What is a Continuation-In-Part (CIP) application?
A Continuation-In-Part (CIP) application is a type of patent application that contains a portion or all of the disclosure of an earlier application and adds matter not disclosed in the earlier parent application. The new matter in a CIP application can be claimed, but it may affect the effective filing date of certain claims. According…
Read MoreWhat is the impact of prior art on CIP applications?
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…
Read MoreCan subject matter from a parent application be used as prior art against a continuation-in-part (CIP) under pre-AIA 35 U.S.C. 102(e)?
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…
Read MoreCan a parent application be used as prior art against a CIP application?
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…
Read MoreWhat is the significance of the one-year bar in relation to CIP applications?
The one-year bar is particularly significant for Continuation-In-Part (CIP) applications, especially for claims that are only supported by the CIP disclosure. 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…
Read MoreHow does new matter in a continuation-in-part (CIP) application affect the effective filing date?
New matter introduced in a continuation-in-part (CIP) application can significantly affect the effective filing date of certain claims. The MPEP 2152.01 provides guidance on this issue: “In the case of a continuation-in-part application, any claims that are fully supported by a prior-filed application are entitled to the benefit of the filing date of that prior-filed…
Read MoreWhat is the significance of inventorship in continuation-in-part applications?
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…
Read MoreWhat is the effective filing date for claims in a continuation-in-part application?
The effective filing date for claims in a continuation-in-part (CIP) application depends on whether the claims are supported by the parent application: “If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an…
Read MoreHow is the effective filing date determined for claims in a CIP application?
The effective filing date for claims in a Continuation-In-Part (CIP) application is determined on a claim-by-claim basis, not an application-by-application basis. This means that different claims within the same CIP application may have different effective filing dates. According to MPEP 2133.01: “Any claim that only contains subject matter that is fully supported in compliance with…
Read MoreDoes the duty of disclosure apply to continuation-in-part applications?
Yes, the duty of disclosure applies to continuation-in-part (CIP) applications. The MPEP specifically addresses this situation: “In a continuation-in-part application, individuals covered by 37 CFR 1.56 have a duty to disclose to the Office all information known to be material to patentability which became available between the filing date of the prior application and the…
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