Does 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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Can I file a continuing application based on an international design application?

Yes, you can file a continuing application based on an international design application that designates the United States. The MPEP 2920 states: “An applicant may file a continuing application that claims priority to an international design application designating the United States in accordance with 35 U.S.C. 386(c).” This means that you can file continuation, divisional,…

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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…

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How 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…

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When 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…

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What is a “bypass” application in the context of PCT applications?

A “bypass” application refers to the filing of a continuation, divisional, or continuation-in-part application of a PCT application designating the United States. This is based on the provisions of U.S. patent law, specifically 35 U.S.C. 363 and 35 U.S.C. 365(c). As stated in the MPEP, “The filing of a continuation, divisional, or continuation-in-part application of…

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Can an applicant retroactively obtain 35 U.S.C. 121 safe harbor protection?

No, an applicant cannot retroactively obtain the safe harbor protection of 35 U.S.C. 121 against nonstatutory double patenting. The MPEP clearly states: “A patentee cannot retroactively recover the safe harbor protection of 35 U.S.C. 121 against nonstatutory double patenting by amending a patent that issued from a continuation-in-part application to only subject matter in the…

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How 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…

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