What is the significance of inventorship in continuation-in-part applications?

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.

Inventorship in continuation-in-part (CIP) applications has unique implications for prior art determination. The MPEP 2136.04 states:

“If the application is a continuation-in-part of, or claims the benefit of the filing date of, a parent application naming A as the inventor, and the parent application was filed by A with a claim that was originally invented by B, the parent application is ‘by another’ as to that claim.”

This means that in CIP applications, the inventorship of specific claims can affect whether the parent application qualifies as prior art under 35 U.S.C. 102(e). It’s crucial to carefully examine the inventorship of individual claims in these cases.