Under United States patent law, a continuing patent application is a patent application that follows, and claims priority to, an earlier-filed patent application. A continuing patent application may be one of three types: a continuation, divisional, or continuation-in-part. Although continuation and continuation-in-part applications are generally available in the U.S. only, divisional patent applications are also available in other countries, as such availability is required under Article 4G of the Paris Convention.
From 1838 to 1861, inventors could file patent applications on improvements to their inventions. These were published as "additional improvement patents" and were given numbers preceded by "A.I.". About 300 of these patents were issued. [1]
Under the law in the U.S., inventors may file several different types of patent applications to cover new improvements to their inventions or to cover different aspects of their inventions. These types of patent applications include "continuation", "divisional", "continuation in part", and "reissue".
A "continuation application" is a patent application filed by an applicant who wants to pursue additional claims to an invention disclosed in an earlier application of the applicant (the "parent" application) that has not yet been issued or abandoned. The continuation uses the same specification as the pending parent application, claims the priority based on the filing date of the parent, and must name at least one of the inventors named in the parent application. This type of application is useful when a patent examiner allowed some, but rejected other claims in an application, or where an applicant may not have exhausted all useful ways of claiming different embodiments of the invention. [2]
During the prosecution of a continuation application, the applicant may not add additional disclosure to the specification. If the inventor needs to supplement the disclosure of the earlier parent application, he has to file a continuation-in-part application. [3]
In the typical case, a patent examiner will examine patent claims and amendments in an original patent application for two rounds of "office actions" before ending examination. However, often two office actions are not enough to resolve all of the issues in the patent prosecution.
A request for continued examination (RCE) is a request by an applicant for continued prosecution after the patent office has issued a "final" rejection or after prosecution "on the merits" has been closed (for example by a Notice of Allowance or by a Final Rejection). An RCE is not considered a continuing patent application - rather, prosecution of the pending application is reopened. [4] The inventor pays an additional filing fee and continues to argue his case with the patent examiner. No RCE was allowed prior to June 8, 1995. [5]
Because of a large number of last-minute Requests for Continuing Examination (RCEs) due to new prior art being found, and the additional burden these RCEs impose on examination, the USPTO launched in May 2012 the Quick Path Information Disclosure Statement (QPIDS) Pilot Program. [6] The program can be used to submit an Information Disclosure Statement (IDS) during the time interval after payment of the issue fee but prior to patent grant. Only if the examiner feels that the references on the IDS are material, a Request for Continuous Examination is executed and examination is reopened. Prior to QPIDS program, launching a full-scale RCE was the only option to introduce new prior art during that time interval. Filing a QPIDS request requires a payment of full RCE and IDS fees, which are refunded, if no RCE is opened. However, QPIDS petition fee is not returned. [7]
Ca. 2018 the QPIDS program became permament, [8] even though USPTO's own study in 2014 showed very low applicants' participation rate. [9]
A divisional application also claims priority based on the filing date of the parent application, but differs from a continuation application in that a divisional application claims a distinct or independent invention "carved out" of the parent application. A divisional application must share at least one of the inventors named in the parent application. A divisional application is often filed after the examiner issued a "restriction requirement", because a patent can only claim a single invention (cf. unity of invention). The USPTO practice of splitting patent applications into numerous divisionals has been criticized as an abuse intended to increase the USPTO revenues at the expense of patent holders. [10]
A "continuation-in-part" application ("CIP" or "CIP application") is one in which the applicant adds subject matter not disclosed in the parent patent application, but repeats a substantial portion of the parent's specification, and shares at least one inventor with the parent application. The CIP application is a convenient way to claim enhancements developed after the parent application was filed. It is the successor to the earlier "additional improvement" patents mentioned above. For a continuation-in-part application, claims to subject matter that was also disclosed in the parent are entitled to the parent's priority date, while claims to the additional subject matter are only entitled to the filing date of the CIP application. [3]
A patent of addition is available in Israel, which is generally similar to a CIP in the U.S.[ citation needed ]
If an issued patent is found to be defective, the patent owner can surrender the patent and file a reissue application to correct the defect. One such defect occurs when the issued patent claims either more or less than the coverage to which the patentee is entitled, the latter situation resulting in a "broadening reissue". Thus, an inventor can submit a reissue application with broader claims and attempt to get the full coverage to which he or she is entitled. The inventor is not, however, allowed to add new features to the disclosure. A broadening reissue application must be filed within two years from the grant date of the originally issued patent. [11] A reissue patent has the kind code E. [12]
In 2007, USPTO announced new regulations under 37 CFR (published August 21, 2007) that would significantly alter procedures regarding continuation applications before the USPTO. Previously, USPTO rules allowed an inventor to file as many continuations as necessary to get desired breadth of claims. The procedure was criticized for creating uncertainty as to what is covered or could be covered by a given patent application. An inventor, for example, could have sought to get claims with limited scope approved early, and then continue to file continuations over many years seeking broader coverage. For example, inventor Jerome H. Lemelson filed a series of continuations over thirty years to get a very broad patent on bar code readers. This patent was issued in 1984, long after bar code readers had become an integral part of the U.S. economy. Lemelson was then able to collect over a billion dollars in license fees from large companies using bar code readers. (Note however that the Lemelson optical recognition patents followed a since-replaced rule under which patents would expire 17 years after the patent was granted, regardless of when the patent application was filed. For patents filed on or after June 8, 1995, under the TRIPS agreement, continuation patents expire 20 years from the date of filing of the parent patent application, regardless of when the patent is granted. Thus, Lemelson's "submarine patents" strategy of taking steps that would delay the patent grant date will no longer extend the patent expiration date.)
