What is prosecution laches in patent law?

Prosecution laches is a legal doctrine that can result in the forfeiture of patent rights due to unreasonable and undue delay in prosecution. The Federal Circuit affirmed this principle in In re Bogese, stating: “[Applicant] filed twelve continuation applications over an eight-year period and did not substantively advance prosecution when required and given an opportunity…

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What is the examiner’s responsibility regarding prior art in continuation, divisional, or continuation-in-part applications?

When an application under examination is identified as a continuation, divisional, or continuation-in-part of an earlier application, the examiner has specific responsibilities regarding prior art. According to MPEP 2001.06(b): “If the application under examination is identified as a continuation, divisional, or continuation-in-part of an earlier application, the examiner will consider the prior art properly cited…

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How does the USPTO handle the classification of continuation and divisional applications?

The USPTO’s automated routing system takes into account the status of applications as continuations or divisionals when assigning them to examiners. According to MPEP 909.01(b): “Additional factors, such as […] the application’s status as a continuation or divisional application are weighted by the automated system prior to assignment of the application.” This consideration is important…

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What are the requirements for claiming benefit under 35 U.S.C. 120 in a design patent application?

To claim benefit under 35 U.S.C. 120 in a design patent application, the following requirements must be met: The later-filed application must contain a reference to the prior-filed copending application. For applications filed on or after September 16, 2012, the specific reference must be in the application data sheet (37 CFR 1.76). For applications filed…

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How are references handled in continuation applications?

In continuation applications, the handling of references is crucial, especially when significant prior art is on record in the parent case. MPEP 1302.12 provides guidance on this matter: In the rare instance where no art is cited in a continuation application, all the references cited during the prosecution of the parent application will be listed…

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Should applicants file preliminary amendments with their patent applications?

The USPTO generally advises against filing preliminary amendments with patent applications. According to MPEP 1121: “Applicants should not file any preliminary amendment with the application. Submitting applications without any accompanying preliminary amendment reduces the processing required of the Office, and will help to ensure that patent application publications are printed correctly.” Instead of filing preliminary…

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How does express abandonment affect continuation applications?

How does express abandonment affect continuation applications? Express abandonment of a parent application can have significant implications for continuation applications. According to MPEP 711.01: ‘Applicants and their attorneys should be careful not to expressly abandon applications that are the parents of continuation applications where the parent application is to be abandoned in favor of the…

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