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   My Own Prior Art
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Larry D.
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My Own Prior Art
« on: Apr 30th, 2007, 3:14pm »
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I have a question.   I know that if I file a patent application and it gets published, anything in the application will be held against me.   But I can overcome anything within a year because it is not by another inventor.  After a year I am out of luck right?
 
I wanted to file a divisional application from a applicantion that was published over 3 years ago.  This cannot be done correct?
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Isaac
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Re: My Own Prior Art
« Reply #1 on: Apr 30th, 2007, 3:30pm »
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on Apr 30th, 2007, 3:14pm, Larry D. wrote:
I wanted to file a divisional application from a applicantion that was published over 3 years ago.  This cannot be done correct?

 
A divisional application claims priority from a parent, and claims only inventions disclosed and fully supported by the parent application and inherents the parents effective filing date.   The divisional (and any other type of continuation) must be filed during the pendency of its parent.  For a true divisional, the parent applicaton cannot be applied in an art rejection against the divisional even under 102(b).  
 
In cases where the divisional contains a non-elected invention restricted from the parent application by the PTO, a non-statutory double patenting rejection (the most likely kind in this situation) is either not applicable or may be overcome with a terminal disclaimer.   If your divisional is completely voluntary (that is your divisional is really a continuation) then the terminal disclaimer is your only out.   If your filing is actually a CIP, then the analysis is more complicated.
 
If you are truly filing a divisional, the published status of the parent application should not be an insurmountable obstacle.  
 
At least those things are true under the current rules.  Rumor has it that the PTO will be promulgating some new continuation rules early this summer, and the draft rules changes limiting continuations were to be retroactive...
 
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Isaac
Larry D.
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Re: My Own Prior Art
« Reply #2 on: Apr 30th, 2007, 3:49pm »
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thank you.   does this also mean that if I file a proper divisional that the divisional gets published 18 months from the priority date or the filing date of the divisional?
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Isaac
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Re: My Own Prior Art
« Reply #3 on: Apr 30th, 2007, 4:09pm »
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on Apr 30th, 2007, 3:49pm, Larry D. wrote:
thank you.   does this also mean that if I file a proper divisional that the divisional gets published 18 months from the priority date or the filing date of the divisional?

 
Publication schedule is based on the priority date.
 
From 35 USC 122(b)(1)(A)
 
(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures determined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an application may be published earlier than the end of such 18-month period.
 
 
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Isaac
Patent Attorney
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Re: My Own Prior Art
« Reply #4 on: May 7th, 2007, 10:32am »
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I have found that examiners are applying double patenting rejections in situations where the reference qualifies as prior art under 102(b).  I have never heard of this before.  Is this legit?
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