Can a claim be revived after an interference judgment?
Generally, a claim that has been subject to an adverse interference judgment cannot be revived in its current form. The MPEP 2308.01 is clear on this point: “Judgment against a claim in an interference, including any judgment on priority or patentability, finally disposes of the claim.” This finality means that the claim, as judged in…
Read MoreHow is the effective filing date determined for continuation and divisional applications?
For continuation and divisional applications, the effective filing date is determined as follows: If the application is a continuation or divisional of one or more earlier U.S. applications or international applications and if the requirements of 35 U.S.C. 120, 365(c), or 386(c) have been satisfied, the effective filing date of a claimed invention is the…
Read MoreHow is the effective filing date determined for a continuation or divisional application?
For continuation or divisional applications, the effective filing date is determined as follows: “If the application is a continuation or divisional of one or more earlier U.S. applications or international applications and if the requirements of 35 U.S.C. 120 or 365(c) have been satisfied, the effective filing date of the claimed invention is the same…
Read MoreHow is the effective filing date determined for continuation applications?
For continuation applications, the effective filing date is generally determined based on the earliest application in the chain that supports the claimed invention. The MPEP 2152.01 provides guidance on this: “In the case of a continuation application, continuation-in-part application, or divisional application claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121,…
Read MoreDoes a restriction requirement in a parent application carry over to a continuation application?
No, a restriction requirement made in a parent application does not automatically carry over to a continuation, continuation-in-part (CIP), or divisional application. The MPEP 819 cites a Federal Circuit decision: “See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004) (An original restriction requirement in an earlier…
Read MoreWhat should I do if I decide to refile my application as a continuation while an appeal is pending?
If you decide to refile your application as a continuation while an appeal is pending, it’s crucial to inform the USPTO promptly. The MPEP advises: “To avoid the rendering of decisions by the Board in applications which have already been refiled as continuations, applicants should promptly inform the Clerk of the Board in writing as…
Read MoreHow should appellants inform the Board about abandoning an appeal or filing an RCE?
Appellants who decide to abandon their appeal, file a request for continued examination (RCE), or refile their application as a continuation should promptly inform the Clerk of the Board in writing. The MPEP provides guidance on this in MPEP 1210: “To avoid the rendering of decisions by the Board in applications which appellants have decided…
Read MoreHow do continuation and divisional applications affect design patent disclosure?
Continuation and divisional applications in design patents must adhere to the disclosure requirements outlined in MPEP 1504.04. The key principle is that these applications cannot introduce new matter. The MPEP states: “The test for sufficiency of the written description is the same for design and utility patents.” This means: Continuation applications must be fully supported…
Read MoreCan a claim lost in interference be reinstated or modified instead of cancelled?
While MPEP 1302.04(d) briefly mentions “Cancellation of Claim Lost in Interference [R-08.2012] See MPEP Chapter 2300“, it doesn’t provide details on alternatives to cancellation. However, based on the practices outlined in MPEP Chapter 2300, there are some potential alternatives to outright cancellation: Modification: In some cases, the applicant may be able to modify the lost…
Read MoreWhat happens to pending claims in a continuation application if the parent application is abandoned?
What happens to pending claims in a continuation application if the parent application is abandoned? The abandonment of a parent application does not necessarily affect the pending claims in a continuation application. According to MPEP 711.02(b): “The abandonment of a parent application does not affect the status of a continuation application or a continuation-in-part application…
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