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…
Read MoreWhat is the relationship between priority claims and the written description requirement?
Priority claims, whether under 35 U.S.C. 119 or 35 U.S.C. 120, are closely tied to the written description requirement. According to MPEP 2163.03: “Under 35 U.S.C. 119(a) or (e), the claims in a U.S. application are entitled to the benefit of a foreign priority date or the filing date of a provisional application if the…
Read MoreCan an inventor change what they regard as their invention during patent prosecution?
Yes, an inventor or joint inventor can change what they regard as their invention during the pendency of a patent application. MPEP 2172 states: “35 U.S.C. 112(b) or the second paragraph of pre-AIA 35 U.S.C. 112 does not prohibit the inventor or a joint inventor from changing what inventor or a joint inventor regards as…
Read MoreWhat 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…
Read MoreHow does the best mode requirement affect continuation applications?
The best mode requirement’s impact on continuation applications has been modified by the America Invents Act (AIA). According to MPEP 2165: Pre-AIA, the best mode had to be disclosed in the earlier-filed application for the continuation to claim its benefit date. Post-AIA, the best mode requirement is no longer a condition for receiving the benefit…
Read MoreHow 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…
Read MoreWhat 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…
Read MoreHow 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…
Read MoreShould 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…
Read MoreHow 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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