Patently-O Bits and Bytes No. 103: Events and Jobs

Upcoming Events:200904151129.jpg

New Source of Upcoming Events: The Patently-O Events Calendar (BETA VERSION). HTTP://www.patentyo.com/calendar. We’re still working on the formatting & integration. The best way to post an event is to use create the event in your calendar (such as Outlook, Google Calendar, or iCal), and then invite patentevents@gmail.com. Be sure to include a URL in the description.

Job Postings from April 2009:

Query:

  • I should know this, but I don’t recall the answer: Suppose a recently issued patent was filed in 2004 and claims to be a continuation-in-part of another application filed in 2000. In the new patent, some of the claims were fully described and enabled in the 2000 application while other claims in the new patent include matter only found in the 2000 application. Will the enforceable patent term differ between the two sets of claims? If so, does the PTO require a terminal disclaimer if the claims are not patentably distinct?

33 thoughts on “Patently-O Bits and Bytes No. 103: Events and Jobs

  1. This was an interesting discussion. However one point was overlooked, you cannot rely on incorporation by reference for “essential subject matter” and claimed elements of the invention are “essential”.
    MPEP 608.01(p)
    (c) “Essential material” may be incorporated by reference, but only by way of an incorporation by reference to a U.S. patent or U.S. patent application publication, which patent or patent application publication does not itself incorporate such essential material by reference. “Essential material” is material that is necessary to:

    (1) Provide a written description of the claimed invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and set forth the best mode contemplated by the inventor of carrying out the invention as required by the first paragraph of 35 U.S.C. 112;

    (2) Describe the claimed invention in terms that particularly point out and distinctly claim the invention as required by the second paragraph of 35 U.S.C. 112; or

    (3) Describe the structure, material, or acts that correspond to a claimed means or step for performing a specified function as required by the sixth paragraph of 35 U.S.C. 112.

    It was not clear in the original question presentation that the parent application was a patent or PPGP. In any case the spec must be timely amended to place the essential material into the spec to make it complete, apparently not done in this case.

    The change in rule 57 in sept. 2004 permits “inadvertently” omitted material to be added to the application by way of a later filed amendment with less requirements.

    In regard to the termainal disclaimer as further questioned by Paul, the purpose thereof is also to prevent the patentee from selling separate patents to competing parties with claims that conflict. whether the application is cont or cip does not change this. Only in a PTO directed division is there some exclusion of this.

  2. Although there are a lot of good comments here, I did not note anyone specifically responding to the specific question Dennis asked, which was “does the PTO require a terminal disclaimer [in a CIP] if the claims are not patentably distinct?”
    Isn’t the answer ‘no’ for the additional reason that the obviously-similar claims in a CIP having different effective dates are still in one single patent and thus not subject to any double patenting rejection?

  3. CNS,

    Yes, I caught that my first comment was off, Please see my second comment immediately after.

    I was led to wonder when, if ever, there is a circumstance in which filing a CIP is better than filing a new application, or better than filing both a continutaion and a new application.

    Reading some texts on patent practice, it seems a lot of “experts” in the field are confused about this matter.

    As near as I can tell, the only time it really makes sense to file the CIP is if the loss in patent term for the new subject matter is worth the cost savings obtained from abandoning the first case, so you only have to pay for prosecuting and eventually maintaining a single patent.

  4. Just came across an interesting (non-prec) Federal Circuit case: In re Cypress Semiconductor, 09-MD898.

    The questions posed: which circuit’s law governs a review of federal procedural questions? and under whatever circuit’s law governs, was the ITC clearly wrong to continue an import seizure investigation, despite a prior finding of invalidity made in a judgment vacated by settlement?

    Fed. Cir. found that the ITC was not clearly wrong.

    The case is interesting because the Fed. Cir. decision does not make any reference to Bonner Mall, 513 U.S. 18 (1994) …

  5. Hello Malcolm works for the FBI,

    Re: “-only point in filing a CIP is to confuse-
    Agreed”

    Nope, that’s wrong – read the thread.

    Re: “… to preserve anonymity.”

    I don’t think there is anyway to preserve anonymity when you send stuff from a computer system because each system has a unique identifier.

    BTW: It is not nice to slur the FBI.

    Amazing how you can get son many things wrong in such a short comment.
    Congratulations – you win the Dunce cap.

  6. -only point in filing a CIP is to confuse-

    Agreed. Does not serve other purpose other than if you are worried about 112 support for claims in the parent.

    Note: All anonymous posters (all posters really) should use the SAME EMAIL ADDRESS when posting- I suggest a@a.com- to preserve anonymity.

  7. “[F]iling the claims directed to at least partly new subject matter in the CIP prevents the parent application from being used as prior art in a 103 rejection of the new claims.”

    Sorry broje, that’s not how it works. Claims in the CIP that rely on the new subject matter get the CIP’s filing date. Period. They get no benefit of the earlier application at all unless they have full 112 support in the earlier application. The publication of the earlier application can therefore be used for 102 or 103 purposes against the claims in the CIP that get the CIP’s filing date.

