patent assignment continuation

A license is a grant (assignment) to the licensee of various licensed rights. The situation can be further obscured by the fact that one can assign the licensed rights from one entity to another. Thus, the first recordation of a license may be recorded as a “license,” while the assignment of those same licensed rights to another entity may be recorded as an “assignment.” The only way to really understand the situation is to review the actual documents, which are all readily available from the recordation branch of the patent office.

Note that the patent office sometimes refers to licenses as a species of assignment. That is correct, because one is assigning license rights.

Not necessarily. Assignments are only needed if you are contractually obligated, by employment or otherwise, to make the assignment.

An important corollary is that an inventor can merely license his patent rights to a company that is exploiting the invention, and keep title to those rights in his own name. Investors are usually unhappy with that arrangement, but there can be significant advantages. One major advantage is that the patent holder is a “necessary and indispensable” to any litigation over patent validity. Any competitor trying to invalidate the patent must file the action in the district where the inventor resides.

Assignments of provisionals have substantially the same pros and cons as assigning formal utility and design applications. See the previous FAQ.

Since there are costs attending the handling and recording of assignments, many inventors and companies prefer to hold off on assigning provisional applications until filing of the corresponding formal (utility or PCT) applications. That is a dangerous strategy. In the interim between filing the provisional and the formal applications, there are all sorts of unfortunate events that can make later assignments difficult or impossible, including death or disability of an inventor, reluctance of an inventor to file an assignment due to a separation from a company, or divorce.

It is not technically necessary to re-file assignments for divisional or straight continuation applications. A properly worded prior assignment recorded against the original application is automatically effective because the assignment recorded against the parent application gives the assignee rights to the subject matter common to both applications.

In the case of a substitute or continuation-in-part application, a prior assignment of the original application is not applied to the substitute or continuation-in-part application because the assignment recorded against the original application gives the assignee rights to only the subject matter common to both applications. Substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee.

Absolutely. Indeed, it is a very common occurrence that an inventor will assign his invention to a company, and then the company will re-assign the rights after the patent issues.

Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office.

Note that the office charges US$ 40 for each patent or patent application listed on the recordation form. Thus, if an assignment references a family of 5 patent applications, the recordation fee is US$ 200. Of course paralegal charges would also apply, and possibly attorney time.

Under U.S. law, assignments must be recorded to be effective as against third parties who do not have actual knowledge of the assignment. The statute is similar to recording statutes used for recording real property. Thus, although there is no requirement to record an assignment, it is foolish not to do so.

Note that absent some unusual circumstance, patent assignments do not have to be notarized for use within the United States.

Preparing assignments is usually a simple matter of filling in the blanks of a form. Assignment forms (inventor to company and company to company) and guidelines for preparing such forms can be found in Strategic Patenting .

Note also that it is important to clearly identify whether the document being recorded is an assignment, license, or other document. The recording branch does not generally read the documents to verify the content.

The Patent office will proceed as if the signature had been procured from the inventor, but only after establishing that the entity pursuing the application has colorable rights, and only after establishing that the inventor cannot be reached. Thus, the patent office will need a copy of the employee agreement, assignment, or other documentary evidence establishing those rights.

In the case of a deceased inventor, the patent office will insist upon a statement from the executor of the estate, or an heir if probate is finished. Where the inventor refuses to sign, or cannot be found, the patent office will insist upon seeing the letters, emails and faxes sent to the inventor, and will need a declaration from the person trying to make contact.

One simply records a certificate of name change or other formal document with the USPTO, using the assignment recordation form.

In foreign countries, name changes can be a real problem, and can cost anywhere from several hundred to a thousand dollars (mostly in attorneys fees).

It depends on the wording of the assignment and the recordation laws of the foreign countries. Most assignments transfer all rights, title, and interest to U.S. patents and applications, and to corresponding foreign patents and applications. Even so, the assignments might not be legally effective in a given country until the assignment is recorded in that country.

Some countries insist on a specific assignment that expressly lists that country. Canada, for example, typically requires its own assignments.

Patent infringement damages accrue in some countries only from the date the assignment was actually recorded at the relevant patent office. Thus, delay in registering can cost a patent holder dearly in reduced patent infringement damages.

Ant-Like Persistence

Is it important to record assignments in divisional and continuation cases?

Assume for sake of discussion that a properly worded assignment has been executed and recorded for a US patent application. By this we mean an assignment that indeed settles ownership of of the subject matter of that patent application to the named applicant (typically a corporation or other legal entity that to which the inventors were obligated to assign the invention). Now assume that a continuation or divisional application gets filed pursuant to 35 USC § 120 (in this discussion I do not mean to assume a continuation-in-part). The question posed is:

Is it important, or even necessary, to record the assignment with respect to the child case?

In this blog article I will discuss factors that I can think of that might influence an applicant’s decision as to whether or not to go to the trouble of recording the assignment in the child case. I hope you, dear reader, will consider this question, and I hope you will post a comment below with your thoughts about this.

(I will mention that what prompted me to write this blog article is that a very nice patent firm in China asked me this question.)

So once again let’s make sure that we have our fact pattern fully set up. We are assuming for sake of discussion that the assignment that got recorded in the parent case was “good enough”. We assume that it really did legally serve to convey all rights to the correct entity.

The alert reader will realize that this is not always as easy as it might seem. One can imagine a fact pattern where an inventor previously executed some document that conveyed the patent rights, the result being that if the inventor were to execute a purported assignment today, the document signed today would not actually convey any rights. Another thing to keep in mind is that property law is state law, not federal law. It means that a particular attorney might not be admitted to practice in the state whose law actually applies to some inventor-and-employer fact pattern. But anyway, let’s assume for sake of discussion that somehow an appropriate assignment got prepared and signed and recorded and that it really did accomplish its legal goals.

And now there comes a reason to file a child case. Maybe it is a continuation application, maybe it is a divisional application.

Is it important to record the assignment again in the child case? Is it necessary to record the assignment in the child case? Is there some sense in which it might be said that a practitioner would be remiss if the practitioner were to fail to record the assignment in the child case?

A first thing to recall is why anybody records any assignment at the USPTO. We need to remind ourselves that it is not the recording of an assignment that brings about the change of ownership of the property. It is the execution of the document itself (or the satisfaction of the terms of the document) that brings about the change of ownership of the property. If the document was signed on a Monday and was recorded the next day (Tuesday), and later somebody asks “on what day did the invention actually change hands?” the answer is not Tuesday. The fact that Tuesday was the day that recordation happened does not in any way mean that Tuesday is the day that the change of ownership took place.

There are some countries around the world where if you want to know who owns a patent, the way you get the answer is pretty much by asking the patent office in that country. The patent office has people who review documents such as assignments. Part of the reason for filing an assignment with a patent office in such a country is so that the people in that patent office can review the assignment for this purpose.

But that is not at all what happens at the USPTO. When the USPTO carries out the recordation of an assignment (or a recordation of any other “document pertaining to title”), the USPTO does not actually evaluate the document to arrive at any legal conclusion. The party submitting the document provides a “recordation cover sheet” which sets forth the purported effect of the document. The submitter, in other words, represents to the USPTO that the document supposedly is legally effective to transfer the rights from somebody to somebody else. But there could (to give a silly example) be a “not” in the middle of the document that actually says that the document does not transfer such rights, and if so, there is nobody at the USPTO in the Assignment Branch whose job it is to catch the presence of such a “not” in the middle of the document.

No, if you want to know who owns a US patent, you cannot find out the answer by asking the USPTO. There is no USPTO database that contains the results of document reviews carried out by USPTO personnel on the topic of who owns a particular US patent. Yes, you can obtain what is called an “Abstract of Title” from the USPTO for any US patent. It will list, one by one, every document relating to title that has been recorded at the USPTO for that US patent. It will say that Assignor A has assigned to Assignee B in a first document. It will say that Assignor B has assigned to Assignee C in a second document.

You might think by paying a few dollars to the USPTO for an Abstract of Title, and by receiving the Abstract of Title from the USPTO, and by looking at the Abstract of Title, and by seeing “A to B” and “B to C” in the Abstract of Title, that this means the USPTO is telling you that the owner is C. You might think that this that this means you can relax and now you know who the owner is.

Not in the slightest. For one thing, there might be a “not” in the middle of one of the recorded documents. Nobody at the USPTO was checking for such things.

No, to arrive at a legal conclusion as to who owns that US patent, somebody, probably an attorney, would need to study the Abstract of Title and the underlying documents, and would probably need to review the rest of the context. Only then could the attorney opine as to who actually owns that US patent.

Returning now to why anybody records anything at the USPTO. The point of recording at the USPTO is basically to put third parties on notice that some document exists. The document might be an assignment, it might be a lien, it might be a UCC security interest. But anyway, the point of the recordation is simply to put the world on notice that some document exists. It is then up to any interested party to review the document and to independently evaluate the document as to its legal import. (There might, after all, turn out to be a “not” in the middle of the document.)

A chief reason for recording is to comply with 35 US Code § 261. 35 US Code § 261 says, among other things:

An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

The alert reader will appreciate that this language means that a practitioner who has his or her hands on a signed assignment should try very hard to get the assignment recorded at the USPTO within three months of the date upon which the assignment was signed. It is arguably malpractice avoidance to get any assignment recorded well before the expiration of three months from the date that the assignment was signed, because of the language of 35 US Code § 261.

The reality is that any member of the public knows, or should know, that the only way to find out who owns any particular patent is by hiring hiring competent counsel who can then opine as to who owns the patent. Stating this another way, any member of the public knows, or should know, that it would be a mistake simply to look at an Abstract of Title as a way of supposedly finding out who is the owner of a particular patent.

So let’s talk about what would happen if the patent of interest happens to be a continuation or divisional patent. One of the first things that competent counsel would notice is indeed that it is a child case of a parent case. Competent counsel would then among other things order up an Abstract of Title of the parent case. This would then put competent counsel on notice of the assignment that had been recorded with respect to the parent case. Probably the wording of the assignment will turn out to cover the invention in the child case as well. If so, then competent counsel will render an opinion that the owner of the child case is the same as the owner of the parent case.

Note that for this conclusion to work out this way, it is not at all necessary that any recordation have taken place in the child case.

But now let’s change the fact pattern a bit. Let’s assume that the member of the public fails to hire competent counsel. Let’s suppose that the member of the public labors under a completely false assumption that one may learn who owns a US patent by ordering up an Abstract of Title from the USPTO for that US patent. And let’s assume that the particular US patent happens to be a continuation or divisional and the applicant chose to record only in the parent case.

What could happen next is that this member of the public could arrive at an incorrect conclusion as to who owns the US patent.

To the extent that we feel like this is a problem that needs fixing (somebody who should have known enough to hire counsel, but failed to do so), we can avert the problem in advance by … yes … recording the assignment at the USPTO in the child case. Recording the assignment in the child case means that the assignment will turn up in an Abstract of Title in the child case. Putting this in colloquial terms, recording the assignment in the child case means that even people who do not know enough to hire competent counsel will be saved from the mistake of having failed to hire competent counsel, and will be put on notice of assignments in situations like this.

But from this discussion we can see a point of view from which it is quite unnecessary to carry out any recordation in a continuation or divisional case, so long as a satisfactory recordation was carried out in the parent case. After all, any member of the public who is well informed will know to hire counsel when investigating ownership of a patent, and counsel will know to check ownership of a parent case.

When I was first in practice, any recordation of a patent assignment required payment of a government fee to the USPTO. It was thus a natural reaction on the part of a practitioner to try to figure out ways to save money for the client in terms of government fees. So far as recordations of assignments were concerned, in those days what I would do included:

almost never recording any assignment in any continuation or divisional case (so as to avoid having to pay the associated government fee), and
saving up recently signed assignments from various inventors to record them all at once in a batch (so as to pay just one government fee instead of several government fees for several distinct recordations).

But about ten years ago, the USPTO stopped charging any government fee for e-filed patent assignments. So to the extent that a goal of saving money on government fees might once have been a reason for refraining from recording in child cases, that reason no longer applies.

Another factor that cannot be ignored is that if a child recordation is being carried out by a practitioner, then the practitioner will doubtless feel the need to charge a professional fee.

Consider the client whose point of view is that it is unnecessary to record an assignment in a continuation or divisional case, so long as a satisfactory recordation was carried out in the parent case. Such a client would likely feel that if US counsel were to carry out an (otherwise unnecessary) recordation in a child case, followed by sending a bill to the client, this might count as “churning” the file to run up the bill.

Consider on the other hand the client whose point of view is that of a small start-up company, for which in the near future a due diligence inquiry might take place. And suppose the client wants to provide for the possibility that the due diligence person might not understand very much about how to evaluate patent ownership in the US. The way to be on the safe side is to carry out a recordation in every child case, so that an Abstract of Title for any child case will list the assignment. This will minimize the risk that a poorly informed due diligence person will labor under a misimpression as to whether client has fully attended to its paperwork burdens about recording assignments.

Having said all of this, we can recognize that as a general matter it will almost always turn out that a continuation or divisional application will get filed much more than three months after the date that the assignment got signed in the parent case. This means that the recordation date for any recordation of the assignment in the child case will be far later than the three-month date set forth in 35 US Code § 261. So the three-month period set forth in 35 US Code § 261 will simply almost never play a part in the planning process for recordations in child cases.

Suppose a practitioner is sitting on an assignment that was signed more than three months ago and has not yet been recorded at all. Is it still worthwhile to get it recorded? Yes of course! See this blog article .

Suppose a PCT application was filed at a Receiving Office that is not RO/US. Can an assignment of that PCT application be recorded at the USPTO? Yes. See this blog article .

Now we add one more layer to the discussion. Many an assignment will be seen to contain boilerplate that recites that the assignment not only covers some particular patent application, but also covers “any and all continuations and divisionals thereof”. Does the presence or absence of such boilerplate change any of the factors just discussed? Of course one cannot answer this in a general way without seeing the rest of the language of the document. But assuming that the document has language that conveys something like “the invention set forth in the document” then I suggest it probably conveys the invention set forth in the continuation or divisional.

