How do continuing applications affect patent term?
For continuing applications (continuations, divisionals, or continuations-in-part) filed on or after June 8, 1995, the patent term ends 20 years from the filing date of the earliest application to which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c). This is true even if the earlier application was filed before June 8, 1995.…
Read MoreHow do patent examiners handle prior art from parent applications in continuing applications?
When examining continuing applications, patent examiners must review the parent applications for pertinent prior art. The MPEP provides specific guidance on this matter: In all continuing applications, the parent applications must be reviewed by the examiner for pertinent prior art. The examiner must consider prior art which was cited and considered in the parent application.…
Read MoreHow does abandonment of a patent application affect priority claims?
Abandonment of a patent application can significantly affect priority claims, particularly for continuing applications. The MPEP 711.02 notes: “Where the application is abandoned after the close of prosecution as defined in MPEP § 711.03(c), the failure to take any necessary action prior to the expiration of the period for reply in the last Office action…
Read MoreCan non-elected inventions be recovered through a reissue application?
Generally, non-elected inventions cannot be recovered through a reissue application if the applicant failed to file a continuing application prior to the issuance of the original patent. According to MPEP 1412.01: “Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a…
Read MoreCan a design patent application claim benefit from a utility patent application under 35 U.S.C. 120?
Yes, a design patent application can claim benefit from a utility patent application under 35 U.S.C. 120, provided certain conditions are met: The design must be fully disclosed in the earlier utility application in compliance with 35 U.S.C. 112(a). The utility application must meet all the requirements for a proper benefit claim under 35 U.S.C.…
Read MoreDoes the 35 U.S.C. 121 safe harbor protection apply to all types of continuing applications?
No, the safe harbor protection of 35 U.S.C. 121 does not apply to all types of continuing applications. According to the MPEP, the Federal Circuit has concluded that: “The protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.“ This means…
Read MoreWhat is the difference between a continuation and a divisional application?
A continuation application and a divisional application are both types of continuing applications, but they serve different purposes: Continuation application: Used to pursue additional claims to an invention disclosed in a prior application. It contains the same disclosure as the parent application. Divisional application: Used to pursue claims to an invention that was disclosed but…
Read MoreWhat are the requirements for oaths or declarations in continuing applications filed on or after September 16, 2012?
For continuing applications filed on or after September 16, 2012, the following requirements apply: A copy of an oath or declaration or substitute statement from the prior nonprovisional application can be used, provided it complies with 37 CFR 1.63 or 37 CFR 1.64. The oath or declaration must comply with 35 U.S.C. 115 and the…
Read MoreHow does continuity relate to copendency in patent applications?
Continuity in patent applications refers to the relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The MPEP 211.01(b) states: “The term ‘continuity’ is used to express the relationship of copendency of the same subject matter in two different applications…
Read MoreWhat is copendency in patent applications?
Copendency refers to the requirement that a later-filed application claiming the benefit of a prior-filed nonprovisional application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application. As stated in MPEP 211.01(b): “If the prior application issues…
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