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

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. 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 . Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Information from Copending Applications Required MPEP 2001.06(b) Duty to Disclose Material Information MPEP 2000 Guidance on Compliance with Duty of Disclosure Regardless of Materiality Standard MPEP 2000 Copending Applications Must Be Disclosed to Examiner MPEP 2001.06(b) Prohibited Disclosure of Copending Applications Required MPEP 2001.06(b) Required AIA Amends Duty to Disclose Errors Without Deceptive Intent MPEP 2000 Duty of Disclosure Materiality Revised Based on Therasense MPEP 2000 Duty of Disclosure to Adopt But-For Materiality Standard MPEP 2000 Requirement for Post-Sept. 16, 2012 Patent Applications MPEP 2001 Duty to Disclose Material Information to USPTO MPEP 2000 Other Related FAQs 5 FAQs...