It is completely a separate question to talk about, for example, a continuation-in-part. A CIP contains subject matter not found in the parent. Barring some surprise about the situation, you are going to want to get a new assignment covering that new matter.

What do you think about all of this? Do you think it is important to record an assignment in a continuation or divisional case? Please post a comment below.

Patent Assignment: How to Transfer Ownership of a Patent

By Michael K. Henry, Ph.D.

Intellectual Property
Patent Prosecution

This is the second in a two-part blog series on owning and transferring the rights to a patent. ( Read part one here. )

As we discussed in the first post in this series, patent owners enjoy important legal and commercial benefits: They have the right to exclude others from making, selling, using or importing the claimed invention, and to claim damages from anyone who infringes their patent.

However, a business entity can own a patent only if the inventors have assigned the patent rights to the business entity. So if your employees are creating valuable IP on behalf of your company, it’s important to get the patent assignment right, to ensure that your business is the patent owner.

In this post, we’ll take a closer look at what a patent assignment even is — and the best practices for approaching the process. But remember, assignment (or transfer of ownership) is a function of state law, so there might be some variation by state in how all this gets treated.

What Is a Patent Assignment and Why Does it Matter?

A patent assignment is an agreement where one entity (the “assignor”) transfers all or part of their right, title and interest in a patent or application to another entity (the “assignee”).

In simpler terms, the assignee receives the original owner’s interest and gains the exclusive rights to pursue patent protection (through filing and prosecuting patent applications), and also to license and enforce the patent.

Ideally, your business should own its patents if it wants to enjoy the benefits of the patent rights. But under U.S. law , only an inventor or an assignee can own a patent — and businesses cannot be listed as an inventor. Accordingly, patent assignment is the legal mechanism that transfers ownership from the inventor to your business.

Patent Assignment vs. Licensing

Keep in mind that an assignment is different from a license. The difference is analogous to selling versus renting a house.

In a license agreement, the patent owner (the “licensor”) gives another entity (the “licensee”) permission to use the patented technology, while the patent owner retains ownership. Like a property rental, a patent license contemplates an ongoing relationship between the licensor and licensee.

In a patent assignment, the original owner permanently transfers its ownership to another entity. Like a property sale, a patent assignment is a permanent transfer of legal rights.

U sing Employment Agreements to Transfer Patent Ownership

Before your employees begin developing IP, implement strong hiring policies that ensure your IP rights will be legally enforceable in future.

If you’re bringing on a new employee, have them sign an employment agreement that establishes up front what IP the company owns — typically, anything the employee invents while under your employment. This part of an employment agreement is often presented as a self-contained document, and referred to as a “Pre-Invention Assignment Agreement” (PIAA).

The employment agreement should include the following provisions:

Advance assignment of any IP created while employed by your company, or using your company’s resources
An obligation to disclose any IP created while employed by your company, or using your company’s resources
An ongoing obligation to provide necessary information and execute documents related to the IP they created while employed, even after their employment ends
An obligation not to disclose confidential information to third parties, including when the employee moves on to a new employer

To track the IP your employees create, encourage your employees to document their contributions by completing invention disclosure records .

But the paperwork can be quite involved, which is why your employment policies should also include incentives to create and disclose valuable IP .

Drafting Agreements for Non-Employees

Some of the innovators working for your business might not have a formal employer-employee relationship with the business. If you don’t make the appropriate arrangements beforehand, this could complicate patent assignments. Keep an eye out for the following staffing arrangements:

Independent contractors: Some inventors may be self-employed, or they may be employed by one of your service providers.
Joint collaborators: Some inventors may be employed by, say, a subsidiary or service company instead of your company.
Anyone who did work through an educational institution : For example, Ph.D. candidates may not be employees of either their sponsoring institution or your company.

In these cases, you can still draft contractor or collaborator agreements using the same terms outlined above. Make sure the individual innovator signs it before beginning any work on behalf of your company.

O btaining Written Assignments for New Patent Applications

In addition to getting signed employment agreements, you should also get a written assignments for each new patent application when it’s filed, in order to memorialize ownership of the specific patent property.

Don’t rely exclusively on the employment agreement to prove ownership:

The employment agreement might contain confidential terms, so you don’t want to record them with the patent office
Because employment agreements are executed before beginning the process of developing the invention, they won’t clearly establish what specific patent applications are being assigned

While you can execute the formal assignment for each patent application after the application has been filed, an inventor or co-inventor who no longer works for the company might refuse to execute the assignment.

As such, we recommend executing the assignment before filing, to show ownership as of the filing date and avoid complications (like getting signatures from estranged inventors).

How to Execute a Written Patent Agreement

Well-executed invention assignments should:

Be in writing: Oral agreements to assign patent rights are typically not enforceable in the United States
Clearly identify all parties: Include the names, addresses, and relationship of the assignor(s) and assignee
Clearly identify the patent being assigned: State the patent or patent application number, title, inventors, and filing date
Be signed by the assignors
Be notarized : If notarization isn’t possible, have one or two witnesses attest to the signatures

Recording a Patent Assignment With the USPTO

Without a recorded assignment with the U.S. patent office, someone else could claim ownership of the issued patent, and you could even lose your rights in the issued patent in some cases.

So the patent owner (the Assignee) should should record the assignment through the USPTO’s Assignment Recordation Branch . They can use the Electronic Patent Assignment System (EPAS) to file a Recordation Cover Sheet along with a copy of the actual patent assignment agreement.

They should submit this paperwork within three months of the assignment’s date. If it’s recorded electronically, the USPTO won’t charge a recordation fee .

Need to check who owns a patent? The USPTO website publicly lists all information about a patent’s current and previous assignments.

When Would I Need to Execute a New Assignment for a Related Application?

You’ll need only one patent assignment per patent application, unless new matter is introduced in a new filing (e.g., in a continuation-in-part , or in a non-provisional application that adds new matter to a provisional application ). In that case, you’ll need an additional assignment to cover the new matter — even if it was developed by the same inventors.

What If an Investor Won’t Sign the Written Assignment?

If you can’t get an inventor to sign an invention assignment, you can still move forward with a patent application — but you’ll need to document your ownership. To document ownership, you can often rely on an employee agreement , company policy , invention disclosure , or other employment-related documentation.

D o I Need to Record My Assignments in Foreign Countries?

Most assignments transfer all rights, title, and interest in all patent rights throughout the world.

But in some countries, the assignment might not be legally effective until the assignment has been recorded in that country — meaning that the assignee can’t enforce the patent rights, or claim damages for any infringement that takes place before the recordation.

And there might be additional formal requirements that aren’t typically required in the United States. For example, some countries might require a transfer between companies to be signed by both parties, and must contain one or both parties’ addresses.

If you’re assigning patents issued by a foreign country, consult a patent attorney in that country to find out what’s required to properly document the transfer of ownership.

N eed Help With Your Patent Assignments?

Crafting robust assignment agreements is essential to ensuring the proper transfer of patent ownership. An experienced patent professional can help you to prepare legally enforceable documentation.

Henry Patent Law Firm has worked with tech businesses of all sizes to execute patent assignments — contact us now to learn more.

GOT A QUESTION? Whether you want to know more about the patent process or think we might be a good fit for your needs – we’d love to hear from you!

Michael K. Henry, Ph.D.

Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.

10 Jan 2024

Geothermal Energy: An Overview of the Patent Landscape

By Michael Henry

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What is a continuation patent application?

June 15, 2010 by James Yang

A continuation application is a refiling of a parent application that allows a patent applicant to pursue claims similar to the parent application. For example, the claims in the continuation application can:

seek broader patent protection compared to the parent application; and
reinforce any weakness in the claims of the parent application (i..e, go after design around ).

The continuation application must be filed while the parent application is still pending. It must also include a claim of priority back to the parent application. By doing so, the priority date of the continuation application receives the benefit of the filing date of the parent application. The cost to prepare and file the continuation patent application is about $1,000 to $2,000 plus the cost to prepare the new claims.

How does a continuation application allow you to seek broader patent protection?

In the continuation application, you can submit any claim that’s supported by the specification. As such, if you received narrow claims through the parent application, you can submit broader claims in the continuation application as long as the broader claims are supported by the specification.

Let’s discuss how this situation might arise.

During the examination of a patent application, the examiner may allow a narrow claim (i.e., species) to mature into a patent. The inventor has the opportunity to accept or reject what the examiner has allowed. If the inventor accepts it, then the inventor is accepting a narrower claim than he or she would have wanted.

But, all hope for broader protection isn’t lost.

The inventor could accept the narrow claim and allow the narrow claim to mature as a patent . Simultaneously, the inventor could file the continuation application. In the continuation application, broader claims are submitted. In this way, you can have your patent and also fight for broader patent protection through the continuation application.

How does a continuation application allow you to submit claims against a design around?

The continuation application allows the inventor to submit claims against a design around. A design around is a competitor’s product that is not identical to your patented product but yet still avoids patent infringement . If this happens, your patent is essentially worthless. Fortunately, if you have a continuation application on file and still pending, you can submit claims that cover the design around. If allowed, then you can sue the competitor for patent infringement.

Let’s discuss how this situation would arise.

During examination of the parent application, the examiner allows a claim. You accept it and pay the issue fee resulting in a granted patent. A competitor inspects your patent and finds a weakness. If they change the product, it avoids infringement. At that point, you can’t sue them for patent infringement.

Fortunately, the continuation patent application must still be a pending patent application. If yes, the inventor can look at that design around and submit claims without that weakness. The goal is to use the continuation patent application as the means to submit new claims that cover the design around and get them into a patent. If the new claim is allowed, then the inventor can sue the competitor for patent infringement. Without the continuation application, the competitor has avoided patent infringement. The scope of patent protection of the original patent is limited to the granted patent.

Why would competitors try to design around your patent?

Competitors would prefer to use a design around than seek a license from patent owners. It is a much cheaper and simpler solution.

However, with the continuation, even if the granted patent only has narrow claims, the calculus as to whether the competitor can avoid patent infringement is much harder to determine. The inventor can resubmit claims directed to the competitor’s design around. Their counsel will let them know of the pending continuation patent application and the inventor’s option to resubmit new claims.

What’s the difference between a continuation, divisional and continuation-in-part patent application?

A continuation application is a refiling of a parent application that allows a patent applicant to pursue claims similar to the parent application.

A divisional patent application is also a refiling of the parent application but the claims are directed to other aspects of the invention.

A continuation-in-part (CIP) application is a refiling of the same specification as in the parent application but also includes information about additional features of the invention. The claims are directed to the additional features. A CIP does not need to be filed. Instead, the application can be filed as a stand-alone nonprovisional patent application. The benefit of filing the CIP application is that the patent applicant has only one patent family to manage. The downside to filing the CIP application is that the patent term of any patent maturing from the CIP application would be shortened.

Should you have any questions, please feel free to contact me at 949-433-0900 or [email protected] .

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A Brief Guide to Subsequent Patent Applications in the United States: Part I – The Foundation

“Many patent practitioners are not fully aware of the implications of subsequent applications, either for prosecution or for litigation.”

https://depositphotos.com/212778822/stock-photo-patent-applicaiton-approved-new-invention.html

The filing of continuation, continuation-in-part, and divisional applications is limited by the co-pendency requirement of 35 U.S.C. § 120: each subsequent application cannot be filed after the issuance, expiration, or abandonment of the parent application from which it immediately depends. After issuance, for example, an applicant can only seek to add claims by filing a reissue application. 35 U.S.C. § 251. This piece will not address reissue applications, reexamination requests, post-grant proceedings, or requests for continuing examination (RCE).

A patent application may have its origins in one or more earlier filed applications. An applicant may file a continuation, divisional, or continuation-in-part (CIP) application of a prior application, all of which the U.S. Patent and Trademark Office (“USPTO”) characterizes as “continuing” applications. See MPEP § 201.11 . The USPTO has also noted that the expressions “continuation,” “divisional,” and “continuation-in-part” are merely terms used for administrative convenience. See MPEP § 201.11; Transco Products Inc. v. Performance Contracting, Inc ., 38 F. 3d 551,555 (Fed. Cir. 1994). In general, a continuing application is one filed during the pendency of another application which contains at least part of the disclosure of the other application and names at least one inventor in common with that application.

As discussed more fully herein, “continuation” and “divisional” applications are alike in that they are both continuing applications based on the same disclosure as an earlier application, without more. They differ, however, in what they claim. A “continuation” application comprises claims directed to the same invention claimed in an earlier application, although there may be some variation in the scope of the subject matter claimed. See MPEP § 201.07 . A “divisional” application, on the other hand, is one carved out of an earlier application which disclosed and claimed more than one independent invention, the result being that the divisional application claims only one or more, but not all, of the non-claimed independent inventions of the earlier application. See MPEP § 201.06 . A “CIP” application is a continuing application comprising all or a portion of the disclosure of an earlier application together with newly added matter not present in that earlier application. See MPEP § 201.08.4 The term “parent” is often used to refer to the immediately preceding application from which a continuing application claims priority; the term “original” is used to refer to the first application in a chain of continuing applications. See MPEP §§ 201.04, 201.04(a) .

