PowerOasis v. T-Mobile (Fed. Cir. 2008)
The district court granted summary judgment to T-Mobile — finding the PowerOasis cell-phone vending machine patents invalid.
The patent family history includes a continuation-in-part (CIP) preceded by a continuation and an original utility patent application. Based on the prior art date, the issue boiled down to whether the asserted patents could claim priority through the CIP to the original application.
Patentee Bears Burden of Proving Priority. Despite the statutory presumption of validity, the CAFC first held that the patentee normally has the burden of proving priority. The exception is when the PTO considers the issue of priority during prosecution. In drafting the opinion, Judge Moore shifted the decision from a question of validity (where a presumption lies) to a question of effective filing date (where there is no statutory presumption). “When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.”
Interestingly, this decision falls runs parallel to Microsoft’s recent petition for certiorari in the z4 case.
Written Description: To claim priority to the original application date, that original application must “convey with reasonable clarity to those skilled in the art, as of the filing date sought, [that the inventor] was in possession of the [claimed] invention.” (Quoting Vas-Cath). Here, the original application disclosed a “display” and “user interface” while the asserted patent claimed a “customer interface.” Although these terms appear quite close, the CIP had added specific examples of a laptop customer interface while the original application only included interface embodiments attached to the vending machine. This makes a difference because the accused device uses a laptop and the patentee asked for a construction of the term that would include the laptop interface.
Holding: “Because none of this support was present in the Original Application and because the Original Application did not disclose a customer interface apart from the vending machine, the asserted claims are only entitled to the 2000 CIP Application.”
Anon Exam.
You stated a “rule” I hear a lot but I don’t get:
“In fact, even a simple continuation is supposed to be reviewed to be sure that the specification, drawings, etc., are identical and that there is nothing new.”
Identical??? Where do you get this?
The statute only requires that the CON have no new matter — there is nothing to prevent one from taking the old matter and re-writing it or re-claiming it in the CON. As long as the parent discloses the matter sufficiently, you can file a whole new set of claims as a CON claiming matter that was (adequately) disclosed but not claimed in the original.
A CON can be used as a “voluntary divisonal,” can’t it? That’s one of the things Dude A$$ & Co. have been trying to eliminate with the new rules.
Section 120:
An application for patent for an invention disclosed in the manner provided by the first paragraph of section
112 of this title in an application previously filed in the United States . . . shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.
“In light of the fact that the rule requiring applicants to point out which claims lack support in the parent of a CIP is NOT in effect due to the injunction,”
But the same kind of rule is in the recently proposed markush rules.
Anon Ex.,
There is a significant difference between the presumption of validity and the presumption of effective filing date.
For CIPs, I would assume the presumptive filing date is the filing date of the CIP, unless I can show otherwise. There should be no assumption that the claims are entitled to a filing date of the original application.
In light of the fact that the rule requiring applicants to point out which claims lack support in the parent of a CIP is NOT in effect due to the injunction, perhaps a strategic reason to file a CIP as opposed to a new stand-alone application is to make competitors figure out for themselves which claims lack support in the parent. In other words, you are not showing your whole hand, and where there is ambiguity, competitors may cautiously assume that all claims have support in the parent, and be chilled from competing. The trade-off is lost term at the back end, but this may not be very important in rapidly developing fields.
I think that the presumption is that the examiner properly performed all that was required of him or her, and that all relevant issues were resolved in the applicant’s favor. But, again, and as the MPEP says, the examiner does not need to determine priority unless its relevant to a particular piece of prior art. So there is no reason to assume that an examiner determined that all of the claims are entitled to priority, unless there is something in the prosecution history that indicates the examiner made such a determination.
Here’s another example that illustrates my point. What if there is an 8 month gap between parent and CIP and the examiner determines that one of the 40 claims as filed is entitled to priority. Then, the examiner does a search and all of the cited art he or she finds predates the parent filing date. In the office action, the examiner will typically say nothing about which claims are entitled to priority since it’s not at all relevant with respect to the cited art. If the applicant overcomes the rejection, should there now be a presumption that all 40 claims are entitled to priority? That makes no sense.
It’s fine if the examiner makes a priority determination for all of the claims. But there should not be a presumption with respect to priority unless the examiner indicates what he or she actually determined for each claim (or there is something else during prosecution that sheds light on the issue).
I have to agree with “metoo”, as well, & respectfully disagree with “Anon Examiner”.
The reality of examining (& I also have many years & CIP, CON, etc. behind me) is that, unless it is material to the examination of a CIP (a CON is a different situation) there is no need to determine the effective priority date for every claim in the CIP. Really, it is a waste of time if there is no reference between the 2 dates. See my post on 4/14 @2:33 pm, above.
And when searching, it is usually better to NOT rely upon the claimed priority date, anyhow. The examiner should find all relevant art, even if it is not “prior art”, and make it of record. If the examiner determines what date they are working with & then exclude the references after that date from their search, they may well miss things (e.g., cited references in those patents or other leads (other inventors to search for in the art) that can be useful.
If you find prior art that does not qualify, you can still make it of record and explain WHY it does not qualify as prior art, as well.
Overall, this is a better & more efficient way of examining.
thanks,
LL
metoo,
201.08 is applicable. In short, I read that to mean that the examiner does not have to make the determination as to whether the old stuff is in the new stuff. However, how does the examiner tell what is new without distinguishing the old? In some way or another that analysis is going to be made. This statement may be an “out” for the PTO with respect to basic “editing based” duties of the examiner…not to waist time or the onus is on YOU! However, I don’t see the suggestion that “the examiner should, for purposes of searching, assume that none of the claims in the CIP are entitled to priority.” I just says “in the manner provided by the first paragraph of…112” as it related to the repeated portions of the application. Almost never are the claims repeated in a CIP, although it is techically possible. It makes no specific mention as to prior art rejections as they relate to the claims. You are right that the office, by choice, does not have to nitpick every word in the specification. Maybe that separates the good (or arguably jerk) examiner from bad.
With respect to your comments on the claims, that was not the case when I went through training. Now given the backlog you may be correct. I will have to take a trip down to the PTO training these days. I see your point but I think it is more theoretical than it is in truth. Maybe the specification, etc. falls on the patent attorney, but the claims for prior art are different.
“After all, that is the real issue here: should there be a presumption that every claim in a CIP patent is entitled to priority”
If this is not the case then we have no presumption that the examiner made any real determinations? I mean, what if the examiner transposed the date of filing due to a late night or early morning blunder? Maybe all of these cases should carry no presumptions and the CAFC can just decide as they go?
As to your last paragraph, as a practical matter this is possible in the electronic age. However, with 40 claims I would like to narrow my prior art window a little by knowing which claims are directed to new stuff. Also, I would like determine the claim strategy by making the initial distinction between old/new. Regardless, if you just treat everything like new, even within 8 months, you will likely run across stuff that will apply to your “old stuff” and you are going to make the determination anyway. I would like to focus primarily on the new subject matter in that case. If you approach everything as new with 40 claims then I feel you haven’t streamlined anything. Still, what about the past when things weren’t so electronic. Maybe, the CAFC should make a bright line about when a case was filed then use an objective test based on filing? I suppose OPQR wasn’t around much either?
P.S. the old days are out. If you just slap an intervening reference on the claims to see what sticks, OPQR gets it will ream you for not making the determination.
metoo has it right.
I think Judge Moore’s analysis is OK here – she also explicitly said that this was NOT a determination about whether the presumption applies when un-examined art is at issue. Here, not only was there no express consideration of the priority claim, but standard procedure expressly instructs against such consideration.
An issue that (apparently) didn’t come up in the case was whether PowerOasis was aware of the pre-existing network when it filed the CIP, or during the prosecution. The intervening art is clearly material, even if PowerOasis had a good faith belief in their priority claim, because an examiner would be compelled to do the priority analysis if and only if such a reference was in front of him.
Anon Ex: MPEP 201.08:
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, there is no need for the Office to make a determination as to whether the requirement of 35 U.S.C. 120, that the earlier nonprovisional application discloses the invention of the second application in the manner provided by the first paragraph of 35 U.S.C. 112, is met and whether a substantial portion of all of the earlier
nonprovisional application is repeated in the second application in a continuation-in-part situation.
To me, the above portion of the MPEP suggests that the examiner should, for purposes of searching, assume that none of the claims in the CIP are entitled to priority. If the PTO is telling examiners that they don’t have to determine priority for each claim unless necessary “to overcome a reference”, then it would not be appropriate to assume that every claim is entitled to priority. After all, that is the real issue here: should there be a presumption that every claim in a CIP patent is entitled to priority.
To look at it another way, the presumption of validity does not require the additional presumption that every (or any) claim in a CIP is entitled to priority. The CIP patent can be perfectly valid even if none of the claims are entitled to priority.
Should the examiner be “absolutely expected to determine the priority”, as you suggest? Well, let me ask you this. If you have a CIP application having 40 claims sitting on your desk and its filing date is 8 months after the parent, do you really go through each claim and determine whether or not its entitled to priority? Doesn’t it make more sense to simply assume that none are entitled to priority and do your search on that basis? If your search reveals no prior art having an effective date falling within the 8 month window between parent and CIP, then there is no need for you to determine priority for each claim. Heck, even if you do find prior art from that 8 month window, I think that a lot of examiners won’t bother to look at priority – they’ll just cite it against everything and leave it to the applicant to overcome the reference based on the priority claim.
MM,
Then wouldn’t it follow that the patentee not bear the burden and be afforded the presumption until those questions are raised by opposing? I think the validity/priority issue in the previous statement hinges on this fact pattern highlighting the reference “so quickly”. Not that it is percluded, but why is there no presumption for the patentee? This essentially shifts the initial burden to the patentee. The court says….well with respect to validity you appear ok…but for that priority (that likely led to validity), well you get no presumption and by the way you may have to prove it outright. I mean, this shouldn’t be a problem for the patentee…but that isn’t what I am arguing.
It just doesn’t appear to square with examination?
“the statutory presumption of validity (which surely includes the effective filing dates of the claims, since that determines what is prior art to them) cannot be so quickly eviscerated”
The validity analysis surely includes all sorts of underlying factual premises (e.g., content of the prior art, effective filing date) that have never been presumed to be correct where the USPTO was silent. After all, how can you presume any underlying factual premise is correct when you have no idea what those premises are?
“the statutory presumption of validity … cannot be so quickly eviscerated by talking about a separate “presumption of priority”.
Uh … why not?
The CAFC (and District Courts) properly take this approach all the time: if an Examiner error or an Examiner misunderstanding of the technology is demonstrated, the presumption is in the garbage.
Anonymous,
“The USPTO can allow a claim without considering priority.”
Unless there is no new subject matter claimed….which is usually not the case in true CIP applications, how can the examiner search the prior art without having a date in mind. For claims mixed with old/new subject matter the issue is more tenuous and may open the previously patentable subject matter before the office for fresh rejection. In either event, I think it is bad for the courts to presume that an examiner is working backwards during examination. In fact, even a simple continuation is supposed to be reviewed to be sure that the specification, drawings, etc., are identical and that there is nothing new. In short, the office is training examiners to start from determining the appropriate priority before commencing the search. It really isn’t the other way around…opps I found something now let me see if it applies?
As a practical example, at least in the past, files had to be ordered. If you were examining something and you didn’t have the previous continuity in your office, then you would have to wait for the files to arrive in order to look and determine priority. The examiner who worked backwards would have always been screwed because if they did find prior art then would have to order the files and determine priority. This meant that all the work you put into searching would have been for nothing since you would have had to wait to make a determination. Regardless, you should be comparing the applications anyway. This applies to abandoned applications that would not have issued as well. You could have looked at an issued patent, but for other reasons that may not have provided the full picture. (amendments, restrictions etc.) So as a matter of examination, with this ruling, all applications issued before the days of electronic files would be questionable under my earlier arguments.
Practically, I suppose your suggestion might be easier today assuming the examiner can just pull up the electronic parents and compare when there is applicable prior art. In the least the examiner should be determining if you priority status is even legit, and whether the applications are comparible to one another depending on that status. This is technically unavoidable, so for the court to think the examiner isn’t making some determination as to old/new subject matter when examining (or even just reading the claims) is not reality.
I completely agree with Anon Examiner on this one – the statutory presumption of validity (which surely includes the effective filing dates of the claims, since that determines what is prior art to them) cannot be so quickly eviscerated by talking about a separate “presumption of priority”. That’s not to say that the decision of both the trial court and the CAFC on the ultimate validity of the patent might not be right, but for heaven’s sake lets not have yet another case where the CAFC reached the “right result” for utterly wrong reasons.
“Am I missing something?”
The USPTO can allow a claim without considering priority. The USPTO cannot allow a claim without considering validity. Accordingly, the presumption of validity, but not priority.
I am a little confused of the analysis by the court with respect to the issue of continuity.
