What is the impact of prior art on CIP applications?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 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. The impact of prior art on Continuation-In-Part (CIP) applications can be significant, especially for claims that are only supported by the CIP disclosure and not the parent application. According to MPEP 2133.01 : “Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar the issuance of a patent under pre-AIA 35 U.S.C. 102(b).” This means that for claims with an effective filing date of the CIP application (rather than the parent application), prior art that was published more than one year before the CIP filing date can be used to reject the claims, even if that prior art would not have been applicable to the parent application. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Prior Art Disclosing Invention Before Filing Date Bars Patent Issuance for CIP MPEP 2133.01 Prior Art Disclosing Invention Bars Patent Issuance MPEP 2133.01 Obvious Variant Prior Art Bars Patentability MPEP 2133 Effective Filing Date Determined Claim-by-Claim MPEP 2133.01 Claims Must Be Fully Supported by Parent Application MPEP 2133.01 Requirement for Novelty Under Pre-AIA 35 U.S.C. 102(b) MPEP 2133 Required Claims Must Be Supported by Parent Application MPEP 2133.01 Child CIP Effective Date When No Parent Support MPEP 2133.01 FITF Provisions Not Applicable to CIP Rejections MPEP 2133.01 Rule Not Applicable to FITF Applications MPEP 2133 Other Related FAQs 5 FAQs Collapse How does the AIA (America Invents Act) affect the treatment of CIP applications? How do examiners determine which claims in a CIP application are entitled to the parent application&#8217;s filing date? How is the...