Podcast #128: We chat with Kent C Dodds about why he loves React and discuss what life was like in the dark days before Git. Listen now.
5

Would Bob need to obtain permission from Alice to use her patent? Yes, in the countries that Alice has a patent, Bob would need to obtain a licence before he could manufacture and sell his product. Would the practical result [of publication by Alice mean that the improvement] can no longer be patented by Bob? Yes, assuming it is sufficiently detailed so ...


4

You include the claims you haven't yet claimed and want to claim. You can't have the same claim word-for-word in more than one patent. It would be double patenting. If you didn't care about making claims that are fully supported in the parent, you would not file a CIP, but rather a "new" application with no connection to the previous application. A CIP is ...


3

"Disparaging" prior art does not automatically disclaim scope. Previously it was good practice to characterize prior art for its strengths and weaknesses - particularly weaknesses. Then some judges decided to read the specification into the claims and say that the the inventor must have meant to only claim less than was claimed. Another problem with ...


3

This is opinion, as I'm not aware of any empirical way to measure this. I would suggest that scenario B should always be used. Assuming you have two separable inventions, then it makes sense that you would want to protect them separately, with separate description and claims, in order to maximise the scope of your protection. If they are described together,...


2

The MPEP contains the rules governing a continuation-in-part. Refer to Section 201.08 Continuation-in-Part Application [R-11.2013]. What differentiates a Continuation from a Continuation-in-Part is the inclusion of Paragraph 2.06: Possible Status as Continuation-in-Part. This is an indication that your Continuing Patent Application contains information not ...


2

It's been awhile since I did this, but IIRC (if I recall correctly ), one may file a CIP at any time during pendency of the original non-provisional and its descendents, which is the only way to "add new material" to an application already filed. The new material in a CIP only gets priority of the CIP filing date unless it cites one or more non-expired ...


2

The second one (US9613446) is a continuation of the first one. IF you look at the claims, the second one claims a method and a computer program product while the first one claims a computer, so they have complementary scope of protection. Maybe the attorneys were not sure about claiming the software parts and the computer in a single patent. (Or any other ...


1

Explaining the new applications relationship to a previous application of yours is much more likely to hurt than help. It would be cited in the first sentence of the application as "The current application is a continuation-in-part of U.S. application XYZ, dated XYZ." Note - the term "prior art is very loaded. Prior Art == something they can use against a ...


1

Yes - Whether a CIP or a straight continuation, you can add the new material BUT in both cases you effectively loose the original priority date. A way to have your cake and eat it too would be to pursue both applications. In that case would file the CIP after the allowance on the parent - but before the grant date. Examiners do not usually reject for lack ...


1

By way of preface, I note that this answer only really applies to the US. No other country has continuations-in-part, and most countries don't allow incorporation by reference. I would suggest that your proposed strategy would not really be ideal, from a commercial point of view. In US practice, a drafter typically wants to "hide" the invention, by talking ...


1

Update: Turns out there was an earlier provisional, so this answer no longer applies. I've left it for posterity. Because the first non-provisional was filed less than a year ago, a simple approach would be to convert the non-provisional into a provisional application. This is allowed by 37 CFR § 1.53(c)(2), which provides: An application for patent ...


1

Everything you are looking for is in Section 2701. Any prior application the grant is based on, whether it was a continuation, divisional, or continuation-in-part is taken into account for the priority date. No term adjustments or extensions are allowed on grants from applications filed prior to June 8, 1995. The only other bit of information you should look ...


1

You can't really rewrite a patent application in a continuation. You're thinking of a continuation in part. This is a complex situation and one that a good patent lawyer can provide a lot of help with. You'll definitely want to move on this prior to publication. This is one where taking advice over the internet is not the way to go. Get a properly ...


1

you need to check if invention was identified in provisional or complete application as filed, if what you are thinking now is out of the scope then you have only option of CIP. I think drafter may have forgot to differentiate background and description, if yes then you could in a way improve specification via amendments. further these amendments should ...


1

To understand the File History of a patent or an application - (filed/granted in US) - follow the steps shown here (as of September 2015) 1 - Search for USPTO Public Pair 2 - Go to the page shown below Enter the captcha and press Continue 3 - Now enter the publication number-select that radio button and press Search 4 - Now select the tab that you want ...


Only top voted, non community-wiki answers of a minimum length are eligible