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?


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.

  • 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 '20 at 7:50

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