For these subsequent applications, U.S. Patent Law (unless noted otherwise, the “U.S. Patent Law” cited herein is the America Invents Act (AIA), implemented September 16, 2012, and applicable to all applications filed after March 16, 2013) requires that the subsequent (or “child”) patent application “contain a specific reference to [each] earlier filed application” to which it purports to claim priority. 35 U.S.C. § 120 (§120 became statutory law in 1952 and has its origins in patent office practice and case law – see Racing Strollers, Inc. v. TRI Indus., Inc. , 878 F.2d 1418, 1421 (Fed. Cir. 1989)). For example, the Supreme Court, long ago, explained that under §120, parent and continuing applications “are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law.” Godfrey v. Eames , 68 U.S. 317, 326, 1 Wall. 317 (1863). Note, however, that these cases dealt only with the issue of priority, and not with USPTO procedure for examining a continuation application in light of its parent. For a specific reference to have effect, U.S. Patent Law provides that the application must be co-pending with one or more of the earlier-filed application(s), e.g. the first application of the family or one or more later-filed applications “similarly entitled” to the benefit of the first application’s filing date. 35 U.S.C. § 119 Although most commonly cited for non-provisional patent applications, 35 U.S.C. § 119(e)(1) recites parallel requirements to claim priority from an earlier-filed U.S. provisional application, stating “[n]o application shall be entitled to the benefit of an earlier filed provisional application … unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director.” However, as provisional patent applications cannot themselves be continuation, continuation-in-part, or divisional applications, this blog will not address provisional patent applications.

Understanding the Hierarchy

The authors note that in the hierarchy of binding authority, first there is the U.S. Constitution, followed by statutory laws such as the AIA (35 U.S.C. § 101 et seq. ) , and then case law interpreting and applying that law – these are primary, binding authorities. The regulations found in the U.S. Code of Federal Regulations (CFR) are considered as legally binding as any Federal Statute only if the given rule or regulation therein is a “reasonable interpretation” of the specific statute(s) enabling that rule or regulation (this is known as the “Reasonable Interpretation” rule). Along these lines, the AIA authorizes the USPTO to promulgate regulations governing the administration of certain proceedings, see, e.g ., 35 U.S.C. § 316(a) (governing inter partes review under this chapter), and the Federal Circuit generally holds that “where a statute leaves a ‘gap’ or is ‘ambigu[ous],’ we typically interpret it as granting the agency leeway to enact rules that are reasonable in light of the text, nature, and purpose of the statute.” Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131,2142 (2016) (quoting United States v. Mead Corp ., 533 U.S. 218, 229 (2001)). When the Board issues such rules, the Federal Circuit “accept[s] the Board’s interpretation of [them] unless that interpretation is ‘plainly erroneous or inconsistent with the regulation.’” In re Sullivan , 362 F.3d 1324, 1326 (Fed. Cir. 2004) (quoting Eli Lilly Co. v. Bd. of Regents of the Univ. of Wash ., 334 F.3d 1264, 1266 (Fed. Cir. 2003)). On the other hand, “[t]he MPEP and Guidelines are not binding on court[s]” but they “may be given judicial notice to the extent they do not conflict with the statute.” In re Fisher , 421 F.3d 1365 (Fed. Cir. 2005). The authors therefore cite to the MPEP in this article as infrequently as we can.

The USPTO issued 37 C.F.R. § 1.78 , which implements these statutes and requires that an application contain a specific reference to each prior-filed application to which the application seeks to claim priority. Specifically, §1.78 provides that the application claiming the benefit of one or more prior-filed, co-pending non-provisional applications must include “a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number)” and indicating “the relationship of the applications (i.e., whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application or international application).” 37 C.F.R. § 1.78(d)(3) (2009). Note that all the prior applications need not be co-pending. It further states that the reference “must be included in an application data sheet …, or the specification must contain or be amended to contain such reference in the first sentence(s) following the title.” Droplets, Inc. v. E* Trade Bank , 887 F.3d 1309,1316 (Fed. Cir. 2018). Consistent with 35 U.S.C. § 120 and 37 C.F.R. § 1.78, the MPEP provides detailed guidance on how to claim priority from multiple prior-filed applications. It states that “[t]he reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications.” MPEP § 201.11 III.C.[3]

Chain of Priority

The Federal Circuit has noted that a patentee is the person best suited to understand the genealogy and relationship of her applications and, therefore, that a requirement for her to clearly disclose this information should present no hardship. Medtronic CoreValve v. Edwards Lifesciences Corp ., 741 F. 3d 1359,1366 (Fed.Cir. 2014). However, although such a chain of priority should be specified upon filing the subsequent application, subsequently amending an application to change its relationship to a prior-filed application — for example, from a CIP application to a divisional application — is expressly permitted. In re Janssen Biotech, Inc ., 880 F. 3d 1315,1324 (Fed.Cir. 2018), citing 37 C.F.R. § 1.78(d)(2) (2015) (providing that the specification must “contain or be amended to contain a reference to each such prior-filed application” and that “reference also must identify the relationship of the applications”) (emphasis added); see also MPEP § 211.03 (permitting the correction of “a timely submitted benefit claim” by “[c]hanging the relationship of the applications (e.g., changing … from ‘continuation-in-part’ to ‘continuation’ or ‘divisional’)”).

Language Matters

One further note: the Federal Circuit has used and interpreted the phrase “this application” in the self-referential sense to mean the “present application.” See, e.g., Santarus, Inc. v. Par Pharm., Inc. , 694 F.3d 1344, 1360-61 (Fed.Cir.2012) (Newman, J., concurring-in-part and dissenting-in-part) (noting that the patent application properly claimed priority under § 120 when it disclosed all prior applications with “no break in the chain of priority” and concluded with, “This application claims priority to all such previous applications….”); Broadcast Innovation, L.L.C. v. Charter Commc’ns, Inc. , 420 F.3d 1364, 1366 (Fed. Cir. 2005) (interpreting “[t]his application is a divisional” to set forth the priority chain of the present application); Zenon Envtl., Inc. v. U.S. Filter Corp . , 506 F.3d 1370, 1383 (Fed.Cir.2007) (interpreting “[t]his application is a continuation of” to set forth the chain of co-pending applications from the present application). Nonetheless, “present application” is a phrase that should be used lightly, if at all, given that it can be applied to an application or issued patent to create disclaimers and estoppel. See “Avoiding the Present (Invention),” Patent, Trademark and Copyright Journal (BNA), February 17, 2006.

In Part II of this series, we will review the different types of subsequent applications.

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Join the Discussion

David boundy.

Dear Gary and Jeff —

The discussion of administrative law and rulemaking isn’t quite right. Lots of regulations are as binding as statute, even if they aren’t “reasonable interpretations.” Regulations are regulations, and Chevron -eligible interpretations are Chevron -eligible interpretations, two fundamentally different and analytically-distinct concepts, arising under two entirely different heads of authority (regulations are statutory, Chevron is purely common law). The two have some overlap, but that’s all that can be said.

Judge Plager recommended that the patent bar would do well to read one of my articles, The PTAB is Not an Article III Court, Part 1: A Primer on Federal Agency Rule Making , Landslide (American Bar Ass’n), vol. 10, no. 2, pp. 9-13, 51-57 (Nov/Dec 2017), available at SSRN https://ssrn.com/abstract=3258044

More detail on this topic is in The PTAB Is Not an Article III Court, Part 3: Precedential and Informative Opinions , 47 AIPLA Q.J. 1-99 (June 2019), updated edition available at SSRN https://ssrn.com/abstract=3258694

Jeffrey L. Wendt

Thanks for all the comments and discussion.

Point well-taken with respect to the first comment. We probably should have finessed this more:

Article: “A ‘continuation’ application ‘usually’ comprises claims directed to the same invention claimed in an earlier application, although there may be some variation in the scope of the subject matter claimed, ‘but neither law nor statue requires that the claims be directed to the “same invention.”‘ See MPEP § 201.07.” That said, the MPEP is not controlling, as one commenter noted.

With respect to benefit claims, (Gary, my esteemed co-author may disagree) I always put the benefits claim(s) in the first sentence of the spec, despite what the MPEP may say about only the ADS having any significance. I have never had an examiner complain about it.

10/4 on checking the Official Filing Receipt for errors. After many mis-spellings of inventors names by the PTO application pre-exam folks, I always use ALL CAPS in inventor names on the ADS.

Good point, ipguy.

The ADS is an official USPTO form. While it is referenced in the MPEP, a form is something separate and apart from the MPEP itself.

Hard experience has taught me to always check the post-filing documents the USPTO sends you to confirm that the listed inventorship (and residence addresses), priority claim, entity status, etc. is correct. That is certainly the first place you’ll see whether or not the USPTO has recognized your priority claim.

An improper priority claim in the ADS (and they happen for a number of reasons including two numbers being transposed or a number being left off; continuation being used instead of continuation-in-part, etc.) is much easier to fix if the specification has a priority claim with the correct US serial numbers.

I just noticed your item (this may have been a first post from you, and there is typically some small delay for spam control on new posters).

As you likely know, the MPEP is not controlling law for applicants. Note as well the additional ‘permissive’ language in the MPEP section that you provided: … are ALSO presented…

This is an administrative notice of how the Office has stated it will process certain information. Like other (and other substantive points), the MPEP may well be legally incorrect, and in such cases, very much sets a trap for the unwary.

@7 Count your blessings.

Anon @ 4. I always put the priority chain in the first sentence and had this issue brought up by an examiner, although in my case the examiner quickly backed off.

On the USPTO forms page, the Instructions for Application Data Sheet (ADS) 37 CFR 1.76 Updated November 16, 2015 states near the bottom of page 5 “Note for applications filed on or after September 16, 2012: Domestic benefit claims must be presented in the Application Data Sheet only. Domestic benefit information provided in the first sentence(s) of the specification will not be recognized by the Office unless the domestic benefit claims are also presented in the Application Data Sheet.”

There is underlining and bold font in the original, including the first phrase and the word “only.” I know that in court the MPEP is not controlling. Would these instructions be controlling? I can see a time coming when some poor patent attorney finds out that by leaving the chain of priority out of the specification, an infringer challenges the priority claim which is only in the ADS. Will the infringer win and have the patent invalidated over its parent which becomes prior art?

This is sort of like a specification issue in US District Court for the Northern District of California in case no. 01-CV-4204. Judge Seeborg ruled that circuit schematic shown in the patent drawings were not considered to be part of the specification and thus could not support a claim element. That a schematic diagram of a claimed circuit is not a sufficient disclosure, proves once again ladies and gents that the belt and suspenders approach to writing patent applications is best. Put it all in the written specification, even if it is redundant.

Thanks, ipguy. I have to wonder how widespread that is, as most of the dealings that I have had with such clerical staff (and a bunch of recent ones dealing with a transferred-in portfolio) have been in the opposite direction.

Nice job guys — thanks. Looking forward to the entire series.

I would just point out one “nuance” concerning divisionals.

You state, “A ‘divisional’ application, on the other hand, is one carved out of an earlier application which disclosed and claimed more than one independent invention … ”

In addition to requiring a divisional in the event of two or more claimed independent (i.e. unrelated) inventions in the same application, the Office may also require (subject to applicant’s rebuttal / traversal) one or more divisionals in the event of an application when two or more distinct (i.e., related but patentably distinct) inventions are claimed in the same application:

https://www.uspto.gov/web/offices/pac/mpep/s802.html

I apologize for some lack of clarity on my part. I wasn’t trying to imply that including a priority claim paragraph shouldn’t be done. I’m one of the practitioners that includes it. When I said, the USPTO doesn’t event want applicants to include the priority claim, I wasn’t speaking in terms of stated USPTO policy. It’s based on “unofficial” policy from my experiences with USPTO clerical personnel a few times when I tried to submit a Preliminary Amendment amending the spec to include a priority claim in a continuation application. When I stated that the rules indicate that a prior claim should be included in the specification, USPTO personnel were insistent that amending the specification was not necessary, that they don’t want or need it, and all that mattered was the priority claim was in the ADS. You can point to 37 CFR 1.78 (a)(3),(d)(2), and (h) to your hearts content, and you will still get an insistence that all that matter is the ADS. I’ve learned to never argue with USPTO clerical personnel. Just thank them politely for their time, and move on.

I found your comment of “ The USPTO doesn’t even want applicants to include a priority claim section at the beginning of the specification when the application is filed ” more than a bit interesting, as I have very much seen the opposite (and across the board, from the Office to the clients, wanting this to be done – and to be done correctly).

Not saying that you are wrong, per se – but would be interested in any Office statements in support of that position.

I don’t mean to be nit-picky but the “Language Matters” section fails to discuss that the language in the Application Data Sheet with regard to claiming the benefit of priority is what really matters these days. From what I’ve seen, the ADS is where the USPTO is pulling it’s priority claim language from for use in published applications and issued patents. The USPTO doesn’t even want applicants to include a priority claim section at the beginning of the specification when the application is filed (though many practitioners still include one just in case there is an ADS screw-up).

Mr. Doerre,

I concur that that section appears to be a bit messy.

It may also help to note that Divisionals are typically at the direction of the Patent Office, as a result of Restriction Requirements – and such restriction requirements carry with them an admission from the Office that the resulting items are patentably distinct, and thus no ‘joinder’ of the products (end patents) is required.

Article: “A ‘continuation’ application comprises claims directed to the same invention claimed in an earlier application, although there may be some variation in the scope of the subject matter claimed. See MPEP § 201.07.”

This seems misleading, particularly when juxtaposed with the very next claim that “[a] ‘divisional’ application, on the other hand, is one carved out of an earlier application which disclosed and claimed more than one independent invention.” The implication seems to be that a continuation must have “claims directed to the same invention claimed in an earlier application.”

However, MPEP 201.07 makes clear that “[a] continuation application is an application for the invention(s) disclosed in a prior- … application.”

That is, what is relevant for a continuation is that it claim one or more “invention(s) disclosed in a prior- … application,” MPEP 201.07, not that it have “claims directed to the same invention claimed in an earlier application.”

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Patent Continuation: A Comprehensive Guide to Evolving Your Patent Protection

June 2, 2023

The Intelligent IP Quiz

Whether you are considering filing or have already filed your patent application, it is crucial for inventors and startups alike to have a surface-level understanding of patent applications, patent continuation and the importance of strategic patent filings.