“[T]he CAFC first held that the patentee normally has the burden of proving priority. The exception is when the PTO considers the issue of priority during prosecution. In drafting the opinion, Judge Moore shifted the decision from a question of validity (where a presumption lies) to a question of effective filing date (where there is no statutory presumption). “When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.”
Essentially, if there is no mention then presume nothing….but if there is a mention then there may be a presumption? How does this square with examination by the office?
Maybe there is no explicit statutory presumption but is there at least an implicit presumption. In my experience, with many years and CIP’s behind me, the Examiner is absolutely expected to determine the priority. This is especially important in a CIP application. One of the first things you are expected to do is determine what is newly filed. That is the whole point. How else will the examiner determine what prior art is applicable to the claimed subject matter. The first thing the examiner should do is determine the priority date for the old/new subject matter in a CIP, end of story. Some of the time applications are incorrectly filed as CIP’s and there are office statements to this issue that can be raised on first action.
How the CAFC can just ignore that the “presumption of validity” is implicitly intertwined with the notion that an examiner has determined the appropriate priority the claims is beyond me…
I appears to assume that presumptions afforded a patent don’t rely upon examination by the office in general. Let us presume that if the office doesn’t make any mention of “objections” then there is no presumption that there aren’t matters within the patent that are objectionable in an office action. Or one step further lets just stop presuming statutory subject matter too. How about a first office action with no prior art rejections (not addressed by the PTO?) and no statement of allowable subject matter?
In either event, determination of priority is essential to all that is “statutory” subject matter….as it is for patentability.
Am I missing something? Can someone enlighten me…or is this just another “technically correct” distinction? (stat/nonstat)
anonAgent raises an interesting point about removing matter.
The rest of the world is a lot tighter about removing material — it’s often considered “new matter” when you take stuff out, and I keep getting banged on the head with this because they’re not all that consistent. I’m not clear on how far the US system goes with this adding new matter by removing idea.
For instance, in the US, if you have 10 claims and the examiner forces you to elect Claims 1-5. Can you amend the specification prior to publication to remove the subject matter disclosing non-elected claims, and then file DIV that is identical to the pre-amended spec and claiming just Claims 6-10? Or better, file a CON before you elect or amend the spec in response to the restriction.
I think the EPO would say no, removing the material = new matter. But if you don’t get the “dead meat” out of the parent spec before it’s published, the infringers get a free ride from publication of the parent to publication of the non-elected claims in the CON/DIV. If you just let the non-elected disclosed matter ride to the end of prosecution of the parent before you file a DIV, you’re giving the bad guys years of free, post-publication infringement.
A reasonable sequence seems to me to be:
1. Read the restriction requirement.
2. Decide if you’re going to oppose with a petition.
3. Put down whatever you’re smoking and forget #2.
4. Decide what claims to elect (i.e. 1-5).
5. Re-file the same spec with just Claims 6-10 as a CON, or CIP if you have new stuff.
6. Amend the original spec to remove all of the disclosures of matter related to Claims 6-10.
7. File your amended spec and your election — and CANCEL claims 6-10. (I forget if you still have to elect if you cancel the non-elected claims.)
8. Get on your knees and pray Dudas doesn’t win in the CAFC and make the whole world retroactive.
I’ve never done this, I’m just thinking out loud. (I’m on my lunch break, if the boss asks.)
Also, Counsel asked how a CIP saves filing fees. If you’re filing a CON anyway and you’ve got new matter, you can file 1 application instead of two. Save the second set of maintenance fees, too. So that’s $5000 or so in savings. Maybe it’s worth the shortened patent life for the new matter wrapped in the CIP. Most of my clients don’t see or care about the maintenance fees. They just want to get their sweaty hands on that patent.
“For example, you may want to take something out of the spec which is embarrassing to the Applicant for some reason – for example, the marketing dept. screams at the legal dept. (or outside counsel) to take something out of (or add something to) the Application.”
I recently saw a published US application that contained bracketed notes from the attorney to the inventor along the lines of “Dr. W — should we leave this in?”
Too freaking funny.
Another use of CIPs is when you want to leave the claims as-is but change the spec for some sort of ‘business reason’ that is not related to patentability of subject-matter.
For example, you may want to take something out of the spec which is embarrassing to the Applicant for some reason – for example, the marketing dept. screams at the legal dept. (or outside counsel) to take something out of (or add something to) the Application.
