Continuation Practice 2012 IP Summer Seminar

Stephen LeBarron [email protected] July 2012 © 2012 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP

CONTINUING APPLICATION PRACTICE CONTINUING APPLICATION (CON) ♦ DIVISIONAL APPLICATION (DIV) ♦ CONTINUATION-IN-PART APPLICATION (CIP) ♦

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CON / DIV / CIP – STATUTE / RULES 35 USC §120, 35 USC §365 (CON) 35 USC §121 (DIV) ♦ 35 USC §132 ♦ ♦

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CON / DIV / CIP – STATUTE / RULES Divisional application is a special continuing application used in cases where there is a restriction/ election of species requirement ♦ CON/DIV/CIP application must be filed before abandonment, patenting or termination of proceedings of the application to which the CON/DIV/CIP claims benefit to (co-pendency) ♦ CON/CIP to be filed by an inventor or inventors named in earlier filed application ♦

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CON / DIV / CIP – STATUTE / RULES CON/DIV application cannot introduce new matter [35 USC §132(a)], disclosure must correspond to that of prior application(s) the CON/DIV application claims benefit to ♦ CIP application includes new matter, thus common disclosure is entitled to benefit of earlier filing date and new matter the filing date of the CIP application ♦

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CON / DIV / CIP – STATUTE / RULES The claim to the benefit of the filing date of an earlier filed provisional application in a US non-provisional application is under 35 USC §119(e) ♦ Thus, it is not proper to refer to the subsequently filed US nonprovisional as a continuing application or a continuation-in-part application of the earlier filed US provisional application ♦

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CON / DIV / CIP – STATUTE / RULES 37 CFR §§1.48 (Correction of Inventorship) 1.51-1.52 (Application formalities) ♦ 1.57 (Incorporation by Reference) ♦ 1.56, 1.97, 1.98 (Disclosure of relevant art) ♦ 1.78 (Cross-noting to other applications) ♦ 1.115 (Preliminary Amendments) ♦ 1.121 (Manner of making amendments) ♦ 1.126 (Numbering of Claims) ♦ ♦

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CON / DIV / CIP – STATUTE / RULES Inventorship should be corrected to correspond inventorship to subject matter of the DIV/CON claims ♦ New Oath/Declaration not required for DIV/CON; copy of oath/ declaration from prior application can be filed [MPEP 602.05(a)]; but is required for CIP ♦ Cross-noting paragraph to prior related application(s) to be added CON/DIV/CIP application ♦

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CON / DIV / CIP – STATUTE / RULES A CON or CIP can be filed during pendency of International Application designating US claiming benefit of international filing date ♦ Time periods established in which applicant should make the claim for benefit under 37 CFR §1.78. ♦ Applicable for applications filed after November 29, 2000 ♦ Generally should be done when initially filing the CON/DIV/CIP application or within 4 months of the filing date of application or 16 months of prior application ♦

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CON / DIV / CIP – STATUTE / RULES ♦

An Applicant can delete the benefit claim by amending the application ♦ The Examiner will check to see if there is any new prior art available because of such amendment ♦ PTO will likely will refuse any subsequent request to amend application to re-introduce the deleted benefit claim if applicant files a request to add under the deleted benefit claim using the unintentionally delayed provisions of the rules

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CON / DIV / CIP – STATUTE / RULES ♦

In sum, the rules and statutes that govern CON/DIV/CIP applications require ♦ That for CON/DIV applications there be continuity as to the disclosure that satisfies the statutory requirements of 35 USC §112, first paragraph. ♦ That the prior application to which the CON/DIV/CIP claims benefit to, must be co-pending when the CON/DIV/CIP is filed. ♦ The CON/DIV/CIP application contain a specific reference to the prior application(s) in the specification or the application data sheet.