To minimize this alleged abuse of the patent system, the USPTO proposed several changes to the rules as to the number of continuations an applicant can file. The proposed changes were announced on January 3, 2006, and were published in final form on August 21, 2007, after various modifications were made pursuant to input received as public notice and comment (during which the public was invited to comment on the proposed rule changes [13] ). Many of the provisions in the new rules went into effect November 1, 2007; however, certain additional exemptions apply for continuation applications filed before the publication date of August 21, 2007, even after November 1, 2007.
The proposed rules would have limited an inventor to filing two continuation applications for each type of invention disclosed in an original patent application, unless the applicant can show "good cause" for filing additional continuations. Furthermore, applicants could file only one RCE for each "family" of applications (that is, the group of applications including original applications and each of the continuation applications claiming the benefit of priority of the original application) unless the USPTO granted the applicant permission upon showing "good cause". [14]
The proposed changes were generally opposed by patent agents and attorneys, [15] manufacturing companies, [16] biotechnology companies, [17] and independent inventors. [18] There was concern that the rule changes failed to consider the difficulties commonly encountered in getting a patent, and that the changes would result in inventors failing to get the full range of patent protection to which they are entitled. The groups also maintained that the rule changes were not consistent with the current regulations on continuations.
The rule changes were generally favored by software companies, [19] electronics companies [20] and US government agencies [21] for the reasons given above. Those that favored the rule changes felt that said changes were consistent with the laws governing continuation practice.
On August 22, 2007, inventor Dr. Triantafyllos Tafas sued the USPTO in the United States District Court of the Eastern District of Virginia on the ground that the rule changes were in violation of the U.S. patent law and therefore are invalid. [22] [ unreliable source? ] On October 9, 2007, pharmaceutical company GlaxoSmithKline filed a similar suit seeking a preliminary injunction to prevent the enforcement of the new rules. [23] [ unreliable source? ] The court consolidated the two cases and scheduled a hearing on GlaxoSmithKline's motion for October 31, one day before the rules were to go into effect. [24] [ unreliable source? ] On October 31, the court granted a preliminary injunction which prohibits the USPTO from enforcing the patent rules on continuations and claims which were to come into effect the following day. [25] On April 1, 2008, the injunction was made permanent, [26] but in March 2009, it was overturned by United States Court of Appeals for the Federal Circuit. [27]
In October 2009, USPTO withdrew proposed changes[ clarification needed ] to the continuation rules. [28]
Prior art is a concept in patent law used to determine the patentability of an invention, in particular whether an invention meets the novelty and the inventive step or non-obviousness criteria for patentability. In most systems of patent law, prior art is generally defined as anything that is made available, or disclosed, to the public that might be relevant to a patent's claim before the effective filing date of a patent application for an invention. However, notable differences exist in how prior art is specifically defined under different national, regional, and international patent systems.
In United States patent law, a petition to make special (PTMS) is a formal request submitted to the United States Patent and Trademark Office (USPTO) asking that a patent application be examined ahead of the other pending applications in the same technological art.
An interference proceeding, also known as a priority contest, is an inter partes proceeding to determine the priority issues of multiple patent applications. It is a proceeding unique to the patent law of the United States. Unlike in most other countries, which have long had a first-to-file system, until the enactment of the Leahy-Smith America Invents Act (AIA) in 2011, the United States operated under a first-to-invent. The interference proceeding determines which of several patent applications had been made by the first inventor.