My guess that the reason that you all so seldom get rejections based on the denial of the priority of the parent filing date (for some or all claims) is that this is ONLY something that comes up if there is good (preferably “best” reference) that falls in between the 2 dates. If the references are b4 the parent or after the CIP, the grant or denial of priority does not matter for examining purposes.
However, I have seen where because some claims being enabled/supported by the parent & some more specific not being enabled/supported by the parent that a broad claim is supported and allowed over the prior art and the dependent on that clam, being more specific being denied the priority and thus be rejected on prior art (i.e., art that does not qualify as “prior” based on the parent but is based on the CIP).
For example, the parent discloses the specific processing of audio (nothing about image or video) and the CIP now discloses and claims the processing of video. Thus, the CIP is (at least arguably) not entitled to the earlier date for the more specific material.
Seems odd when you see the independent claim allowed but the dependent claims rejected on art, but it appears proper.
thanks,
LL
“This is not correct Also Anon. Publication of a parent application (both the parent US application and a corresponding foreign application) can most certainly be used in rejection of CIP claims. Unless the CIP claims deserve the parent’s priority, then the parent cannot be removed as prior art. See, e.g., the Tronzo v. Biomet case.”
Prosecutor, you are most certainly correct. I should have been clearer, in that CIP’s remove the parent application that has not published – but this even appears limited to 102(b) applications and the 1-year bar date (see MPEP 2133.01).
Again, to me, this is the only benefit of CIP’s, and as Prosecutor confirmed, it is not that great of benefit.
Also, like most of you, I have never received a rejection of a CIP based on the parent. Perhaps it is because the Examiner would have to walk the fine line of identifying why the parent anticipates or renders obvious, but does not enable, thereby effectively removing the priority claim. Or perhaps it is just because many Examiners do not realize this option is open to them.
“To claim priority to the original application date, that original application must “convey with reasonable clarity to those skilled in the art, as of the filing date sought, [that the inventor] was in possession of the [claimed] invention.” (Quoting Vas-Cath).”
Referring back to an earlier post: wouldn’t it be the case that the disclosure of five compositions comprising 20%, 25%, 30%, 35% and 40% compound X “convey with reasonable clarity” that an applicant was in possession of a “composition comprising 20%-40% compound X” ?
Truly the Vas-Cath “test” is a classic example of an unhelpful non-explanation. Of course the description of the invention must be “reasonably clear”. Did anyone ever doubt that? Of course the relevant reader is one skilled in the art. So “written description” is replaced with “possession.” Gee, thanks.
“although I’ve filed some CIPs, I’ve never had an Examiner come back with an argument that the claims don’t get the priority date of the original application.”
That was my experience as well until a few weeks ago.
The times, they are a changing.
For the better. Unless you fancy yourself a “small inventor.”
LOL.
How does a CIP save filing fees? (I agree they’re a bad deal in any event.)
I thought that was a great opinion by J. Moore and a great call by the trial judge.
I’m not convinced with the justifications for a CIP offered above. Here’s the way Babel said if over at PatProspector:
One of the [few] beneficial effects the new rules would have had was to force CIP applicants to designate what claims get the parent application’s priority date. That rule would benefit everybody. When a CIP enters international prosecution, they must drive the examiners nuts sorting this out.
What’s the point of a CIP anyway? You save a few hundred bucks in filing fees, maybe. Your new matter doesn’t get the benefit of the early priority date, and the patent still expires 20 years from the priority date that you don’t get the benefit of. So you are blowing off years of patent life for the new matter in exchange for a few hundred bucks. Sounds like a bad deal.
“Incidentally, one of the less-talked about provisions of the now dead continuation rules was the requirement that inventors point out which parts of their CIPs were new.”
What was required was for applicants to point out which of the new claims were supported in the parent and to identify that support. Perhaps functionally that’s similar to what you describe, but I think it’s a lot easier to understand the reluctance of applicants to characterize claims that it is to undestand a reluctance do a simple text comparison on the two secifications.
Do all other readers suppose, like Dan Feigelson, that it’s “File One and You’re Done” everywhere else in the world except in the USA? Heaven Help the rest of the World, when US patent attorneys tune in to the Rules of the Patent Game as it is played everywhere else in the world except for the USA.
