What is the purpose of filing a divisional application during an interference?
Filing a divisional application during an interference can serve as a strategic move to manage claims that may be affected by the interference while allowing other claims to proceed. The MPEP 2307.03 suggests this approach as a way to minimize the impact of suspension on patent term adjustment: “The applicant may then file a divisional…
Read MoreHow can I protect designs cancelled from an international design application due to a restriction requirement?
Designs cancelled from a nonprovisional international design application as a result of a restriction requirement can be protected through the filing of divisional applications. These divisional applications can be filed in two ways: As a design application under 35 U.S.C. chapter 16, or As an international design application designating the United States According to MPEP…
Read MoreHow can the impact of suspension on patent term adjustment be minimized?
To minimize the impact of suspension on patent term adjustment during an interference proceeding, the MPEP 2307.03 suggests considering certain steps. Specifically, it states: “Steps should be considered to minimize the effect of any patent term adjustment that would result from the suspension.” One strategy outlined in the MPEP is to use restriction requirements: “For…
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 MoreWhat is the purpose of submitting certain double patenting rejections to the Technology Center Director?
The purpose of submitting certain double patenting rejections to the Technology Center Director is to promote uniform practice in the examination process. Specifically, “every Office action containing a rejection on the ground of nonstatutory double patenting which relies on the parent application to reject the claims in a divisional application where the divisional application was…
Read MoreCan 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…
Read MoreHow does a restriction requirement affect double patenting rejections in divisional applications?
A restriction requirement can provide protection against double patenting rejections in certain divisional applications. The MPEP clarifies: “Where an applicant files a divisional application claiming a species previously claimed but nonelected in the parent case pursuant to and consonant with a requirement to restrict, a double patenting rejection of the species claim(s) would be prohibited…
Read MoreWhat is the prohibition of nonstatutory double patenting rejections under 35 U.S.C. 121?
The prohibition of nonstatutory double patenting rejections under 35 U.S.C. 121 is a legal provision that prevents the use of a patent issuing from an application with a restriction requirement as a reference against a divisional application in a nonstatutory double patenting rejection. This protection applies only when: The Office has made a requirement for…
Read MoreWhat options do I have if my new claims are withdrawn due to election by original presentation?
If your new claims are withdrawn due to election by original presentation, you have several options: Request reconsideration: You can argue that the new claims are not directed to a different invention and request that the examiner reconsider the withdrawal. File a divisional application: You can pursue the new claims in a separate divisional application.…
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