Considering the pace at which technology is constantly advancing, it is often wise to consider continually refining and expanding the scope of your patent claims to capture the full scope of your patentable invention’s potential . While one patent application may protect your existing invention, it is just as important to continue to protect ongoing improvements to your inventions.

This is where continuation patent applications can be particularly useful. This article will highlight everything you need to know about the importance of evolving your patent through a continuation patent application.

Continuation patent applications explained. What is a continuation of a patent?

Continuation patent applications are an essential tool for inventors and startups in the pursuit of deep and prolonged protection of their technologies. In essence, a continuation application is a separate application that allows you to pursue additional claims that are based upon the same description and disclosures as the original patent application; also known as the “parent” application. Continuations may protect previously describe iterations of your invention, or in the case of continuations-in-part, new iterations.

There are several statutory requirements a continuation must satisfy. According to the United States Patent and Trademark Office (USPTO), this second application must be filed before the original application becomes either abandoned or issued. To ensure the continuation remains limited to the disclosures of the original patent application, it should not include or claim anything that would be considered new subject matter if it was inserted into the original application.

Filing a continuation is an effective way to take your initial application and turn it into two or more patents and is a strategy every successful applicant considers. Since you cannot include any new matter in your continuation, the original application should aim to combine claims that are both broad and narrow in scope so that a door is left open for a continuation to address individual claims that may have been objected to or rejected.

Drafting a comprehensive claim set during this initial phase ensures that those who may attempt to use your patented technology later will face significant legal hurdles. In doing so, it is possible that the original application will describe multiple inventions or multiple embodiments of an invention, and it may only receive protections for a subset of the disclosed invention(s).

Thus, before the parent application is issued as a patent, one or more patent continuation applications can be filed to help gain patent coverage for these additional inventions or embodiments disclosed in the initial application. Crucially, there is no limit to the number of continuations an applicant may file.

Once you receive a Notice of Allowance from the USPTO, you should be considering filing a patent continuation application prior to issuance of the parent application. If you choose not to file a continuation prior to issuance of the parent, you will effectively be limiting yourself to the patent protections offered by the original application which may not be broad enough to provide adequate legal protections against competitors or contemplate future improvements of your technology. Therefore, there are a plethora of reasons you should avoid limiting the scope of your parent application’s protections and consider filing a continuation application.

Benefits of Continuation Patent Applications

By filing at least one continuation application, also known as the “child” application, the patentee will retain the ability to update or modify their claimed subject matter which will expand presence in the marketplace. There are several reasons you should consider pursuing a continuation application as part of your patent prosecution strategy.

First, continuations allow you to claim multiple inventions. This is because the USPTO often determines that an application describes multiple inventions, and a patent can only claim one. In such circumstances, the USPTO may issue a restriction requirement which distinguishes each invention and requests that the applicant only select one for final examination. Through techniques like a divisional patent application, for example, an inventor can claim any inventions left unclaimed in a parent application.

Likewise, continuation applications allow you to seek broader protection of your claims. Since the scope of your claims while your parent application is pending is uncertain, a continuation can help keep the scope ambiguous for your competitors. Often, patent protection is granted for claims that provide only narrow coverage. When faced with an objection from an examiner for instance, an applicant might react swiftly and try expediting their claims to limit them to a specific embodiment of their invention or accepting the limitation offered by the examiner on their pending claims. In this scenario, an applicant can leverage a continuation application to pursue significantly broader protection of their claim set.

Continuation applications are also inherently beneficial with respect to how rapidly technology is advancing. Having a pending continuation application in your back pocket can open to door to tailor your application to cover future technological advances so long as covered in the original parent application. Savvy inventors and corporations often keep at least one continuation application pending at all times to maintain a strategic advantage over competitors.

Finally, circumstances may arise where you find it necessary to try deferring a decision on your parent application and costs of your invention overall. Continuation applications can be useful in such a case by essentially resetting the examination timeline by abandoning the original parent application in favor of a continuation application containing similar claims, while also maintaining your original filing date.

Drawbacks of Continuation Patent Applications

There are a few disadvantages to filing a continuation application compared to an entirely new patent application. First, a continuation application will not provide an earlier priority date for any claims containing new subject matter presented. Any new claims addressing new subject matter will receive a priority date corresponding to the date on which the continuation application itself was filed, while claims presented in the parent application will retain the same priority date as when that application was filed.

Thus, any new claims in the continuation application to the same 20-year protection term that is based on the given date the parent application was filed. This shortened term of protection can prove problematic down the line considering the lifetime on many types of patent applications lasts a few years.

Another issue that may arise with continuation applications is that any given description or statement in the parent application will be used to narrowly construe the language of the continuation application. This becomes particularly problematic if the claim set of the parent application is not broad enough to enable a strong continuation application. Similarly, if it has been more than one year between the parent and the continuation applications, certain disclosures made in the parent application may be considered prior art as they relate to any new claims in the continuation. In this scenario, an applicant may be leaving themselves open to the USPTO issuing a rejection to their continuation on obviousness grounds.

Working with a skilled patent attorney can help you overcome these disadvantages by tailoring your patent strategy to take advantage of continuations, while avoiding their disadvantages.

How is a Patent Continuation Different from the Original Patent?

The key difference that distinguishes a continuation from the original patent is that a continuation allows the patentee to pursue additional claims present in the original that the patentee’s competitor’s may be trying to mimic. Throughout the filing process on the parent application, it is far more challenging for the inventor to foresee all the possible ways that competitors may attempt to copy the invention without infringing upon it. A continuation application gives the patent holder the chance to leverage this hindsight to tack on new claims present in the original application that competitors may try to recreate later.

When can you file a Patent Continuation?

As previously mentioned, a continuation application must be filed while the original application is pending. A pending patent application is simply one that has not yet been abandoned or issued.

So when should you be filing a continuation application? At times, it may make sense to file it in tandem with a response to a USPTO Office action. Here, you can file a continuing application within the 3-month deadline of substantive Office actions without having to pay any late fees. If you have already received a Notice of Allowance, it is best practice to have your patent attorney work with you to file your continuation application before paying the issue fee.

Continuation vs. Continuation-in-Part vs. Divisional patent applications

There are 3 effective mechanisms through which an inventor may make modifications to the original parent application: A Continuation Application, a Continuation-In-Part Application, and a Divisional Application. These differ strictly in the types of modifications they allow an inventor to make.

As previously mentioned, a continuation allows an inventor to add new claims to a parent application, as long as the application hasn’t been issued or abandoned.

A continuation-in-part (CIP), allows for “repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.” CIP applications are a great avenue for protecting new improvements to the invention described in the parent application. Claims in a CIP that recite added matter do not maintain the priority date of the parent application, but can assist in protecting new developments that are so closely related to the parent application that the new developments simply cannot work without the description of the parent application.

By filing a CIP application, the applicant can protect additional inventions or improvements that have been made since the filing of the original application. This allows for the broadening of the scope of protection and ensures that the latest developments related to the original invention are included in the patent application.

A divisional application is commonly filed to divide or split a previously filed patent application into separate applications. It is typically filed when the original application covers multiple inventions or multiple aspects of an invention, which may be restricted to different applications by the USPTO. A divisional application retains the filing date and priority of the original application, which means that it benefits from the same priority rights and is subject to the same rules and regulations as the original application. However, it is treated as a separate application and undergoes its own examination process.

By filing a divisional application, the applicant can pursue separate protection for different inventions or aspects of the original application. This allows for greater flexibility in obtaining patent protection and enables the applicant to tailor the claims and scope of protection to each individual invention.

What are the costs associated with filing a patent continuation?

The Rapacke Law group charges between $3,500-$6,500 per continuation, CIP, or divisional but cost can vary based on the law firm or filing strategy. The Rapacke Law Group’s fees are flat-rate which means no surprise billing for hourly rates, government fees, or unexpected costs.

Speak with an experienced patent attorney

If you’re considering filing a patent application, continuation, CIP, or divisional, consult a Rapacke Law Group patent attorney free of charge.

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Considerations for Patent Assignments After Minerva Ruling

Post author By Austen Zuege

By Austen Zuege & Benjamin Edlavitch

A version of this article about patent assignments and assignor estoppel appeared in an online magazine on August 4, 2021 as intellectual property “expert analysis”.

Introduction

For many decades, the terms and content of patent assignments have been relatively uncontroversial. However, the Supreme Court’s recent ruling in Minerva Surgical, Inc. v. Hologic, Inc. established that assignor estoppel will apply to some assignments but not others. [i] Consequently, the execution of an assignment of patent rights is now potentially more contentious than before. Parties to an assignment may now wish to scrutinize the terms of an assignment document as well as the factual context around the execution of an assignment that may give rise to implied terms. What follows is an analysis of practical considerations for a patent assignment, including sample assignment clauses that might be negotiated, in light of Minerva .

Minerva reaffirmed the doctrine of assignor estoppel but limited its scope to what an assignor represents in assigning patent rights. The assignor is estopped from challenging the validity of the patent when the “assignor’s claim of invalidity contradicts explicit or implicit representations” the assignor made. [ii] A key aspect of the Court’s holding involved determining the scope of “implicit representations” that result in assignor estoppel.

The Minerva Decision

Inventor Truckai had assigned patent applications to Novacept, Inc., which was later acquired by Hologic, Inc. [iii] Afterwards, Truckai founded Minerva Surgical, Inc., and Hologic sued Minerva for patent infringement on resulting patents. [iv] Hologic argued that assignor estoppel barred Minerva from arguing the patents were invalid and the district court and the Federal Circuit both found that assignor estoppel barred the defendant from pursuing invalidity defenses. [v] The Court vacated and remanded the case in a 5-4 ruling and explained that “the limits of the assignor’s estoppel go only so far as, and not beyond, what he represented in assigning the patent application.” [vi] Therefore, “if Hologic’s new claim is materially broader than the ones Truckai assigned, then Truckai could not have warranted its validity in making the assignment” and, thus, “there is no basis for estoppel.” [vii]

The Court outlined a total of three examples where assignor estoppel does not apply. “One example . . . is when the assignment occurs before an inventor can possibly make a warranty of validity as to specific patent claims. Consider a common employment arrangement. An employee assigns to his employer patent rights in any future inventions he develops during his employment; the employer then decides which, if any, of those inventions to patent. In that scenario, the assignment contains no representation that a patent is valid. How could it? The invention itself has not come into being.” [viii] “A second example is when a later legal development renders irrelevant the warranty given at the time of assignment.” [ix] Thirdly, a post-assignment change in patent claim scope in which the “new claims are materially broader than the old claims” does not trigger assignor estoppel. [x] This last example was the situation alleged in Minerva : materially broader continuation claims filed after execution of the assignment were not subject to assignor estoppel because the Court held there was no implied warranty of validity. [xi] While the majority opinion helpfully gave a few examples of circumstances that would or would not give rise to an implied warranty, they are hardly exhaustive and do not reach some fairly common assignment scenarios, leaving some ambiguity. [xii]

Practical Considerations and Possible Assignment Clauses

Almost all of the factors that determine whether assignor estoppel will apply may be within the control of the parties to an assignment. It may be possible to include explicit terms in the assignment document in order to avoid later dispute about what was or was not implied by circumstances of execution. The question becomes, what are the sorts of terms that assignors and assignees may now wish to consider? The following are simply examples; particular parties will have different interests and their relative bargaining power will of course vary from one situation to the next. Though as discussed below the enforceability of certain terms should not be assumed in all scenarios.

Assignees will now have motivations to try to add clauses to employment and services agreements establishing assignment obligations with some or all of the following additional terms: assignment timing requirements ( i.e. , after assignor estoppel attaches), requirements for non-quitclaim assignment or warranty of validity requirements, and express no-challenge clauses. For example, if an assignee’s claims are materially broadened, then the assignor could not have warranted the claims’ validity at the time of the assignment and there is no basis for assignor estoppel, as the Court held in Minerva . [xiii] Assignees seeking to acquire patent rights on a stand-alone basis will now have reasons to do one or more of the following: add an express warranty of validity or a no-challenge clause to an assignment, obtain a further post-grant warranty of validity (especially if any claim is materially broader), obtain a new assignment with each continuation or divisional application having materially different claims (especially any broader claims), and include a choice of law provision. The following are sample clauses that might be used to pursue assignee objectives:

I hereby waive all my rights to challenge validity of said invention in the United States and its territorial possessions and in all foreign countries and of all Letters Patent or similar legal protection in the United States and its territorial possessions and in any and all foreign countries to be obtained for said invention by said application or any continuation, continuation-in-part, divisional, renewal, substitute, or reissue thereof or any legal equivalent thereof in a foreign country for the full term or terms for which the same may be granted. [No-challenge clause for stand-alone assignment]

I hereby waive all my rights to challenge validity of any and all inventions which I may solely or jointly conceive or develop or reduce to practice, or cause to be conceived or developed or reduced to practice, during the period of time I am in the employ of the Company in the United States and its territorial possessions and in all foreign countries (collectively, “the Invention(s)”) and of all Letters Patent or similar legal protection in the United States and its territorial possessions and in any and all foreign countries to be obtained for the Invention(s) by any application or any continuation, continuation-in-part, divisional, renewal, substitute, or reissue thereof or any legal equivalent thereof in a foreign country for the full term or terms for which the same may be granted. [No-challenge clause for employment agreement]

Assignors (including employee-inventors [xiv] ) will now have greater reasons to question and push back against terms present in—or missing from—assignee-supplied assignment forms. As the Supreme Court put it, assignor estoppel “raises the price of patent assignments.” [xv] For example, assignors will have reasons to demand one or more of the following: insist upon only a quitclaim assignment [xvi] or language expressly denying any warranty of validity, inserting a clause that assignor estoppel shall not apply, sign an assignment only with regard to a patent application lacking claims, [xvii] refuse to sign any “confirmatory” assignment that gives rise to a new warranty, and negotiate additional consideration ( e.g. , larger payment, bonus(es), a raise in base compensation, promotion in job title, etc.) if an assignee expects any express or implied warranty. The following are sample clauses that might be used to pursue some of those assignor objectives:

I hereby make this assignment without representation or warranty as to patentability or validity of said invention. [No Warranty of Validity]

It is possible that an assignor could unilaterally write-in additional terms into an assignment form prepared by the assignee, given that only the assignor conventionally signs an assignment under U.S. law. [xviii] Assignees might be faced with scenarios where further consideration is required to subsequently “undo” terms unilaterally written-in by the assignor if consideration was already paid—giving rise to assignees withholding payment until the executed assignment (free from unilateral modifications) is delivered.