Kevin Noonan,
There are only 2 reasons I can think of to file a CIP instead of a stand-alone application, neither of which are admittedly all that good:
1. If the parent application is ripe for a continuation anyway, and you want to add an additional species that doesn’t rise to the level of importance to warrant its own stand-alone filing. A dependent claim added to the CIP that recites this species would only get the CIP’s filing date, but it might ultimately be useful to have if that species turns out to be important commercially. I think of this as the “might as well throw it in while you have the chance” situation. Of course, the applicant wouldn’t want to rely on this added species in arguing that the broad claim is supported by the specification (for the same reason PowerOasis’s patent was found to be invalid).
2. To add additional data pertaining to an invention that is already fully described and claimed in the parent. I.e. the same sort of data that could just as easily be submitted in a 132 Declaration. Like #1 above I would only bother doing this if the parent is ripe for a continuation anyway, and you might as well throw in the additional data if you have it.
Again, neither of these reasons is particularly compelling. I can think of several counterarguments to both of them — mainly that they open up the eventual claims to PowerOasis-type attacks that they aren’t fully supported without the added material. Otherwise, I agree that there is little or no reason to file a CIP as opposed to a stand-alone application.
“CIP’s in the true sense are only good to remove the “partent” as prior art. If it is a true CIP, then the new matter is in the claims, and the claims cannot receive priority back to the parent, but you still remove the parent.”
This is not correct Also Anon. Publication of a parent application (both the parent US application and a corresponding foreign application) can most certainly be used in rejection of CIP claims. Unless the CIP claims deserve the parent’s priority, then the parent cannot be removed as prior art. See, e.g., the Tronzo v. Biomet case.
Kevin Noonan,
Certainly there is a reason: to copy a rival’s profitable invention and make it appear as though you invented it first. After all, if the examiner errs on the side of caution and buys your arguments re the interpretation of the parent application’s disclosure, you’ve got a guaranteed goldmine.
CIP’s in the true sense are only good to remove the “partent” as prior art. If it is a true CIP, then the new matter is in the claims, and the claims cannot receive priority back to the parent, but you still remove the parent. However, considering that our 103 standards are quite a bit more expansive than most foreign jurisdictions, the CIP is sort of the counter-method used to make sure a closely related application by the same applicant is not used as a rejection.
I personally don’t like them, but also realize their value.
I also think that CIP’s with multiple inventors are ripe for inventorship attacks based on the timing of inventorship – if A and B invent and file on invention 1, and C comes along and works for the same company as A & B but does not work directly with them, and improves up invention 1, are A, B & C co-inventors on the CIP filing? if the answer is yes, then how come Joe Shmoe cannot see the publication of the Invention 1 application, improve upon it, and file his own CIP listing all inventors?
Just another arc-minute of the pendulum swing back to 19th century patent jurisprudence … when the specification *was* the invention, and the claims typically were of the form “an apparatus substantially as described herein.”
Kevin Noonan,
If by 103 revisions you mean 103(c), what about a situation where you file your CIP after 18 months from the date of the original application? In that situation, I think the original would be available under 102(b) as a publication so 103(c) would not apply if the Examiner uses it as a 103(a) reference and says your new disclosure is obvious over it.
BTW, I give this answer with the proviso that although I’ve filed some CIPs, I’ve never had an Examiner come back with an argument that the claims don’t get the priority date of the original application.
In view of the revisions to 35 U.S.C. Sec. 103 made in the AIPA (2000), and the patent term revisions made in implementing GATT (1995), is there really any reason to file a CIP (as opposed to a stand-alone application)?
Why eliminate CIPs? In most countries you file one application and that’s it – you take a snapshot of “the invention”, whatever that is, at some point in time, and you’re stuck with that, even if later on you develop improvements that you want to describe and claim. With the CIP, you can add the description of those improvement. The ability to file a CIP is thus much more consonant with the reality of the development process than the “file one and you’re done” regime in most places.
For the unwary there are some potential pitfalls associated with the filing of CIPs, but that’s not a reason to get rid of the institution.
Incidentally, one of the less-talked about provisions of the now dead continuation rules was the requirement that inventors point out which parts of their CIPs were new. Although the idea that one would have to point out which passages are new is anathema to most U.S. practitioners – the maxim being never make statements during prosecution that might later limit your ability to have the patent construed broadly or, in this case, to show that it was entitled to an earlier filing date – this particular requirement would have been awfully helpful not only to the PTO and competitors, but applicants themselves, helping them to avoid the trap into which PowerOasis fell.
Eliminate CIP applications.
Every CIP application I’ve ever examined (3 total) didn’t deserve priority.
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