  8. “Just Passed: If the original application has published the CIP will be obvious in light of the publication if the new stuff is “too obvious to file a new application.”"

    That’s right, so if you have obvious improvements, it’s better to file them before the “parent” application publishes, so that you can rely on 103(c). You don’t need the CIP claim in this case, however, so it’s possible to get the extra term for the obvious improvements (if nobody else has stumbled upon them in the meantime).

  9. Let me add that Keith is also right in the case of the parent qualifying as 102(b) prior art. I did not mean to imply that priority is accorded on a claim element by claim element basis. It is a claim by claim basis, see (36 USPQ2d 1089: In re Chu (1995)).

    “Thus, Chu is entitled to the benefit of the Doyle patent filing date only if the Doyle patent discloses the subject matter now claimed by Chu. This, however, is admitted by Chu not to be the case. In fact, Chu states that “the invention as now claimed[ ] was not described in the [Doyle] patent.” Specifically, Chu concedes that “nothing in Doyle suggests that SCR catalyst be placed inside the bag filter.” Therefore, independent claim 1, which includes this limitation, and dependent claims 2, 4, and 14, are not supported by the Doyle patent disclosure. Accordingly, Chu cannot obtain the benefit of the Doyle patent filing date for these claims and the Doyle patent was properly relied on as prior art.”

  10. In my view, “just passed” is on the right track.

    The question is, why file a CIP instead of filing two applications: a Continuation for the claims finding support; and a new application for the claims not entirely finding support in the previous application?

    The answer is that filing the claims directed to at least partly new subject matter in the CIP prevents the parent application from being used as prior art in a 103 rejection of the new claims.

    Thus, filing a CIP can be a decent option if the interval of time between filings is great enough that the parent application would otherwise become a 102 reference to the new application, thereby precluding filing of a Declaration to overcome a 103 rejection based at least in part on the parent application.

  11. Derrik: A divisional is not a CIP. A CIP adds new matter. A divisional does not.

    Just Passed: If the original application has published the CIP will be obvious in light of the publication if the new stuff is “too obvious to file a new application.”

  12. Derrik,
    The answer to your questions is “no”. The situation I described doesn’t come up with divisionals because no subject matter is added as with CIPs. The 112 support for later-filed claims is the same in both applications.

  13. Dear Just passed,

    Re:
    “Leopold Bloom, I passed the patent exam last week, but what I’d learned about CIP from a study material was more than what you mentioned. According to the study material, CIP also covers new improvements and new embodiments that are not supported in the original application (but are too obvious to file a new application.) Well, it may be just a theory. I know little about the actual use of CIP!”

    You make an excellent point.

    My choice was closer to RCE or C-I-P, than C-I-P or Continuation.
    However, other C-I-P claims definitively had no support from the earlier filing.
    And I thought a RCE and a C-I-P was too much.

  14. Dear X,

    Well, that’s the issue then.
    Do you have definitive support for your comment?

  15. Dear Leo,

    Re: Even if the PTO did
    “decide whether the claim(s) at issue is entitled to the earlier priority date” –

    I do not think it would not be binding on a Judge and or Jury (is it a matter of law or for a jury to decide?).

    Re: “Your strategy may be completely appropriate, but it’s not costless.”

    I certainly agree that there are risks, but I do not think those risks can be avoided no matter if a continuation or C-I-P is filed.

    Regarding cost, it may turn out that is cost-neutral, or it may turn out that there is benefit (cost-saving), and that can only be determined after possible litigation.

    As I see it, filing a continuation instead of a C-I-P reduces the possible argument options in litigation – and that could cost.

    Of course, I could be wrong…

    In litigation, if there is intervening art,
    I could argue the original spec supported the claims,
    and if there is no intervening art,
    I could argue that the claims are only supported in the C-I-P’s additional disclosure.

    And if intervening art is alleged to (arguable) preempt the claims supported by the C-I-P filing, I’d have to fish or cut bait, i.e., s*it or get off the pot, i.e., take a definitive position under those circumstances at that time.

  16. The CIP is claiming priority to the earlier filed patent application. Regardless of whether it has been a year, as long as the prior application is pending.

    Are you telling me that if my client files a divisional, it publishes, then two years later, that client cannot file a divisional application to material not claimed in the original application?

  17. CIP’s are evil. Although examiners are supposed to search intervening art, in reality they seldom if ever do, especially in complicated situations. Claims in CIPs are often allowed even though relevant intervening art is never considered.

    Often the most relevant intervening art is the inventor’s own. Take the following situation for example:

    1. Narrow application is filed with 112 support only for narrow claims.
    2. Narrow application (or foreign counterpart) publishes.
    3. More than 1 year after publication, inventors generate additional data. Broader CIP is filed with broader claims that are supported by combination of original narrow disclosure and additional data.
    4. Examiner assumes CIP priority claim is valid for all claims and only searches pre-1st application prior art; doesn’t consider publication of earlier application.
    5. CIP issues with broad claims; however, these claims are invalid under 102 as being anticipated by publication of narrow priority document.

