn more:

• conflicting claims
• copending applications
• duty of disclosure
• double patenting
• terminal disclaimer