Can subject matter from a parent application be used as prior art against a continuation-in-part (CIP) under pre-AIA 35 U.S.C. 102(e)?
Subject matter that is disclosed in a parent application but not included in a child continuation-in-part (CIP) cannot be used as prior art under pre-AIA 35 U.S.C. 102(e) against the CIP. The MPEP cites a specific case law example: “In re Lund, 376 F.2d 982, 153 USPQ 625 (CCPA 1967) (The examiner made a pre-AIA…
Read MoreCan a parent application be used as prior art against a CIP application?
Yes, a parent application can be used as prior art against claims in a Continuation-In-Part (CIP) application that are not fully supported by the parent application. This situation is addressed in MPEP 2133.01, which cites a relevant case: “See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent…
Read MoreHow does the filing date of a U.S. parent application affect the pre-AIA 35 U.S.C. 102(e) date in a continuing application?
The filing date of a U.S. parent application can be used as the pre-AIA 35 U.S.C. 102(e) date in a continuing application, but only if certain conditions are met. The MPEP states: “For prior art purposes, a U.S. patent or patent application publication that claims the benefit of an earlier filing date under 35 U.S.C.…
Read MoreWhat is the effective filing date for claims in a continuation-in-part application?
The effective filing date for claims in a continuation-in-part (CIP) application depends on whether the claims are supported by the parent application: “If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an…
Read MoreHow do examiners determine which claims in a CIP application are entitled to the parent application’s filing date?
Examiners must carefully analyze each claim in a Continuation-In-Part (CIP) application to determine which are entitled to the parent application’s filing date. The MPEP 2133.01 provides guidance: “If an application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of…
Read MoreDoes a restriction requirement in a parent application carry over to a continuation application?
No, a restriction requirement made in a parent application does not automatically carry over to a continuation, continuation-in-part (CIP), or divisional application. The MPEP 819 cites a Federal Circuit decision: “See Bristol-Myers Squibb Co. v. Pharmachemie BV, 361 F.3d 1343, 1348, 70 USPQ2d 1097, 1100 (Fed. Cir. 2004) (An original restriction requirement in an earlier…
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 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…
Read MoreWhat happens to pending claims in a continuation application if the parent application is abandoned?
What happens to pending claims in a continuation application if the parent application is abandoned? The abandonment of a parent application does not necessarily affect the pending claims in a continuation application. According to MPEP 711.02(b): “The abandonment of a parent application does not affect the status of a continuation application or a continuation-in-part application…
Read MoreWhat happens to cited references in continuation applications?
For continuation applications, the treatment of cited references differs from new applications. According to MPEP 707.05(a): Additionally, copies of references cited in continuation applications if they had been previously cited in the parent application are not furnished. However, if no new art is cited in the continuation application, the MPEP states: In the rare instance…
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