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CON / DIV / CIP – STATUTE / RULES GENERAL SUMMARY ♦

CONTINUATION / CONTINUING APPLICATION ♦ A second application for the same invention claimed in a prior non-provisional application and filed before the original prior application becomes abandoned or patented ♦ The continuation application may be filed under 37 CFR 1.53(b) or 1.53(d) if the application is a design application) ♦ The disclosure presented in the continuation must be the same as that of the original application; i.e., the continuation should not include anything which would constitute new matter if inserted in the original application ♦ Continuation can be filed to introduce a new set of claims or to continue prosecution of claims canceled from earlier filed application as well as to establish right to further examination by the examiner

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CON / DIV / CIP – STATUTE / RULES GENERAL SUMMARY ♦

DIVISIONAL APPLICATION ♦ A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application ♦ Often filed as a result of a restriction requirement made by the examiner ♦ Divisional application should set forth at least the portion of the earlier disclosure that is germane to the invention claimed in the divisional application ♦ Divisional applications can be filed for utility, plant or design applications ♦ Application denominated as a divisional when filed will be treated as a continuation if the claims actively prosecuted in later filed application correspond to scope of the claims of the earlier filed application

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CON / DIV / CIP – STATUTE / RULES GENERAL SUMMARY ♦

CONTINUATION-IN-PART APPLICATION ♦ Such an application can be filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the earlier nonprovisional application ♦ A continuation-in-part application may only be filed under 37 CFR 1.53(b) and must claim the benefit of the prior nonprovisional application ♦ The mere filing of a continuation-in-part does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit 13

CON / DIV / CIP – GENERAL SUMMARY ♦

CONTINUATION-IN-PART APPLICATION ♦ A continuation-in-part filed by a sole applicant may derive from an earlier joint application showing a portion only of the subject matter of the later application ♦ Also a joint continuation-in-part application may derive from an earlier sole applicant ♦ Unless the filing date of the earlier nonprovisional application is actually needed, for example, in the case of an interference or to overcome a reference, the USPTO does not determine whether the requirement of 35 USC §120, that the earlier nonprovisional application discloses the invention of the second application in the manner provided by the first paragraph of 35 USC §112, is met and whether a substantial portion of all of the earlier nonprovisional application is repeated in the second application in a continuation-inpart situation 14

CON / DIV / CIP – GENERAL SUMMARY ♦

CONTINUATION-IN-PART APPLICATION ♦ The USPTO will permit an application to claim the benefit of the filing date of an earlier nonprovisional application and denominated a CIP if: A. first application and the CIP application were filed with at least one common inventor B. CIP was “filed before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application” C. CIP application "contains or is amended to contain a specific reference to the earlier filed application" (The specific reference may be in an application data sheet) 15

PROCEDURE – CON/DIV Review parent application and identify amendments to specification/drawings that should be contained in CON/DIV Determine a) which claims withdrawn in parent application that should be prosecuted in divisional application, or b) which claims canceled in parent application should be prosecuted in continuing application, or c) the claims that should be added to continuing application

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PROCEDURE – CON/DIV ♦

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Prepare preliminary amendment including the identified specification and drawing amendments and the determined claim amendments File the CON/DIV application and preliminary amendment in USPTO Prepare and file extension of time and fee, if required, to maintain copendency of prior application and CON/DIV application

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PROCEDURE – CON/DIV ♦

Considerations for when to file CON/DIV application: ♦ Obtain early patent protection (CON) ♦ Possible infringing activity ♦ Business (e.g., financing) considerations ♦ Reviewing prosecution history of parent application before filing ♦ Shortened patent term – terminal disclaimer

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PROCEDURE – CIP Two options a) Prepare and file preliminary amendment with CIP application that includes the new subject matter b) Re-write the prior application to include the new subject matter and file the new application ♦ In either case one would review prior application and identify amendments in prior application to specification/drawings that should be included in CIP ♦ Draft claims directed to new subject matter as well as to subject matter of prior application

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PROCEDURE – CIP ♦

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Under 1st option - prepare preliminary amendment including the identified specification and drawing amendments and the claim amendments File the CIP application with preliminary amendment if applicable Prepare and file extension of time and fee, if required, to maintain copendency of prior application and CIP application

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PROCEDURE – CIP Considerations for filing CIP application: ♦ Is new subject matter patentably distinct from subject matter of prior application(s) ♦ Need to maintain early filing date to avoid intervening prior art ♦ Business considerations – loss of patent term shortened patent term due to terminal disclaimer

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APPLICATION PATENT TERM 35 USC §154 Subject to payment of fees, the patent grant shall begin for a term that begins on the date on which the patent issues and ending 20 years from the date on which the application was filed, or if the application contains a specific to an earlier filed application under 35 USC §§120, 121 or 365(c), from the date on which the earliest filed application was filed ♦ For CON/DIV/CIP the term ends 20 years from the earliest filed application to which the CON/DIV/CIP ultimately claims the benefit to ♦ ♦

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ANY QUESTIONS? Thank you for giving me the opportunity to make this presentation.

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