    See, e.g., Tronzo v. Biomet.

  18. Leopold Bloom, I passed the patent exam last week, but what I’d learned about CIP from a study material was more than what you mentioned. According to the study material, CIP also covers new improvements and new embodiments that are not supported in the original application (but are too obvious to file a new application.) Well, it may be just a theory. I know little about the actual use of CIP!

  19. I’d also like to add that the patent term is based on the earliest priority date CLAIMED upon issue of the patent.

    Even if NONE of the claims have an effective priority date of the parent application (because they lack 112 support in the parent), the patent term of the CIP is still based on the earliest claimed priority date.

  20. “Unless I’m mistaken, the PTO does not delve into which claims claim the benefit of the earlier date and which claims do not– that would only come up in litigation.”

    As Pillage suggests, you’re mistaken, or at least partly. I believe the PTO is supposed to search for art based on the later filing date of the CIP. If art pops up that falls between the filing dates, then the examiner is supposed to decide whether the claim(s) at issue is entitled to the earlier priority date. Whether this actually happens I can’t say.

    I would also quibble a bit with your contention that a CIP gives you the best of both worlds. To the extent that your CIP discloses new patentable subject matter, you’re giving up patent term for that subject matter. Your strategy may be completely appropriate, but it’s not costless.

  21. It can come up in prosecution if the Office feels that there is prior art that is invalidating under 102 or 103 that comes after the original filing date, but before the CIP.

  22. Dear Louis Diep,

    Re:
    “Will the enforceable patent term differ between the two sets of claims?
    The answer is NO, according to MPEP 2701, quoted below.
    ‘CONTINUING APPLICATIONS
    A patent granted on a … continuation-in-part application that was filed on or after June 8, 1995, will have a term which ends twenty years from the filing date of earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c) ….’”

    Unless I’m mistaken, the PTO does not delve into which claims claim the benefit of the earlier date and which claims do not– that would only come up in litigation.

  23. And who is the best at this? Somewhere on this blog years ago is the tree of filings from Monsanto on either their 35S promoter or their glyphosate tolerant patent. It is truly an amazing thing.

  24. Dear The Mad Professor, Leo and Alan McDonald,

    You’se guys is brilliant!

    Thanks for you comments –

    “… the only potential benefit of a CIP that I can think of is in a case where there’s some doubt as to the adequacy of the support in the original case.”

    No matter what the PTO decides about my C-I-P, such doubt is most likely to come up if there is litigation. So, I recently filed a C-I-P instead of a Continuation.

    I considered an RCE on certain disclosure for certain additional claims, but concluded that, even if I was successful at the PTO, in litigation, I’d still have a fight I could lose regarding the priority date of those claims.

    So, a C-I-P gave me the best of both worlds – if my C-I-P were successful at the PTO, I could argue the (benefit of) the later date and-or the earlier date in litigation, since the PTO’s NOA or other papers do not specify which claim gets which date. Thus, I could frame a more-informed litigation argument at a later date, during discovery or perhaps even later.

  25. Will the enforceable patent term differ between the two sets of claims?

    The answer is NO, according to MPEP 2701, quoted below.

    “CONTINUING APPLICATIONS
    A patent granted on a … continuation-in-part application that was filed on or after June 8, 1995, will have a term which ends twenty years from the filing date of earliest application for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c) ….”

  26. I mostly agree with Leopold Bloom, but I don’t take such a negative view of CIPs. It might be hard to determine whether a claim is fully enabled in an earlier filing, and it may also be ambiguous whether a public disclosure counts as a bar. In such cases, you want the chance of the earlier date.

  27. The Mad Prosecutor is correct. There is little (if any) benefit to a CIP any more, except perhaps to confuse readers of the patent. Indeed, if the proposed continuation rules go into effect, I would expect CIPs to almost vanish completely.

    JAOI, if a claim in the CIP is not supported (Section 112-style) in the original application, the effective filing date for that claim is the filing date of the CIP. If another claim is fully supported by the original application, the effective filing date for that claim is the filing date for the original application. Because you’re giving up term for the new material, the only potential benefit of a CIP that I can think of is in a case where there’s some doubt as to the adequacy of the support in the original case. Anybody else have a different view?

  28. Dear The Mad Prosecutor,

    Professor Crouch asked:
    “I should know this, but I don’t recall the answer: Suppose a recently issued patent was filed in 2004 and claims to be a continuation-in-part of another application filed in 2000. In the new patent, some of the claims were fully described and enabled in the 2000 application while other claims in the new patent include matter only found in the 2000 application. Will the enforceable patent term differ between the two sets of claims? If so, does the PTO require a terminal disclaimer if the claims are not patentably distinct?”

    You said:
    “The claims may have different effective filing dates, though.”

    I can guess at the answer, but please be more specific and clarify for ordinary inventors like me.

  29. The term of the patent is 20 years from the earliest US filing date, regardless of whether any claims have priority back to that date. The claims may have different effective filing dates, though.

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