2

I was wondering whats considered a prior art when dealing with a continuing application?

From reading online, once a continuing application is approved, it receives the allowance date of the original patent. So for example if the parent patent was filled in 2014 and approved in May 2018, and In January 2018 I am filing for a continuing patent and its also being approved, it will get the allowance date of 2014.

But what about prior art that was created between 2014 and January 2018, can they be considered against me? or the examiner treats this application as if it was filled in 2014? which doesn't make sense to me, but so is the fact that continuing application gets the parent patent issuance date.

Thank you

Improve this question

2 Answers 2

Reset to default
3

Continuous application receive the priority date from first filed application but not the allowance date.

To receive the priority from first application you need to file continuous application before a patent gets granted, if you wish to file after the patent has granted then you would loose the opportunity.

In the question you have asked if a patent was granted in 2014 if you wish to file new application in 2018 it's not possible of you have not filed an application before a patent has been granted.

Regarding the technology development between 2014_2018 it is not available for invalidate your patent as or would not satisfy the requirements of priority date. And most importantly you can't add new material to your patent and claim priority from prior application, the subject matter should be the same disclosed in first application.

Improve this answer
4
  • You are right, I will correct my question. If the original patent was filled in 2014 and granted in may 2018, but the continuing application wad filled in January 2018, does art created between 2014- January 2018, will be considered a prior art?
    – user21874
    Feb 27, 2019 at 16:28
  • Let me clarify myself even more. The subject is the same, but the implementation is different. If I filed for example a patent that only refers to PC, and in my continuing application (which is filled 3 years later) Im adding also Mobile implementation. If someone during those 3 years cloned parts of my patent on mobile phones, can this be considered a prior art that would prevent me from expending my patent to mobile phones?
    – user21874
    Feb 27, 2019 at 16:35
  • You cannot introduce new matter, but claim different matter that was already present in the application. US supports Continuation in part (CIP) applications permits a patent applicant to add new subject matter to the existing disclosure of the parent application while retaining the priority date for claims based on the original disclosure, but claims that include subject matter that is first disclosed in the CIP application are entitled only to the filing date of the CIP application.
    – RishiM
    Feb 28, 2019 at 2:24
  • So from your answer I understand that the example I've given , does not stand in the test of "same matter"?, as I did saw a continuing application trying to "extend" from PC to a "any device". Would you say that this does not stand at the test of "same matter" (of-course considering the limited information I have given you)
    – user21874
    Feb 28, 2019 at 10:48
0

There is no "expanding" in a (straight) continuation application. If you think the second application will claim something that could not have been claimed in the parent application, then you should file it as a CIP. Claims in a CIP that are fully supported in the parent will be looked at regarding prior art as of the date of the parent's filing date. Anything else will regard prior art using the second application's filing date. If you have already filed the "continuation" application you should change it to a CIP or amend out any new matter.

Improve this answer

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .