How does the filing date of a U.S. parent application affect the pre-AIA 35 U.S.C. 102(e) date in a continuing application?
The filing date of a U.S. parent application can be used as the pre-AIA 35 U.S.C. 102(e) date in a continuing application, but only if certain conditions are met. The MPEP states:
“For prior art purposes, a U.S. patent or patent application publication that claims the benefit of an earlier filing date under 35 U.S.C. 120 of a prior nonprovisional application (i.e., a continuation, divisional, or continuation-in-part application) would be accorded the earlier filing date as its prior art date under pre-AIA 35 U.S.C. 102(e), provided the earlier-filed application properly supports the subject matter relied upon in any rejection in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.”
Key points to remember:
- The continuing application must properly claim the benefit of the earlier filing date under 35 U.S.C. 120.
- The subject matter used in the rejection must be disclosed in the earlier-filed application in compliance with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
- If these conditions are met, the filing date of the parent application can be used as the pre-AIA 35 U.S.C. 102(e) date for prior art purposes.
This provision allows for the earlier filing date of a parent application to be used in determining the prior art effect of a continuing application, potentially making it available as prior art earlier than its actual filing date.
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