1

Given the following scenario: A patent issued to me is a prior art to patent filed by another company – I have the priority date. I can easily invalidate their patent but it does not mean that uses of their “patent” are infringing on my patent – since the claims are not worded in such way, since the examiner forced incorporation of dependent claims.

Since I filed continuations/CIPs based on the previous specifications (prior art to the other company “patent”) I can now file a continuation to my past patents, and based on the “old” specification, will include claims that will make uses of their “patent” infringing on that claim – my patents. Will this work?

0

Yes - but focus on their product not necessarily their claims. If you have a live application type can either amend claims or file a continuation and craft claims that are both supported by your original application and read clearly on their product. It is products that infringe, not claims.

| improve this answer | |
  • 1
    I fully understand what you say - I need this continuation filing because the design suggested by their patent is used in a certain product which is not infringing on my current claims. Thanks for verifying my thoughts. – Moti Feb 29 at 7:50

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.