4
votes
Accepted
Repeating claims in a CIP that are identical to those in the parent application or granted parent patent
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 ...
- 28.6k
4
votes
Accepted
Adding useful and unobvious functionality to existing patent
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.
...
- 6,178
3
votes
Accepted
Do terminal disclaimers (TDs) inherit estoppel/disclaimers from TD "family"?
"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 ...
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2
votes
Accepted
Risks of splitting invention into multiple patents?
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 ...
- 6,178
2
votes
Does a CIP IDS require a copy of the parent US application?
The IDS does not need to list any U.S. applications that are claimed as priority applications. It should list everything listed on the IDSs on all previous applications or cited against them.
You do ...
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2
votes
Accepted
Will a request for expedited examination of a CIP force an office action on a languishing parent application?
Making B or C special due to age will not change the course of A at all. If there are a few claims in A that you would really like examined quickly you could include them in an expedited B (if a CIP) ...
- 28.6k
2
votes
Accepted
Can I bring the content from parent provisional application to a continuation?
Since the provisional was incorporated by reference, you can amend in any material from it that you like. And a continuation that only has material from the provisional + the parent will not need to ...
- 28.6k
2
votes
Accepted
When exactly your own disclosures will be used as prior art against you?
There are no continuations in part at the EPO. At the EPO you only have patent applications, and divisionals of patent applications. Divisionals have the same disclosure of the parent application or a ...
- 2,274
2
votes
Accepted
Effects on continuation-in-part of now-abandoned patent
USD621102 is a granted design patent. The abandoned parent application was a utility patent application. The abandonment of the parent is not, Itself, relevant to the child CIP.
Design patents are ...
- 28.6k
2
votes
Accepted
What does the name "continuation in part" mean?
It has two parts: one part is fully supported by the parent and a second part that is new matter. Not fully, but In part it’s a continuation.
- 28.6k
1
vote
Claiming priority in EPO from a US Continuation/CIP Patent Applicaiton?
No, the Paris Convention is clear that the priority claim must be based on the first-filed application on the subject matter.
Almost no other locations even have plain continuations and CIPs are ...
- 28.6k
1
vote
Can I restore material from a parent application deleted in an intervening CIP and not lose the parent’s priority?
Yes
Since the content you need is in an application that is pending the new application can get the info directly, there is no intervening application. Just claim priority to the parent and forget the ...
- 28.6k
1
vote
Co-inventorship when claims based on the contributing inventor's concepts are dropped during prosecution
It isn’t moot - it would be positively improper to add them. In the U.S. an inventor is someone who makes a conceptual contribution to something in a claim. Someone might be an inventor in a ...
- 28.6k
1
vote
Describing your own prior art in specs for a CIP
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 ...
- 28.6k
1
vote
Docket numbers of CIPs with electronic filing
A docket number is just a way for someone who files many many applications to refer to them in their own database. Some practitioners might use the number if the parent with “-CIP” appended. A ...
- 28.6k
1
vote
Accepted
Can a CIP claim priority to a provisional application filed after the parent non-provisional?
Yes
I suggest -
"This application is a continuation-in-part of co-pending application ZZ/YYYYY filed on ZZ/Z/ZZZZ and claims the benefit of provisional application XX/YYYYY filed on XX/X/XXXX."
- 28.6k
1
vote
Accepted
Continuation in part to overcome concerns of undue experimentation
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 ...
- 28.6k
1
vote
Format of Continuation-In-Part Specification and Claims
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 ...
- 6,178
1
vote
Accepted
Broader claim for a Provisional application after non-provisional application - same invention
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 ...
- 271
1
vote
Broader claim for a Provisional application after non-provisional application - same invention
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 ...
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