Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Adjustments (1)
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
And Extensions (1)
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
MPEP 2100 – Patentability (3)
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
To learn more:
MPEP 2133.01 – Rejections Of Continuation – In – Part (Cip) Applications (1)
Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
To learn more:
MPEP 2136.02 – Content Of The Prior Art Available Against The Claims (1)
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
MPEP 2136.04 – Different Inventive Entity; Meaning Of "By Another" (1)
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
MPEP 2700 – Patent Terms (1)
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
MPEP 2732 – Reduction Of Period Of Adjustment Of Patent Term (1)
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
Patent Law (4)
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
To learn more:
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more:
Patent Procedure (4)
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example:
“In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection over an issued U.S. patent which was a continuation-in-part (CIP). The parent application of the U.S. patent reference contained an example II which was not carried over to the CIP. The court held that the subject matter embodied in the canceled example II could not be relied on as of either parent or child filing date. Thus, the use of example II subject matter to reject the claims under pre-AIA 35 U.S.C. 102(e) was improper.).”
This means that only the content actually present in the CIP can be used as prior art under 102(e), not additional content from the parent application that wasn’t carried over.
To learn more:
A continuation-in-part (CIP) application with an additional inventor can still be considered “by another” under pre-AIA 35 U.S.C. 102(e). The MPEP provides an example in MPEP 2136.04:
“Ex parte DesOrmeaux, 25 USPQ2d 2040 (Bd. Pat. App. & Inter. 1992) (The examiner made a pre-AIA 35 U.S.C. 102(e) rejection based on an issued U.S. patent to three inventors. The rejected application was a continuation-in-part of the issued parent with an extra inventor. The Board found that the patent was ‘by another’ and thus could be used in a pre-AIA 35 U.S.C. 102(e) / 103 rejection of the application.).”
This means that even if a CIP application shares inventors with its parent patent, the addition of a new inventor makes the inventive entities different, allowing the parent patent to be used as prior art against the CIP under pre-AIA 35 U.S.C. 102(e).
To learn more:
Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case:
“See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application).”
This means that if a claim in the CIP application includes new matter not disclosed in the parent application, the parent application (or a patent issued from it) can potentially be used as prior art against that claim. This underscores the importance of carefully considering the content and timing of CIP filings.
To learn more:
Filing a continuing application can significantly impact patent term adjustment. According to 37 CFR 1.704(c)(14):
“Further prosecution via a continuing application, in which case the period of adjustment set forth in 37 CFR 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.”
This means:
- Any patent term adjustment accrued in a parent application does not carry over to a continuing application.
- The patent term adjustment calculation for a continuing application starts from its actual filing date, not the filing date of the parent application.
- This applies to continuation applications, divisional applications, and continuation-in-part applications.
The MPEP explains the rationale: “If an applicant is filing a continuing application to obtain examination (for the first time) of an invention disclosed but not claimed or not elected for examination in the prior application or an invention neither disclosed nor claimed in the prior application, it is not appropriate for that applicant to obtain any benefit in the continuing application for examination delays that might have occurred in the prior application.”
This provision encourages applicants to pursue their inventions diligently in the original application rather than relying on continuing applications to extend patent term.
To learn more: