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Author Topic: Help needed on Continuation-in-Part (CIP) processing..  (Read 883 times)

judasray

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Hi there,

I am a patent drafter. Recently, I have received a CIP case from my client. This would be the first time I'd be doing a CIP and I have a couple of questions regarding the same:

  • What is the structure of a CIP? Does it contain all of the sections (Background, Summary, Detailed Description, Drawings,  and Claims) that are normally included in a non-provisional patent application?

    Should the claims start-off with a dependent claim - dependent of the master claim of the parent application?

    Should the terminology of the CIP application be consistent be consistent with that of the parent application?

Thanks.

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khazzah

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Re: Help needed on Continuation-in-Part (CIP) processing..
« Reply #1 on: 07-19-11 at 06:26 am »

Should the claims start-off with a dependent claim - dependent of the master claim of the parent application?

Absolutely not. It's improper for a dependent claim to refer to a claim not present in the application.

You must be filing the CIP to capture some particular aspect of the invention. The claims in the CIP should be directed to that aspect, whatever it is.
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Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.

klaviernista

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Re: Help needed on Continuation-in-Part (CIP) processing..
« Reply #2 on: 07-19-11 at 01:40 pm »

    • What is the structure of a CIP? Does it contain all of the sections (Background, Summary, Detailed Description, Drawings,  and Claims) that are normally included in a non-provisional patent application?

      Should the claims start-off with a dependent claim - dependent of the master claim of the parent application?

      Should the terminology of the CIP application be consistent be consistent with that of the parent application?
    Structure is the same as a normal patent application, but with a different first sentence (i.e., "This application is a continuation in part of U.S. Application No. XX/YYY,ZZZ filed MM/DD/YYYY, which is [insert status].")

    Start with an independent claim

    Terminology should be consistent with the parent, to the extent possible.

    Good luck (to you, and your client).

    Best,

    Klav

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    This post is not legal advice.  I am not your attorney.  You rely on anything I say at your own risk. If you want to reach me directly, send me a PM through the board.  I do not check the email associated with my profile often.

    khazzah

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    Re: Help needed on Continuation-in-Part (CIP) processing..
    « Reply #3 on: 07-19-11 at 02:11 pm »

    I am a patent drafter. Recently, I have received a CIP case from my client.

    It sounds like your client made the decision to file CIP rather than a brand new app. I would ask for the rationale behind that decision. A CIP gives up term in return for ... an old priority date for claims directed to old matter? In that case, just file a straight continuation.

    We've discussed CIPs a lot on this forum, and I'd say the consensus is that CIPs make sense only in a few limited situations. I think CIPs are widely misunderstood. Though probably not as misunderstood as provisionals :-)
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    Karen Hazzah
    Patent Prosecution Blog
    http://allthingspros.blogspot.com/

    Information provided in this post is not legal advice and does not create any attorney-client relationship.
     



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