The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
May 20th, 2019, 5:52am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Improvement Patents
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Parent patent app. a 102(b) ref. to a CIP?
« Previous topic | Next topic »
Pages: 1  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Parent patent app. a 102(b) ref. to a CIP?  (Read 2065 times)
jdpeters54
Newbie
*




   


Posts: 1
Parent patent app. a 102(b) ref. to a CIP?
« on: Oct 6th, 2005, 4:53pm »
Quote Quote Modify Modify

If you file a continuation-in-part application having new matter, can the publication of the parent application be considered prior art under 35 USC 102(b) such that the parent patent application publication can be used in a obviousness rejection under 35 USC 103?  It would seen to me that as you are claiming priority to the parent application (and therfore have the same term as the parent), you should be entitled not have what was disclosed by you in the parent be used as prior art against you. Otherwise, why would you file a CIP and not just file an new application?
IP Logged
Isaac
Senior Member
****




   


Posts: 3472
Re: Parent patent app. a 102(b) ref. to a CIP?
« Reply #1 on: Oct 6th, 2005, 6:34pm »
Quote Quote Modify Modify

It's important to note that priority in a CIP is on a claim by claim
basis.  Claims that rely on the added subject matter do not get the
benefit of priority.
 
As for your question about the reasons for filing a CIP.  It's sometimes
the case that filing a CIP provides no useful benefit in priority, and
at the same time results in a shortened patent term.  In those
cases, it may not make sense to file a CIP.  OTOH a CIP does
keep a copending continuation around.
IP Logged

Isaac
Jake Blackmoore
Guest
Re: Parent patent app. a 102(b) ref. to a CIP?
« Reply #2 on: Nov 26th, 2006, 9:42pm »
Quote Quote Modify Modify Remove Remove

Just to follow up on this thread, can the published application of the parent patent be used to reject claims on the CIP under 103?
IP Logged
Pages: 1  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board