In United States patent law, the reduction to practice is the step in the formation of an invention beyond the conception thereof. Reduction to practice may be either actual or constructive. The date of reduction to practice was critical to the determination of priority between inventors in an interference proceeding under the discontinued first-to-invent system as well as for swearing behind a reference under that system.
Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves arguing before, and sometimes negotiation with, a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.
In most patent laws, unity of invention is a formal administrative requirement that must be met for a patent application to proceed to grant. An issued patent can claim only one invention or a group of closely related inventions. The purpose of this requirement is administrative as well as financial. The requirement serves to preclude the possibility of filing one patent application for several inventions, while paying only one set of fees. Unity of invention also makes the classification of patent documents easier.
Under United States patent law, the term of patent, provided that maintenance fees are paid on time, is 20 years from the filing date of the earliest U.S. or international (PCT) application to which priority is claimed.
Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a "provisional patent".
Sufficiency of disclosure or enablement is a patent law requirement that a patent application disclose a claimed invention in sufficient detail so that the person skilled in the art could carry out that claimed invention. The requirement is fundamental to patent law: a monopoly is granted for a given period of time in exchange for a disclosure to the public how to make or practice the invention.
The Patent Reform Act of 2005 was United States patent legislation proposed in the 109th United States Congress. Texas Republican Congressman Lamar S. Smith introduced the Act on 8 June 2005. Smith called the Act "the most comprehensive change to U.S. patent law since Congress passed the 1952 Patent Act." The Act proposed many of the recommendations made by a 2003 report by the Federal Trade Commission and a 2004 report by the National Academy of Sciences.
The United States is considered to have the most favorable legal regime for inventors and patent owners in the world. Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting from a patented technology without the consent of the patent holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.
In patent law, an inventor is the person, or persons in United States patent law, who contribute to the claims of a patentable invention. In some patent law frameworks, however, such as in the European Patent Convention (EPC) and its case law, no explicit, accurate definition of who exactly is an inventor is provided. The definition may slightly vary from one European country to another. Inventorship is generally not considered to be a patentability criterion under European patent law.
The Manual of Patent Examining Procedure (MPEP) is published by the United States Patent and Trademark Office (USPTO) for use by patent attorneys and agents and patent examiners. It describes all of the laws and regulations that must be followed in the examination of U.S. patent applications, and articulates their application to an enormous variety of different situations. The MPEP is based on Title 37 of the Code of Federal Regulations, which derives its authority from Title 35 of the United States Code, as well as on case law arising under those titles. The first version of the MPEP was published in 1920 by the Patent and Trademark Office Society.
A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.
This is a list of legal terms relating to patents and patent law. A patent is not a right to practice or use the invention claimed therein, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or their successor in rights in exchange to a public disclosure of the invention.
In former United States patent law, a statutory invention registration (SIR) was a publication of an invention by the United States Patent and Trademark Office (USPTO). The publication was made at the request of the applicant. In order for an applicant to have a patent application published as an SIR, the following conditions had to be met:
In the United States, an Office action is a document written by an examiner in a patent or trademark examination procedure and mailed to an applicant for a patent or trademark. The expression is used in many jurisdictions.
An information disclosure statement refers to a submission of relevant background art or information to the United States Patent and Trademark Office (USPTO) by an applicant for a patent during the patent prosecution process. There is a duty on all patent applicants to disclose relevant art or background information that the applicant is aware of and that may be relevant to the patentability of the applicant's invention, as established by the United States Code title 35 and related sections of 37 CFR and the Manual of Patent Examining Procedure (MPEP). If a patent applicant, with deceptive intent for art known to the applicant, fails to submit material prior art to the USPTO, then any patent that later issues from the patent application may be declared unenforceable because of inequitable conduct. Furthermore, the duty to submit such relevant information to the USPTO lies not only on the applicant or inventor, but also on any patent attorney or other legal staff employed by the applicant.
Double patenting is the granting of two patents for a single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. However, the threshold for double patenting varies from jurisdiction to jurisdiction.
An examination support document (ESD) was a submission formerly proposed to be required to be made to the United States Patent and Trademark Office by an applicant for a United States patent under certain circumstances. An ESD would be required to comprise at least:
.... to provide, at the request of the applicant, for continued examination of an application for a fee (request for continued examination or RCE practice), without requiring the applicant to file a continuing application ...