Given that assignors and assignees may have widely divergent interests, with each seeking to receive more in exchange for less, there may be a need to reach a compromise with regard to assignment terms. For example, one or more of the following terms might be agreed to: explicitly spell out what due diligence has or has not been performed and expressly include a partial warranty of validity limited to actual knowledge and due diligence activities and/or include express language that assignor estoppel is limited only to validity challenges based on the law as it exists at the time and/or only to prior art of which the assignor was actually aware at the time (putting the obligation on the assignee to inform the assignor of all material prior art). [xix] The following are sample clauses that might be used to pursue some of those compromise objectives:

After performing due diligence, I hereby warrant and represent my belief in the validity of the specific claims presented to me as of the Effective Date of this Assignment to define said invention only with regard to prior art actually known to me as of the Effective Date and only with regard to patent statues, regulations, case law, and any other controlling authorities in effect as of the Effective Date, but this warranty does not extend to any other patent claims that are materially broader than the specific claims presented to me as of the Effective Date, and I hereby accept no liability for any finding of unpatentability or invalidity by any competent authority; and [Partial Warranty of Validity]

I agree, upon payment of a reasonable fee, to conduct further due diligence with respect to any materially broader claim and to make a similar warranty and representation of my belief in validity of that materially broader claim if, in my discretion, such a warranty and representation is justified by all of the facts and information available to me at that time. [Promise to Make Future Warranties for a Reasonable Fee]

Enforceability Considerations

The enforceability and effectiveness of warranties of validity and related contractual clauses present a number of other issues. Among those is the need for consideration in order for an assignment to constitute a valid contract. [xx] This is where an inventor bonus program could be useful—a bonus could be provided as consideration for an assignment and an explicit warranty, or even just for the warranty alone.

Obligations to assign, such as in employment agreements, are subject to state (or foreign) law. [xxi] But obligations to assign do not necessarily also create an obligationto warrant as to validity. A party under an obligation to assign might therefore refuse to provide a warranty of validity absent receipt of further consideration. And the enforceability of an employment agreement or master services agreement that purports to impose a prospective obligation to warrant validity of an invention not yet conceived is a question distinct from the enforceability of prospective obligations to assign, and may need to be sorted out by courts.

To even further complicate things, it has been suggested that a confirmatory assignment could create a warranty of validity that did not attach to an earlier assignment. [xxii] That position seems doubtful, though it turns on the particular language used. A true “confirmatory” assignment merely acknowledges (confirms) a prior assignment, perhaps curing technical defects such as to fix a typo, add missing information needed to accommodate recordation requirements in particular jurisdictions, or to omit sensitive price information in a publicly recorded version. If the prior assignment contained no warranty of validity, express or implied, then merely confirming that prior (warranty-less) assignment creates no new warranty. That would be especially true for nunc pro tunc assignments that relate back to the effective date of an earlier warranty-less assignment. Many assignments include boilerplate language about further writings to effectuate the transfer in the event of a technical defect or barrier to recordability. But if a new warranty is expressly (or implicitly) added to a purportedly “confirmatory” assignment, then the assignment is not really (or not merely) a confirmatory assignment and there must be consideration for the new warranty term—continued employment alone would not be sufficient consideration in some states. [xxiii]

The execution of an assignment of patent rights is now potentially more contentious than before. However, it seems that amending an assignment in light of Minerva may reduce disputes subsequent to its execution.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

[i] U.S. No. 20–440 (June 29, 2021).

[ii] Id. Slip Op. at 1.

[iii] Id. at 2-3.

[iv] Id. at 3.

[v] Id. at 3-4.

[vi] Id. at 16.

[viii] Id. at 15.

[x] Id. at 15-16.

[xi] Id. at 16-17.

[xii] There are also ambiguities in the Court’s decision that stem from shifting terminology. For instance, are (granted) “patent claim(s)” = (pending) patent application claim(s) “presented” to the USPTO = (unfiled) claims prepared by assignee’s attorney = (unfiled) claims prepared by assignor or assignor’s attorney? A “patent claim” is not necessarily synonymous with a “patent application claim”. An assignment knowingly executed while a pending patent application claim stands rejected might arguably carry no warranty, though Minerva does not explicitly address such a scenario.

[xiv] See Bd. of Trs. of Leland Stanford Junior Univ. v. Roche Molecular Sys. , Inc. , 563 U.S. 776, 786 (2011) (“In most circumstances, an inventor must expressly grant his rights in an invention to his employer if the employer is to obtain those rights.”); Banks v. Unisys Corp . , 228 F.3d 1357, 1359 (Fed. Cir. 2000) (“The general rule is that an individual owns the patent rights to the subject matter of which he is an inventor, even though he conceived it or reduced it to practice in the course of his employment.”).

[xv] Minerva , Slip Op. at 14,n.4.

[xvi] See, e.g., Van Renesselaer v. Kearney , 52 U.S. 297, 322 (1851); Black’s Law Dictionary 503 (10th ed. 2014) (quitclaim deed is one that “conveys a grantor’s complete interest or claim in certain real property but that neither warrants nor professes that the title is valid.”). Assignor estoppel for patents is derived from real property law. Minerva , slip op. at 5-6. A patent quitclaim assignment could include language such as “hereby conveys and quitclaims” or “hereby transfers by quitclaim”, and the document title could explicitly use the word “quitclaim” (or “quit-claim”).

[xvii] A U.S. utility patent application (but not a design patent application) can receive a filing date even if lacking a claim. 37 C.F.R. § 1.53 .

[xviii] However, handwritten changes to an assignment are normally initialed and dated by each of the assignor(s) to avoid disputes about post-execution changes not agreed to by the assignor(s). See MPEP § 323 .

[xix] See Mast, Foos, & Co. v. Stover Mfg. Co. , 177 U.S. 485, 493 (1900) (“we must presume the patentee was fully informed of everything which preceded him, whether such were the actual fact or not”); In re Wood , 599 F.2d 1032, 1036 (CCPA 1979) (“we presume full knowledge by the inventor of all the prior art in the field of his endeavor. However, with regard to prior art outside the field of his endeavor, we only presume knowledge from those arts reasonably pertinent to the particular problem with which the inventor was involved.”) accord Airbus SAS v. Firepass Corp. , 941 F.3d 1374, 1380 (Fed. Cir. 2019).

[xx] See Mars, Inc. v. Coin Acceptors, Inc. , 527 F.3d 1359, 1370 (Fed. Cir. 2008) ( “ Construction of patent assignment agreements is a matter of state contract law.”) and Jim Arnold Corp. v. Hydrotech Sys., Inc. , 109 F.3d 1567, 1572 (Fed. Cir. 1997) (“the question of who owns the patent rights and on what terms typically is a question exclusively for state courts”; collecting cases); but contrast, e.g., Hewett v. Samsonite Corp. , 507 P.2d 1119, 1121 (Colo. App. 1973) (continued employment insufficient consideration for patent assignment, which was found invalid for lack of consideration) and Jostens, Inc. v. Nat’l Computer Sys. , 318 N.W.2d 691, 703-04 (Minn. 1982) (mere continued employment provided insufficient consideration under Minnesota law for coercive intellectual property agreement) with, e.g., Preston v. Marathon Oil Co. , 684 F.3d 1276, 1284-85 (Fed. Cir. 2012) (under Wyoming law, no additional consideration is required to support an employee’s post-employment execution of an agreement to assign intellectual property to his employer). A state-by-state or country-by-country survey is beyond the scope of this article.

[xxi] See Allen v. Riley , 203 U.S. 347, 355-57 (1906); Akazawa v. Link New Tech. , 520 F.3d 1354, 1356-58 (Fed. Cir. 2008); see also 35 U.S.C. § 261 ; but see DDB Techs., L.L.C. v. MLB Advanced Media, L.P. , 517 F.3d 1284, 1290 (Fed. Cir. 2008) (whether patent assignment clause creates automatic assignment or mere obligation to assign treated under Federal Circuit law).

[xxii] Dennis Crouch, “Assignor Estoppel Persists — But Only for Claims Specifically Assigned,” Patently-O (June 29, 2021).

[xxiii] See, e.g., Jostens, 318 N.W.2d at 703-04.

Tags Assignments , Assignor Estoppel , Patents

Procuring U.S. Patents without a Signed Assignment of Patent Rights

Increased employee mobility, health challenges, and the economic downturn due to the COVID-19 pandemic may result in more inventors than usual being unavailable to assign patent rights. Fortunately, applicants may procure a U.S. patent even if an assignment document cannot be obtained for the application to be filed. This article summarizes the requirements for filing and prosecuting a U.S. patent application filed post-America Invents Act (AIA) without a patent assignment and identifies pitfalls when establishing ownership of patent rights for patent prosecution. Inventors being unavailable may also complicate obtaining the declarations required for U.S. patent prosecution, but solutions are available as we previously discussed here .

Need for an Assignment

For a patent to issue to an assignee, the United States Patent and Trademark Office (the “USPTO”) must be made formally aware of the assignment so that the assignee is recognized as the patent applicant. Filing an Application Data Sheet (ADS) for a patent application identifying the assignee as the applicant provides informal notice to the USPTO. MPEP § 301 discusses ownership/assignability of patents and applications, including formal assignment recordation at the USPTO. Recording an assignment may be necessary to permit the assignee to “take action” in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1.46 ; MPEP §§ 301 , 302 , 605 . In other words, assignees may face obstacles prosecuting a patent without an executed assignment. The assignment(s) must transfer the entirety of patent rights from each of the inventors to the assignee, e.g., corporation, partnership, university, government entity, etc. There can be multiple assignees if different inventors assign their rights to different assignees, a situation that results in two or more partial assignees that must each be identified to the USPTO as an applicant. MPEP § 301 .

As only one patent assignment is required per inventor per patent application, subsequent applications claiming priority may often rely on an earlier assignment (depending on the assignment’s particular language). If new subject matter is introduced in the application being filed, such as in a continuation-in-part application, another assignment may be required.

Persons who may file a Patent Application without an Assignment

Fortunately, applicants may procure a patent even if an inventor is not available to sign an assignment before application filing or during prosecution before payment of the issue fee.

A person to whom the inventor is under the obligation to assign the invention may file a patent application and be identified as the applicant. An assignment can then be subsequently executed and the USPTO notified as discussed above. Alternatively, other documentary evidence of ownership, such as an employment agreement, invention disclosure form, or other documentation, can be recorded with the USPTO in lieu of a signed assignment document. 37 CFR 1.46 . Employment agreements may contain language stating that the inventor assigns all rights, title, and interests in any invention developed while employed by the employer. In some instances, the employment agreement may affirmatively state that the employee is under an obligation to assign the invention to the employer. An invention disclosure form may contain language stating that the inventor’s signature on the form acknowledges the inventor’s assignment of and/or obligation to assign any rights, title, and interest in the invention disclosure to the employer. If the invention disclosure form includes the inventor’s signature, this may be sufficient evidence that the employer is an obligated assignee. 37 C.F.R. 1.46(b)(1) . It is important to examine any documentary evidence of ownership before recordation to identify any information (e.g., industry trend language, discussion of prior art, personal information of an employee, etc.) that may require redaction before recordation and/or may make public recording of the documentary evidence an undesirable option for the applicant.

Also, a person who shows sufficient proprietary interest in the matter may file a patent application and be identified as the applicant upon showing that such an action is appropriate, with the resulting patent being issuable in the applicant’s name. 37 CFR 1.46 . If filing a national stage application, the applicant must have been identified in the international stage of the international application or as the applicant in the publication of the international registration.

Showing Sufficient Proprietary Interest or Obligation to Assign

As provided in 37 CFR 1.46(b)(2) , “[i]f the applicant is a person who otherwise shows sufficient proprietary interest in the matter, such applicant must submit a petition including: (i) The fee set forth in § 1.17(g); (ii) A showing that such person has sufficient proprietary interest in the matter; and (iii) A statement that making the application for patent by a person who otherwise shows sufficient proprietary interest in the matter on behalf of and as agent for the inventor is appropriate to preserve the rights of the parties.” Additionally, as stated in MPEP § 409.05 , “[t]he ability for a person who otherwise shows sufficient proprietary interest in the matter to make an application for patent is not limited to situations in which all of the inventors refuse to execute the application, or cannot be found or reached after diligent effort.”

Showing sufficient proprietary interest requires “proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.” 37 CFR 1.46(a) ; 37 CFR 1.424 . Showing sufficient proprietary interest is discussed in MPEP § 409.05 and may be established in various ways depending on the circumstances. MPEP § 409.05 states that

A proprietary interest obtained other than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.46 applicant. The facts in support of any conclusion that a court would award title to the 37 CFR 1.46 applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same. The legal memorandum should be prepared and signed by an attorney at law familiar with the law of the jurisdiction involved. A copy (in the English language) of a statute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Patents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

Remember that an applicant as a person who otherwise shows sufficient proprietary interest in the matter must submit the required petition, fee, and information prior to paying the issue fee as set forth in 37 CFR 1.46 .

Final Considerations

Patent applicants can gain control over patent prosecution and assert patent rights even without execution of a signed assignment by an inventor. Before doing so, however, applicants should coordinate with patent counsel regarding their particular circumstances and should consult current USPTO rules.

