How does the waiver of patent rights in a SIR affect related applications?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The waiver of patent rights in a SIR can significantly affect related applications:

• The waiver takes effect on publication of the SIR.
• It may affect the patentability of claims in related applications without SIR requests, such as divisional or other continuing applications.
• The waiver is effective for all inventions claimed in the SIR.
• It waives the right to obtain a patent on the same invention claimed in any other application not issued before the publication date of the SIR.

The MPEP advises: Examiners should apply standards similar to those applied in making “same invention” double patenting determinations to determine whether a waiver by an inventor to claims in a SIR precludes patenting by the same inventor to subject matter in any related application.