What is the impact of continuation-in-part applications on effective filing dates?
Continuation-in-part (CIP) applications can have a significant impact on effective filing dates. According to MPEP 2154.01(b): The AIA draws a distinction between actually filed and effectively filed dates. The “effectively filed” date of a subject matter described in a U.S. patent document is the earlier of: (1) The actual filing date of the patent or…
Read MoreHow does a continuation-in-part application affect the “by another” determination under pre-AIA 35 U.S.C. 102(e)?
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…
Read MoreHow does the AIA (America Invents Act) affect the treatment of CIP applications?
The America Invents Act (AIA) significantly changed the treatment of Continuation-In-Part (CIP) applications for patents filed on or after March 16, 2013. The MPEP 2133.01 notes: “[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35…
Read MoreWhen can a continuation-in-part (CIP) application be filed for a PCT application?
A continuation-in-part (CIP) application can be filed for a PCT application designating the United States during its pendency, before abandonment. However, it’s important to note that CIP applications are typically filed when applicants need to add new matter to the disclosure. The MPEP states: “Continuation-in-part applications are generally filed in instances where applicants seek to…
Read MoreHow does foreign priority affect benefit claims under 35 U.S.C. 120 in continuation-in-part (CIP) design applications?
Foreign priority can significantly affect benefit claims under 35 U.S.C. 120 in continuation-in-part (CIP) design applications, especially when the conditions of 35 U.S.C. 120 are not met: If the CIP application doesn’t meet the conditions of 35 U.S.C. 120 (e.g., insufficient disclosure), it’s not entitled to the benefit of the parent application’s filing date. In…
Read MoreHow does a continuation-in-part (CIP) application affect benefit claims under 35 U.S.C. 120 for design patents?
A continuation-in-part (CIP) application can affect benefit claims under 35 U.S.C. 120 for design patents in the following ways: The claimed design in a CIP application must be disclosed in the original application to be entitled to the benefit of the earlier filing date. If the design in the CIP is not fully disclosed in…
Read MoreHow are continuation-in-part (CIP) applications handled in terms of examination order?
Continuation-in-part (CIP) applications have a unique treatment when it comes to examination order. The MPEP provides guidance on this: “The actual filing date of a continuation-in-part application is used for docketing purposes. However, the examiner may act on a continuation-in-part application by using the effective filing date, if desired.” This means that while CIP applications…
Read MoreCan a continuation-in-part (CIP) application claim the benefit of a prior application’s filing date?
A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations: Only the subject matter common to both the CIP and the prior application can claim the earlier filing date. New matter introduced in the CIP will have the filing date of the CIP application. Each claim in…
Read MoreCan a continuation-in-part application claim benefit from multiple parent applications?
Yes, a continuation-in-part (CIP) application can claim benefit from multiple parent applications. The MPEP 201.08 states: An applicant may in a single application seek to add and claim new matter while also repeating some or all of the subject matter of one or more earlier applications. This means: A CIP can incorporate subject matter from…
Read MoreHow does a continuation-in-part (CIP) application affect priority claims?
How does a continuation-in-part (CIP) application affect priority claims? A continuation-in-part (CIP) application introduces new matter not present in the prior application, which affects priority claims as follows: Claims fully supported by the prior application retain the benefit of the earlier filing date. Claims relying on new matter only receive the filing date of the…
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