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October 27, 2020

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Continuation Patent Applications: 10 Reasons You Should Consider Filing

If you’ve filed for patents in any industry – be it biotech, high tech, manufacturing, or another sector altogether – you’ve likely been faced with a decision on whether to file a “continuation” application at the US Patent and Trademark Office (USPTO). In simple terms, a “continuation” application is a new patent application allowing one to pursue additional claims based upon the same description and priority date(s) as a pending “parent” application. Continuation applications are a flexible tool, useful for furthering numerous business objectives.

Here are ten reasons you should consider filing a US continuation patent application as part of your intellectual property strategy:

Multiple Inventions . The USPTO only allows a patent to claim one invention. However, patent applications are often drafted, or determined by the USPTO, to cover multiple inventions. In such cases, the USPTO may issue a “restriction requirement,” dividing up the inventions and asking the applicant to select one for examination. The other inventions can be pursued in a continuation application called a “divisional.”
Broader Claims . Sometimes, patent applications are allowed with claims providing only “narrow” coverage. For example, an applicant may choose to establish an immediate defense by expediting claims to a specific embodiment of an invention, or accepting an Examiner’s offer to allow a subset of the pending claims. In such circumstances, a continuation application is useful follow-up for pursuing “broader” protection. Continuations might also be filed to cover alternative embodiments of the invention or block design-arounds.
Go On the Offensive . Continuation applications can also be used offensively. For example, one can file a continuation with claims covering a competitor’s product as long as it is described in the original parent application.
Creating Uncertainty . In addition to building clear defensive and offensive positions, continuation applications (usually with broad claims) can be used to create uncertainty around the final scope of patent protection and provide a deterrent to competitors.
Evolving Technology . Technology is constantly evolving. A pending continuation application can provide a vehicle for drafting claims covering future advances, as long as they are supported in the original parent application.
Law in Flux . Similar to technology, the law is in a constant state of flux. Legal developments, such as the Supreme Court’s decisions in Myriad and Alice limiting what is eligible for patent protection, have fundamentally altered the patent landscape. Continuation applications provide a tool for addressing legal developments, for example through new claims that work around, or exploit, the changes.
Litigation . Continuation applications are standard tools for patentees engaged in, contemplating, or expecting litigation. For example, a pending continuation application allows you to react to the lawsuit’s outcome – like drafting new claims to avoid newly discovered prior art.
Maximize Value . When a patent might be sold or licensed in the future, maintaining a continuation application can maximize value by allowing the purchaser or licensee to use the continuation to pursue their objectives.
Defer (Decisions, Costs) . Sometimes, it is necessary to defer a decision or cost. Continuation application can be used to delay prosecution, for example, by “restarting” the examination timeline by abandoning a patent application in favor of a continuation application with the same or similar claims.
Keep Your Options Open . A continuation application must be filed before the parent application issues as a patent. Therefore, filing a continuation application can be viewed like purchasing an “options contract” to pursue new, additional claims for any reason in the future.

Savvy applicants will consider continuation applications as a valuable tool throughout patent prosecution, and will draft their applications to include multiple defensive, offensive, fallback, and alternative positions.

Final Tip : You don’t have to wait until your patent application is allowed – use continuations to react to business, scientific, or legal developments at any time.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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Continuation-in-Part Patent Applications: A Comprehensive Guide

Continuation-in-part patent applications are a strange type of continuing patent application. They are a tool that can extend the life of a patent family and protect improvements to inventions covered by prior patents. They have significant risks, however, and should be approached carefully.

Patents play a pivotal role in safeguarding intellectual property, fostering innovation, and providing inventors with exclusive rights to their creations. Understanding the mechanics of patents and patent applications, and the way continuation-in-part applications affect them, is crucial for anyone involved in the innovation process.

Patent Applications Briefly

In the US, most patent applications are of two types: utility patents and design patents . These applications are designed to protect inventions and ornamental designs. However, a specific type of patent application has gained prominence for its flexibility and strategic advantages— the continuation-in-part patent application. Most patent attorneys shorthand this as a “CIP” application.

Continuation-in-part patent applications have become a powerful tool for inventors and companies seeking to build their inventions into networked families of patents. Unlike standard patent filings, a continuation-in-part application allows applicants to introduce new material and claims while retaining the priority date of an original application.

A CIP application can be instrumental in avoiding prior art, extending protection, prolonging the ability to file new patents, and out-maneuvering competitors. There are significant limits, however. These applications are not a patent panacea, and anyone considering filing one should talk with a trusted patent lawyer carefully over strategy.

Indeed, a continuation-in-part application addresses a fundamental challenge faced by innovators—how to adapt and expand intellectual property protection as ideas mature and new aspects of the invention come to light. Here, I talk about what a continuation-in-part application is, what it includes, what are its pros and cons, and what could be considered when deciding whether to file one.

What are Continuation-in-Part Patent Applications?

Continuation-in-part applications are filed when a patent applicant needs to add subject matter to an existing patent disclosure. New subject matter cannot be added into a pending patent application, however, so the applicant must file a new application that builds from the pending application.

The new application adopts and re-presents the existing subject matter and is called a continuation-in-part patent application. It “continues” the old subject matter “in part,” and also presents new subject matter “in part.”

How a Continuation-in-Part Application is Different From Other Patent Applications

Patent applications can be original applications or continuing applications. Continuing applications, by definition, continue an existing patent application with a priority or benefit claim. This allows you to build “families” of patents by linking them together through priority claims.

An original patent application is the first application you file presenting a new idea. Sometimes, that will also be the last patent application you file to cover the idea. However, in many cases, there will be several ways to protect the ideas disclosed in the original patent application. You can file continuing applications that stem off of the original application to cover the ideas differently.

The first non-provisional application you file is informally considered a “parent” application, and the applications that stem from the parent are “child” applications. These applications have different names depending on what they present and why: there are continuation applications, continuation-in-part patent applications, divisional patent applications, and reissue applications. Provisional applications usually are not considered part of a patent family because they expire after just a year.

For example, you might have developed a new machine for forming holes in a metal workpiece. Your parent application might disclose all of the structure of the machine as well as the operation of the machine and what process it uses to bore holes in the workpiece. Sometimes, during prosecution of the patent application , the patent examiner will issue a restriction requirement.

A restriction requirement is the Patent Office’s way of saying you have tried to claim too many inventions in one application and have created a burden on the examiner. Usually, you have to split your application up in response to a restriction requirement. In the above example, you might split it up by electing to continue forward with the product claims covering the machine’s structure and dividing out the claims that cover the process for operating the machine.

Those process claims aren’t lost, though. Rather, you can now file a divisional patent application. The divisional application would be directed to just the process claims. So you would end up with two patents; an original parent patent covering the machine as a product, and a divisional child patent covering the machine’s operating process. A divisional patent application is one kind of continuing application.

Continuing the example, you would file a continuation-in-part patent application if you had improved the machine. Let’s say that the machine had always used a drill mounted for three-axis movement, and you had filed and protected that with patents covering both the structure and operation of the three-axis drill. However, you later developed a rotating table on which the workpiece was held during drilling. This improves the efficiency and speed with which the machine operates. You could file a continuation-in-part patent application on this improvement because it would build from the original disclosure but also add new subject matter.

Moreover, you could file the continuation-in-part application with a benefit claim to either of the product or process patent applications, so long as they are still pending. This allows you to build the patent family out in different ways and over different timelines, which can provide a significant competitive advantage, as discussed further below.

Contents of a Continuation-in-Part Patent Application

Continuation-in-part patent applications are similar to original patent applications in almost all respects. They include a written description of the invention , drawings showing how the invention is made and operates , and claims reciting the protected aspects of the invention .

However, continuation-in-part applications also contain a cross-reference and a benefit claim.

A cross-reference is a section of the written description that simply calls out the parent application and the other family applications to which it claims a benefit. The cross-reference will identify each patent application by number and filing date. Some attorneys will also include the title or inventor names.

The benefit claim is made in the Application Data Sheet. The Application Data Sheet contains information about the inventors, the applicant, and the patent subject matter. It includes a section that identifies any benefit claims to prior applications. In that section, you identify the prior application (or applications), their application number, filing date, current status, whether they have matured into a patent or not, and what the nature of the relationship is, i.e., a continuation, continuation-in-part, divisional, etc.

The information entered into the Application Data Sheet is important. The Patent Office uses this information over anything presented in the cross-reference section of the specification to correctly identify the child relationship of the filed application.

Advantages of Continuation-in-Part Patent Applications

By far the biggest advantage of continuation-in-part patent applications is the ability to extend the life of a patent family with the introduction of new patentable subject matter.

Creating patent families can produce a huge competitive value. When a patent family is managed so that it maintains at least one live patent application in the family at all time, it creates an extended opportunity to file a new application to claim subject matter presented anywhere in the family. This means that you can potentially write and file claims on subject matter that was disclosed five or ten years before and perhaps incorporated into a competitor’s product.

As an example, let’s return to the parent application on the three-axis drilling machine. The application discloses how the machine is structured, assembled, and operated. However, for some reason, the parent patent only claimed the machine as a product and did not claim how it operates. Five years go by, but you have continued to file continuing applications, so that there is still one live patent application that claims a benefit all the way back to the original parent patent. If a competitor launches a product that is different from your three-axis drilling machine but operates in a similar fashion, then you have no recourse, because you have no patent with claims covering its operation. The competitor gets away with infringement. Except, you still have the ability to file a continuing application into that family, because the family is still pending with one live application. You could now file a new child application, write claims that describe the operation of the machine so that the competitor’s machine directly infringes.

Continuation-in-part patent applications are one type of continuing application that allow you to keep a patent family alive and pending.

A continuation-in-part patent application also allows you to incrementally protect improvements on ideas and inventions. Because you cannot present new subject matter in an existing patent application, you use a CIP application to introduce the new matter. For claims that relate entirely back to the parent subject matter, the prior art date claims priority back to the disclosing parent’s filing date. Only the claims which incorporate new subject matter receive a new effective filing date. By filing on incremental improvements, you can minimize the time between effective filing dates, which can reduce the risk that there has been intervening prior art which might defeat patentability of your improvements.

Although continuation-in-part patent applications certainly can present a large improvement, they often disclose only a small or limited amount of new subject matter. For that reason, much of the disclosure is re-used from the parent reason, and so the costs of preparing a CIP application are usually much cheaper than filing an original patent application.

Lastly, because continuation-in-part patent applications of typically assigned to the same patent examiner who reviewed the prior application, you can usually receive faster examination on the CIP application. Rather than waiting one or two years (if a request to expedite or make special is not made ), the Examiner might pick up the CIP application and review it after just three months or so.

Disadvantages of Continuation-in-Part Patent Applications

You must be careful to correctly identify every patent application with its proper type. If you present new subject matter in a patent application and don’t title it a continuation-in-part application, you will receive a rejection which can sometimes be administratively difficult to overcome. Alternatively, if you identify a patent application as a continuation-in-part application when it does not present new subject matter, there may be questions about whether or why there is new content. That can potentially create issues both in prosecution and litigation.

The new subject matter contained in a continuation-in-part application will receive its own effective filing date. But, the life of the patent will usually be cut short, especially if the Patent Office makes a double patenting rejection. A double patenting rejection essentially prevents you from extending patent protection on an invention, or on an obvious variation of an invention, by filing two separate applications on that invention. There are limitations to double patenting rejections, and ways to argue over them, but often the patent applicant will choose to file a terminal disclaimer which cuts the life of the CIP short.

That gets to another risk of a CIP application. The entirety of a patent lives and dies as a whole. It isn’t as if some claims in a patent can expire after other claims in that same patent. Therefore, if you are filing a CIP and some of the claims relate back to a parent application, but other claims are entirely new, those other claims are going to expire earlier than had they been presented in their own application without any benefit claim. So if your improvement is entirely new, and you aren’t worried about whether your own prior patents will be cited against your new application, it may be smarter in some circumstances to file an original application rather than a continuation-in-part application.

Another risk: arguments made in the parent application can potentially be used against a patent issuing from your CIP application. This is known as prosecution history estoppel. It is sort of the Miranda rule for patents: anything you say in the prosecution of a patent application can later be used against you during litigation of the patent issuing from that application. Usually, estoppel applies to the patent arising from the application, but it can also be used against child applications in some circumstances.

Filing continuation-in-part applications also increases the complexity of a patent portfolio. Because CIP applications present new subject matter with its own effective filing date, tracking dates such as foreign-filing deadlines can be more cumbersome, especially without the use of specialized docketing software.

Continuation-in-part patent applications are not as simple as adding material, identifying the application differently, and filing. They involve careful strategic choices, with risks and benefits affecting that decision. If you are building a patent family, or need helping managing a portfolio of patents, or are considering filing a continuation-in-part application, please contact Phoenix patent attorney Tom Galvani at 602-281-6481 for more information. Tom does not charge for initial calls and consultations and is happy to speak with you.

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APPLICATION FILING

Continuing patent application at the uspto and the epo, iii. continuing patent application options at the uspto and the epo, download pdf, 1. overview procedure uspto and epo, 2. search and examination, 4. appeal options, 5. acceleration, 6. quick reference guide, iii-a. continuing patent application at the uspto.

A wide variety of continuing patent application options exists at the USPTO, including Continuation Applications, Continuation–in–part Applications and Divisional Applications. As typical in many other jurisdictions, filing any of these continuing patent application needs to be done while a parent application is still pending. Since fees are moderate in the US and renewal fees become due only after the patent issues US Applicants typically make ample use of the option to file continuing patent applications. Apart from pursuing different scopes of protection or different subject matter from the original disclosure, one objective is also to keep options open by keeping at least one patent application in the chain pending. In many instances, filing continuation applications may be spared with by making the best use of requesting After Final Consideration or Continued Examination . Specifically since the costs for filing continuation applications are moderate and the first renewal fees only becomes due 3 ½ years after the Continuation Application has issued as a patent and specifically since no accrued renewal fees need to be paid for a Divisional Application, it is often recommendable to file a Continuation Applications shortly before the parent application is scheduled to issue as a patent, just to keep an application pending and therefore have the flexibility of pursuing different claims than allowed in the parent application. Specifically non-US Applicants coming from systems that are less liberal as to filing continuing patent applications tend to underuse this valuable option.

