The Intellectual Property Forum

35 USC 154(d) states that provisional rights are available under 154(d) for issued patent claims which are substantially identical to claims in a "publication of the application for such patent" so long as several conditions are met (e.g. actual notice).

What about the case where the relevant claim issues in a continuation or divisional application and is substantially identical to a claim in the published parent application? In other words, can the the relevant claim be in an earlier published application that is an ancestor of the application that issued with the relevant claim?

The statute would seem to preclude that possibility, but I've seen several journal articles suggesting that the period can begin from publicaiton of an ancentor application and several recent complaints have used this approach.

I haven't found any relevant legal authority though.  Thoughts?

Thanks all for the responses - great stuff here.

At the end of the day, I think NJ Patent 1's most recent post summarizes the situation quite well.

I'll post here if any clarifying case law/etc. turns up.

Hey, I WANT you guys to be right, but have to consider how an opponent would argue.

What's odd to me about this situation is nobody I have talked to has actually run into it and I wish I could find just one statement somewhere (case law, MPEP, etc) other than 120 itself.

Consider the following 2 scenarios:
(1) continuation is filed with claims 1-10 of the parent and subsequently claims 1-10 are canceled and replaced by claim 11, the inventor of which is not an inventor of claims 1-10, thereby requiring deletion of all inventors under 1.48(b) and addition of new inventor under 1.48(c) (i.e. my original scenario); and
(2) continuation is filed with claim 11 and declaration lists only new inventor

In each case, the claim being pursued in each continuation is the same and there is ultimately no overlap of inventorship between the continuation and the parent; however, in the first case, but not the second, inventorship overlap was present at the time of filing.

bardencj - your reasoning would suggest that the second scenario should be fine because this is simply an example of the continuation claiming subject matter that was disclosed but not claimed in the parent.

But it doesn't seem like the second scenario would allow priority to the first since no inventorship overlap was present at the time of filing.  Indeed, the statement that "The grant or denial of a request under 37 CFR 1.48(a) may result in the lack of inventorship overlap between a parent application and a continuing application and the consequent inability to claim benefit in the continuing application of the parent application's filing date under 35 USC 120" certainly indicates that you can lose 120 priority to the parent application if no inventor overlap was present upon filing the continuation. 

Seems odd, no?

NJ Patent 1 - Exactly!  In such a case, you would have a parent and a continuation, each with an oath having not one inventor in common with the other since a new oath/declaration would have to be filed in the continuation to add the new inventor(s).  How can this possibly satisfy 120???

Hi,

We have the following situation which I hadn't previously encountered and cannot find a solid answer after much searching:

Application 1 is a nonprovisional with inventors A, B and C.

Application 2 is filed as a continuation of Application 1 (which has since issued as a patent), originally with the same claims as Application 1.  Applicants subsequently filed a preliminary amendment canceling all claims and replacing them with a single new claim.  As a result of the claim cancelations, inventors A, B and C are no longer inventors and were removed by petition.  A new inventor, inventor D, is added as he is the only inventor of the subject matter now claimed in Application 2.

Seems to me the priority claim is no longer valid since, as a result of the amendment, there are no longer any overlapping inventors with Application 1.  The only thing I was able to find in the MPEP is a narrow exception where Application 1 lists inventors A, B and C, but during prosecution a restriction requirement is issued and the Applicant elects an invention of which only inventors B and C are properly listed (inventor A is removed), and a divisional is then filed with invention 2, the inventor of which is only inventor A.  In this case, priority is maintained despite the parent and divisional having no inventors in common as the result of a restriction requirement.  On the other hand, the MPEP does warn that removing inventors may affect the priority claim...

So, my take on this is that the parent application needs to be filed with claims covering all the subject matter in the application.  That way, you are sure to be able to meet the 120 requirements for overlapping inventors for any continuing or divisional application filed off THAT parent application.  However, if, for whatever reason, you file a first divisional/continuation listing only a subset of the inventors originally listed on the parent, you would NOT be able to file a divisional/continuation off the first divisional unless there is at least one inventor in common with those listed on the first divisional (if not, the second divisional would have to be filed directly off the parent).

Any thoughts?

Haven't looked at this in a while and I'm a bit rusty.

Say you file a US Provisional application, then file a PCT application with same subject matter 1 year later claiming priority to the provisional.

Is it possible to expressly abandon the PCT prior to publication (assuming it is even possible to expressly abandon a PCT application) and then refile a new PCT application with the same subject matter within one year of the filing date of the original PCT and claim priority to the original PCT?

I would guess that the answer is no due to Article 4, Section C (4) which requires that, in order for a subsequent application (here the 1st PCT) concerning the same subject matter as a previous first application (here the provisional) to be considered the first application for the purpose of Paris Convention priority, that the first application has to (i) have been withdrawn (or abandoned, refused), (ii) not published, and (iii) must not have served as the basis for claiming priority.

In this hypothetical, it seems that it would not be possible to file a 2nd PCT (within one year of filing the 1st PCT) that claims priority to the 1st PCT because the first application (the provisional) already served as the basis for priority of the 1st PCT.

Can anyone confirm?

Thanks

Thanks Jim - I meant that the parent would be available as 102(e) prior art against claims in the CIP not supported by the parent in a 103 rejection, not a 102 rejection.  A 102 rejection would require that the parent describe and enable the claims of the CIP.  There is, of course, on occassion the odd case (e.g. Rasmussen) in which a parent application is held to anticipate a claim to a child application while being unable to support the priority claim due to the divergent treatment of the enablement "utility" requirement for the purposes of priority and anticipation.

In the hypothetical case I refer to below, the parent case describes a small genus and the CIP describes and claims a particular subgenus not explicitly described by the parent.  Inventor D helped reduce the subgenus to practice.

In this case, it would seem we could make the argument that the CIP claims are entitled to the priority of the parent application despite a different inventorship...

Background:  A CIP application has been rejected on the grounds of non-statutory double patenting over the parent application.  The parent application has 3 inventors who have all assigned to corporation A.  The CIP has the same 3 inventors plus another inventor.  The 3 common inventors assigned to corporation A.  The fourth inventor assigned to corporation B.

Problem - we cannot file a terminal disclaimer b/c the applications are not commonly owned.  Is there any reason we cannot have corporation B file an assignment to corporation A and then file a terminal disclaimer?

Does it matter whether the fourth inventor had an obligation to assign to corporation A at the time the invention was made?  I know that this is a requirement under 103(c) (requiring common ownership at the time the later invention was made") but I don't see any similar requirement for filing a terminal disclaimer.

THanks!