III-B. Continuing patent application at the EPO

The only continuing patent application option offered by the EPO is filing one or more Divisional Applications as provided by under Article 76 EPC . Although such Divisional Applications may be filed at any time during the pendency of a parent application, the same fees already paid for the parent application including accrued renewal fees are due for filing a Divisional Application. Since a Divisional Application is just a type of an EP direct application claiming the benefit of the filing date and priority date of the parent application, examination fees only need to be paid after the search has been conducted. Further, if the claims of the Divisional Application are to some extent similar to the parent application, the EPO may pay a partial or a full refund of the search fee. The claims of a Divisional Application need to distinguish from the claims of the parent application to some extent for avoiding double patenting but the required level of difference is relatively low, that is the EPO takes to that extent a relatively lenient approach on admissibility of Divisional Applications. Specifically when filing Divisional Applications based on older parent applications, as to the costs the biggest factor may be the accrued renewal fees counting from the end of the second year from filing the parent application. This payment cannot be deferred but needs to be made with filing the Divisional Application.

About author Alexander Schlee

Alexander Schlee is a registered German, European and US patent attorney and holds the German equivalent to a master’s degree in Mechanical Engineering. He is the founder of Schlee IP International P.C. in 2007 succeeding a Los Angeles branch office he founded as a former equity partner of Viering, Jentschura & Partners in the year 2000. Among other volunteer activities he served on the State Bar of California International Law Section Executive Committee and is a former president of the Los Angeles Intellectual Property Law Association LAIPLA. Alexander Schlee assists particularly clients having strong international Intellectual Property interests, among these especially clients doing business between the United States and Germany.

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Assignment of a Part of a Continuation-in-Part?

Plaintiff AB Coaster Holdings Inc. claimed to be the owner of patents that were subject to terminal disclaimers. Some of the patents were expressly assigned and some were not. Here are the pairings:

‘633 (assigned) and ‘079 (not expressly assigned) ‘445 (not expressly assigned) and ‘263 (assigned) ‘079 (not expressly assigned) and ‘263 (assigned)

The defendant argued that since none of the pairs were fully transferred, and therefore the patents not co-owned, they were unenforceable.

The ‘633 patent was the parent and the other three above-listed patents, as well as another, the ‘134 patent, were all continuations-in-part of the ‘633. Here is the patent assignment language used for the ‘633:

If you can’t read the image, it says:

Assignors hereby sell, assign, and transfer to Assignee, the entire right, title, and interest in and to said Invention, and said Patent Application for said Invention in the United States and throughout the world, including the exclusive right to file any provisional, non-provisional, divisional, continuation, continuation-in-part, reissue, foreign, or other application based on the Invention directly in the name of Assignee and to claim any priority rights to which such applications are entitled under international conventions, treaties, or otherwise.

The continuations-in-part were all filed after the assignment of the parent.

The defendants challenged the plaintiff’s ownership of the child patents. The plaintiff claimed that the above language was an effective assignment of the child patents, but the defendants argued that the language–assigning “all right, title and interest to said Invention “–only assigned the original invention disclosed in the parent application and that any newly-added materials in the continuations-in-part would not have been assigned by the agreement.

The court found both arguments to be viable, so the court looked to extrinsic evidence to determine the intent of the parties. The defendant further pointed out that two continuations-in-part from the same parent, the ‘263 and the ‘134, were expressly assigned. If the above assignment of the ‘633 transferred ownership of all continuation-in-part applications, then the inventors would not have owned the ‘263 and ‘134 patents at the time they purportedly assigned them; rather, they would have already been owned by the plaintiff and the assignments were unnecessary. Thus the different treatment of the continuations-in-part indicated that the ‘633 assignment did not transfer any new inventive portion of a continuation-in-part.

But the defendant’s argument was made in a reply brief so the plaintiff had no opportunity to rebut it. The court therefore denied the motion and will consider evidence at an upcoming oral argument.

Hmmmm. I don’t know what to think of the argument. A winner or not? Was it sloppy assignment practice? If a continuation-in-part is subject to a terminal disclaimer, is there any new invention in it? Can you assign only a part of a patent that reflects an “invention,” not identified by claims?

AB Coaster Holdings, Inc. v. Greene , Nos. 2:10-CV-38, 2:10-CV-234 (S.D. Ohio Sept. 25, 2012).

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Pamela Chestek

Patent Continuation In Part: Everything You Need to Know

Patent continuation in part is a type of patent application that adds to or stems from an original, non provisional patent application. 3 min read updated on January 01, 2024

Patent continuation in part is a type of patent application that adds to or stems from an original, non provisional patent application. These can be called continuation patent applications, CIP (continuation in part) applications, or divisional applications.

What Is a Continuation in Part Patent Application?

If a patent application is filed after a non-provisional application and repeats an important part of the original application, it is called a continuation in part patent application. These applications will add information that wasn't originally included in the first application.

These applications are required to be filed with the United States Patent and Trademark Office (USPTO) under the 37 CFR 1.53(b) and have to claim that their purpose is to improve upon the original non-provisional application.

Continuation in part applications can only be filed with non provisional patent applications under the following rules:

35 U.S.C. 120
35 U.S.C. 121
35 U.S.C. 365(c)
35 U.S.C. 386(c)

If a patent continuation in part application cannot be filed with a provisional application filed under 35 U.S.C. 119(e). This application would need to be called non-provisional application for a provisional patent application, instead of a continuation in part, division, or a continuation.

If an applicant files a continuation in part patent application, it is not assumed that they accept any and all rejections of the original application the continuation claims to benefit.

Inventors who file continuation in part patent applications on their own can file for the benefit of patent applications that included other inventors. These can disclose pieces of the information regarding the invention according to the rules and regulations found in codes 35 U.S.C. 120 and 37 CFR 1.78 .

The USPTO isn't required to determine if the requirements specified in 35 U.S.C 120 were met by the original non provisional patent application unless the applicant is waiting on a ruling on the parent patent from a proceeding in the USPTO.

Continuation in Part Basics

If the first patent application is considered the "parent" application, subsequent continuation, division, or continuation in part patent applications can be viewed as its children.

A continuation in part patent application should contain a good amount of the information included in the parent or original patent application as well as whatever improvements or changes it hopes to support, called "new matter."

The purpose and layout of a continuation in part patent application is defined well by the Manual of Patent Examining Procedure.

The claims included in a continuation in part application can have varying priority dates, but this depends on if the parent application supports the information in the CIP or if it's brand new.

If an inventor doesn't need to have claims that are in split sets, they can filed a continuation in part application rather than an all-new patent application.

When a continuation in part patent application is approved, the lifespan of the patent is still measured using the date that the parent application was filed. If the inventor wants to lengthen the term of their patent, they might benefit from filing for a new patent.

Basically, once an inventor files for a patent, they will likely need to make changes to the patent throughout its life. The continuation in part, divisions, and continuation patent applications offer inventors the ability to make such changes without submitting brand new patent applications each time.

Remember that none of these continuation application types are able to be filed for the benefit of a provisional application, but must be filed for a non-provisional patent. The only way a patent application can be filed with a provisional application is if a non-provisional application is filed.

Pros and Cons

Continuation in part patent applications offer some of the following benefits:

Lower costs during the term of the patent
Simpler filing
Maintains the original filing date of the parent patent application

Continuation in part applications have a few downsides depending on the goals of the applicant including:

Shorter term for application versus an all-new patent application
Potential for any mistakes or weaknesses in the parent application to be used against the applicant filing the continuation

Inventors who want to simply modify or add on to the non provisional patent applications they originally filed can benefit from using a patent continuation in part. These applications offer flexibility and ease for the ever-changing process of inventing.

If you need help with a patent continuation in part, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

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Content Approved by UpCounsel

Patent Continuation
Filing a Divisional Patent Application
What Is a Parent Patent?
Continuation in Part Patent Term
What Does a Provisional Patent Protect
Free Provisional Patent Application
Provisional Patent Lookup
Provisional Patents Are Good For One Year
How Long Does a Utility Patent Last
Priority Patent Application

Can I Change Patent Examiners?

“Can I change patent examiners?” This is one of the most common questions I get.

The short answer is “probably not”

You can petition to change patent examiners, but that’s probably not going to work. Below are some excerpts of one (failed) example I found:

Petitioner requests that the application be reassigned to the Pro Se Examining Art Unit or alternatively, assigned to the Commissioner for Patents. Petitioner alleges that the actions and conduct ofthe examiners and supervisors involved with the prosecution of the instant application were improper and biased against the petitioner. . . . A petitioner is not entitled to choose his or her examiner, Supervisory Patent Examiner, or other deciding official. See In re Arnott, 19 USPQ2d 1049, 1052 (Comm’r Pat. 1991). A Technology Center Director and Supervisory Patent Examiner have considerable latitude as part of their dayto-day management of a Technology Center or Group Art Unit (respectively) in deciding the assignment of applications to examiners and the transfer of applications between examiners. A petitioner seeking to invoke the Director’s supervisory authority to overrule the Technology Center Director and direct the Technology Center Director to assign an application to a new examiner must demonstrate improper conduct amounting to bias or the appearance of bias on the part of the examiner. See In re Ovshinsky, 24 USPQ2d 1241, 1251 -1252 (Comm’r Pats. 1992). . . . The alleged improprieties cited by petitioner do not evidence bias or prejudice on the part of the examiners or supervisor’s. For example, the timeliness of Office actions issued in the instant application do not appear to be extraordinary. Also, the allegations of certain statements made by the examiners and supervisors lack context, substantiation, and/or sufficient supporting evidence to demonstrate bias or prejudice against petitioner. Lastly, reasonable people can disagree as to whether a given claim is patentable and on what basis. See Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969). The petition to direct the Technology Center Director to transfer the above-identified application to the Pro Se Examining Art Unit or other USPTO official is DENIED.

If you want to know more about the petition route, check out this MrIPLaw post .

After learning that the petition route is unlikely to work, many ask what are the chances that a continuation will get assigned to a different examiner.

Let’s find out.

Methodology

I looked at 2017 [i] patents and published applications that were a continuation, continuation-in-part, or divisional of another U.S. utility application. I then compared each application’s art unit, examiner, and U.S. class with the art unit, examiner, and US class of its parents. If an application has N direct parents — as listed on the face of the application — it got counted N times.

How often do child apps get the same class, art unit, and/or examiner as their parent?

As shown below, there were about 170,000 applications published or patented in 2017 which were a continuation, continuation-in-part, or divisional. The overwhelming majority ended up in the same U.S. class (which is still the basis of art unit assignment, but will soon be replaced by CPC for that purpose), same art unit, and with the same examiner as the parent application.

As to the specific question at hand, 90% of continuations, 67% of CIPs, and 83% of divisionals got the same examiner as their parent.

90% of continuations, 67% of CIPs, and 83% of divisionals got the same examiner as their parent.

The argument for child applications going to the same examiner is that it is much more efficient to do so. This argument breaks down the more differen the child is from the parent. I’ll use US class as a rough measure of the difference or similarity between parent and child.

Since the argument of efficiency breaks down when a child applications is assigned to different class than its parent, we should see a greater diversity of examiners there. The chart below shows that this is in fact the case.

There are about 15,400 applications in the data set where the child was assigned to a different class than the parent. When the child is in a different class than the parent, only 50% of continuations, 15% of CIPs, and 36% of divisionals end up with the same examiner.

When the child is in a different class than the parent, only 50% of continuations, 15% of CIPs, and 36% of divisionals end up with the same examiner.

But keep in mind, whereas I have used a binary classification of is or is not in the same U.S. class, real examiner assignment is analog. As mentioned in the excerpt from the petition decision above, TC directors and SPEs have a lot of latitude in assigned examiners. How similar are the parent and the child (regardless of classification), what is the particular examiner’s current workload, how broad of a range of technologies is the examiner comfortable/experienced with, examiner turnover (I expect the numbers would be a lot higher if I excluded apps where the parent examiner no longer works at the USPTO) and myriad other factors can come into play.

So, can you use a continuation to change patent examiners? Probably not. Especially not if you are resubmitting claims very similar to the parent application. Now, there is one sneaky possibility that involves delaying your priority claim until after the application has been assigned, but that carries various pitfalls and the application could still get kicked back to the parent application’s examiner once the priority claim does comes through.

So the best approach is to try and work things out with your current examiner ( stats may be useful) before resorting to a hail Mary in the form of a petition and/or continuation.

[i] Applications are often reassigned one or more times before substantive examination begins, so I wanted to be sure the vast majority of applications considered had begun examination.

Patent Laws, Regulations, Policies & Procedures
Manual of Patent Examining Procedure
Chapter 1800
Section 1895

1895 A Continuation, Divisional, or Continuation- in- Part Application of a PCT Application Designating the United States [R-07.2015]

It is possible to file a U.S. national application under 35 U.S.C. 111(a) during the pendency (prior to the abandonment) of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371(c) . The ability to take such action is based on provisions of the United States patent law. 35 U.S.C. 363 provides that “[a]n international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office....” 35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) “shall be regarded as abandonment... by the parties thereof....” It is therefore clear that an international application which designates the United States has the effect of a pending U.S. application from the international application filing date until its abandonment as to the United States. The first sentence of 35 U.S.C. 365(c) specifically provides that “[i]n accordance with the conditions and requirements of section 120 of this title,... a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States.” The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be filed before the patenting or abandonment of or termination of proceedings on the first application. The filing of a continuation, divisional, or continuation-in-part application of a PCT application designating the United States is known as a “bypass” application.

Continuation-in-part applications are generally filed in instances where applicants seek to add matter to the disclosure which is not supported by the disclosure of the international application as originally filed, as new matter may not be added to a U.S. national stage application. See 37 CFR 1.121(f) .

1895.01 Handling of and Considerations in the Handling of Continuations, Divisions, and Continuations-In-Part of PCT Applications [R-07.2022]

Pursuant to 35 U.S.C. 365(c) , a regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) (not under 37 CFR 1.53(d) ) may claim benefit of the filing date of an international application which designates the United States. Thus, rather than submitting a national stage application under 35 U.S.C. 371 , applicant may file a continuation, divisional, or continuation-in-part of the international (PCT) application under 35 U.S.C. 111(a) . Such applications are often referred to as “bypass” applications.

A typical time line involving a continuing application filed during the pendency of an international application is illustrated as follows:

Illustration of a typical time line involving a continuing application filed during pendency of an international application.

To obtain benefit under 35 U.S.C. 120 and 365(c) of a prior international application designating the U.S., the continuing application must:

(A) include a specific reference to the prior international application
(B) be copending with the prior international application, and
(C) have at least one inventor in common with the prior international application.

With regard to (A), if the continuing application was filed prior to September 16, 2012, the specific reference to the international application required under 35 U.S.C. 120 and 365(c) must either be contained in the first sentence(s) of the specification following the title or included in an application data sheet. See 37 CFR 1.78(d)(2) and 37 CFR 1.78(h) . If the continuing application was filed on or after September 16, 2012, the specific reference to the international application required under 35 U.S.C. 120 and 365(c) must be contained in an application data sheet. 37 CFR 1.78(d)(2) . The specific reference must identify the parent international application by international application number and international filing date and indicate the relationship of the applications (i.e., continuation, continuation-in-part, or division). See 37 CFR 1.78(d)(2) and MPEP § 211.02 . The required reference must be submitted within the time period provided by 37 CFR 1.78(d)(3) . This time period is not extendable. A certified copy of the international application (and an English translation of the international application) may be required by the examiner to perfect the claim for benefit under 35 U.S.C. 120 and 365(c) if the international application did not originate in the United States and such is necessary, for example, where an intervening reference is found and applied in a rejection of one or more claims. If the international application was published by the International Bureau pursuant to PCT Article 21 , then a certified copy would not normally be necessary.

If benefit under 35 U.S.C. 119(e) , and/or under 35 U.S.C. 120 and 365(c) is being claimed to an earlier filed national application (or international application designating the U.S.) via an intermediate international application designating the U.S., then the intermediate international application must contain a specific reference to the earlier application, as required under 37 CFR 1.78 . The specific reference will usually be included on the cover page of the published international application and/or may appear in the first sentence(s) of the description of the published application. A lack of a proper reference in the published international application does not necessarily mean that a proper reference is not contained in the intermediate international application. Accordingly, the international application file (if the USPTO was the receiving Office) may have to be inspected to determine whether the requirements under 37 CFR 1.78 were satisfied after publication of the international application. For example, the intermediate international application file may contain the specific reference in a separate paper filed after publication but during the pendency of the international application, or a decision granting a petition to accept a late benefit claim may be present in the application file. See MPEP § 211.04 . The examiner may contact the International Patent Legal Administration for assistance.

With regard to (B), a U.S. national application is considered copending with a prior international application designating the U.S. if the international application was pending on the filing date of the U.S. national application. Generally, except in cases where the international application has been withdrawn (either generally or as to the United States), an international application becomes abandoned as to the United States upon expiration of 30 months from the priority date (i.e., the priority date claimed in the international application or, if no priority is claimed, the international filing date) unless a proper submission under 35 U.S.C. 371 to enter the U.S. national phase is filed prior to the expiration of this 30-month period. See MPEP §§ 1893.01(a)(1) and 1893.02 . However, if the international application is one where the 20-month period from the priority date expired before April 1, 2002, then it was necessary to file a demand electing the United States prior to the expiration of 19 months from the priority date in order to extend the international phase to 30 months from the priority date. If such a demand was not timely filed, then under former 37 CFR 1.494 , such an international application became abandoned at the expiration of 20 months from the priority date unless a proper submission under 35 U.S.C. 371 to enter the U.S. national phase was made prior to the expiration of 20 months from the priority date. Accordingly, if the international application is not subject to the filing of a demand in order to delay entry into the U.S. national phase to 30 months from the priority date, then a national application filed prior to the expiration of this 30 month period will be copending with the international application unless the international application was withdrawn, either generally or as to the United States, prior to the filing of the national application. To determine whether the application was withdrawn, the examiner must either review the Home Copy of the international application file (if the USPTO was the receiving Office), or require applicant to certify that the international application was not withdrawn or considered to be withdrawn, either generally or as to the United States, prior to the filing date of the national application claiming benefit under 35 U.S.C. 120 and 365(c) to such international application. In order to expedite examination, applicant should certify at the time of filing a national application claiming benefit under 35 U.S.C. 120 and 365(c) to an international application that the international application has not been withdrawn. If the national application claiming benefit to the international application was filed after the expiration of this 30-month period, then there will be no copendency in the absence of a timely and proper submission to enter the U.S. national phase under 35 U.S.C. 371 . The existence of a national stage application may be checked through the Patent Data Portal and the records of the national stage application should be consulted to verify copendency. Additionally, if the 20-month period from the priority date of the international application expired before April 1, 2002 and the national application claiming benefit under 35 U.S.C. 120 and 365(c) was filed later than 20 months from the priority date of the international application, the applicant may be required to submit proof of the filing of a demand electing the United States within 19 months from the priority date. This proof may be in the form of a copy of the “Notification of Receipt of Demand by Competent International Preliminary Examining Authority” (Form PCT/IPEA/402) showing the demand was received prior to the expiration of 19 months from the priority date, and a copy of the “Notification Concerning Elected Offices Notified of Their Election” (Form PCT/IB/332) showing the election of the United States. If the parent international application was not copending (i.e., abandoned or withdrawn), benefit under 35 U.S.C. 120 is not possible.

With regard to (C), inventors will normally be identified on the cover page of the published international application. In addition, such information is indicated in the PCT Gazette , which is available in electronic form from WIPO’s website ( www.wipo.int/pct/en/official_notices ).

A claim for foreign priority under 35 U.S.C. 119(a) - (d) must be made in the continuing application in order to obtain the benefit of the filing date of the prior filed foreign application. This is true regardless of whether such a claim was made in the parent international application. A foreign priority claim is proper in the continuing application if the continuing application or the parent international application was filed not later than 12 months after the filing date of the foreign application. See 37 CFR 1.55(b) . In addition, a foreign priority claim is proper in the continuing application if the continuing application or the parent international application was filed after expiration of the 12 month period set forth in 37 CFR 1.55(b) but within two months from such expiration, if the right of priority is restored under 37 CFR 1.55(c) . The required claim must be made within the time period set forth in 37 CFR 1.55(d)(1) . This time period is not extendable. See MPEP § 214.01 . A certified copy of any foreign priority document must be provided by the applicant unless the requirements of 37 CFR 1.55(h) or 37 CFR 1.55(i) have been met or the parent international application has entered the national stage under 35 U.S.C. 371 and the national stage application contains the priority document from the International Bureau. See MPEP § 1893.03(c) . In the latter case, the applicant, in the continuing application, may state that the priority document is contained in the national stage application.

For a discussion of U.S. national applications filed under 35 U.S.C. 111(a) having foreign priority claims under 35 U.S.C. 119(a) - (d) and 365(a) to a prior international application designating at least one country other than the United States, see MPEP § 213.01 .

1801-Basic Patent Cooperation Treaty (PCT) Principles
1802-PCT Definitions
1803-Reservations Under the PCT Taken by, and Notifications of Incompatibility Made by, the United States of America
1804-[Reserved]
1805-Where To File an International Application
1806-Applicants and Inventors
1807-Agent or Common Representative and General Power of Attorney
1808-Change in or Revocation of the Appointment of an Agent or a Common Representative
1809-Private PAIR Access
1810-Filing Date Requirements
1811-[Reserved]
1812-Elements of the International Application
1813 - 1816-[Reserved]
1817-PCT Member States
1818-[Reserved]
1819-Earlier Search
1820-Signature of Applicant
1821-The Request
1822-[Reserved]
1823.01-Reference to Deposited Biological Material
1823.02-Filing Nucleotide and/or Amino Acid Sequence Listings in International Applications
1824-The Claims
1825-The Drawings
1826-The Abstract
1827.01-Refund of International Application Fees
1828.01-Restoration of the Right of Priority
1828.02-Continuation or Continuation-in-Part Indication in the Request
1829-[Reserved]
1830-International Application Transmittal Letter
1831-[Reserved]
1832-License Request for Foreign Filing Under the PCT
1833-[Reserved]
1834.01-Filing of Correspondence by Facsimile
1834.02-Irregularities in the Mail or Electronic Communications Service
1835-[Reserved]
1836-Rectification of Obvious Mistakes
1837 - 1839-[Reserved]
1840.01-The European Patent Office as an International Searching Authority
1840.02-The Korean Intellectual Property Office as an International Searching Authority
1840.03-The Australian Patent Office (IP Australia) as an International Searching Authority
1840.04-The Federal Service for Intellectual Property (Rospatent) (Russian Federation) as an International Searching Authority
1840.05-The Israel Patent Office (ILPO) as an International Searching Authority
1840.06-The Japan Patent Office (JPO) as an International Searching Authority
1840.07-The Intellectual Property Office of Singapore (IPOS) as an International Searching Authority
1841-[Reserved]
1842-Basic Flow Under the PCT
1843.01-Prior Art for Chapter I Processing
1843.02-Certain Subject Matter Need Not Be Searched
1843.03-No Search Required if Claims Are Unclear
1843.04-Procedure for Claims Not Required To Be Searched and for Claims That Are Unclear
1843.05-Time Limit for Establishing the International Search Report and the Written Opinion of the International Searching Authority
1844.01-Preparing the International Search Report (Form PCT/ISA/210)
1845.01-Preparing the Written Opinion of the International Searching Authority (Form PCT/ISA/237)
1845.02-Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration (Form PCT/ISA/220)
1846 - 1847-[Reserved]
1848-Sequence Listings
1849-[Reserved]
1850-Unity of Invention Before the International Searching Authority
1851-Identification of Patent Documents
1852-Taking Into Account Results of Earlier Search(es)
1853-Amendment Under PCT Article 19
1854 - 1855-[Reserved]
1856-Supplementary International Searches
1857-International Publication
1858-[Reserved]
1859-Withdrawal of International Application, Designations, or Priority Claims
1860-International Preliminary Examination Procedure
1861-[Reserved]
1862-Agreement With the International Bureau To Serve as an International Preliminary Examining Authority
1863-[Reserved]
1864.01-Amendments Filed Under PCT Article 34
1864.02-Applicant’s Right To File a Demand
1864.03-States Which May Be Elected
1864.04-Agent’s Right To Act
1865-Filing of Demand
1866-[Reserved]
1867-Preliminary Examination Fees
1868-Correction of Defects in the Demand
1869-Notification to International Bureau of Demand
1870-Priority Document and Translation Thereof
1871-Processing Amendments Filed Under Article 19 and Article 34 Prior to or at the Start of International Preliminary Examination
1872-Availability of the International Application File for International Preliminary Examination by the Examining Corps
1873-[Reserved]
1874-Determination if International Preliminary Examination Is Required and Possible
1875.01-Preparation of Invitation Concerning Unity
1875.02-Reply to Invitation Concerning Lack of Unity of Invention
1876.01-Request for Rectification and Notification of Action Thereon
1877-Nucleotide and/or Amino Acid Sequence Listings During the International Preliminary Examination
1878.01(a)(1)-Novelty for Purposes of the Written Opinion and the International Preliminary Examination Report
1878.01(a)(2)-Inventive Step for Purposes of the Written Opinion and the International Preliminary Examination Report
1878.01(a)(3)-Industrial Applicability for Purposes of the Written Opinion and the International Preliminary Examination Report
1878.02-Reply to the Written Opinion of the ISA or IPEA
1879.01-Time Limit for Preparing Report
1879.02-Transmittal of the International Preliminary Examination Report and Related Documents
1879.03-Translations
1879.04-Confidential Nature of the Report
1880-Withdrawal of Demand or Election
1881-Receipt of Notice of Election and Preliminary Examination Report by the United States Patent and Trademark Office
1882 - 1892-[Reserved]
1893.01(a)(1)-Submissions Required by 30 Months from the Priority Date
1893.01(a)(2)-Article 19 Amendment (Filed With the International Bureau)
1893.01(a)(3)-Article 34 Amendments (Filed with the International Preliminary Examining Authority)
1893.01(a)(4)-Claim Amendment (Filed With the U.S. Designated or Elected Office)
1893.01(b)-Applicant for a U.S. National Stage Application
1893.01(c)-Fees
1893.01(d)-Translation
1893.01(e)-Inventor’s Oath or Declaration
1893.02-Abandonment
1893.03(a)-How To Identify That an Application Is a U.S. National Stage Application
1893.03(b)-The Filing Date of a U.S. National Stage Application
1893.03(c)-The Priority Date, Priority Claim, and Priority Papers for a U.S. National Stage Application
1893.03(d)-Unity of Invention
1893.03(e)(1)-Title of the Invention
1893.03(f)-Drawings and PCT Rule 11
1893.03(g)-Information Disclosure Statement in a National Stage Application
1894-[Reserved]
1895.01-Handling of and Considerations in the Handling of Continuations, Divisions, and Continuations-In-Part of PCT Applications
1896-The Differences Between a National Application Filed Under 35 U.S.C. 111(a) and a National Stage Application Submitted Under 35 U.S.C. 371

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High-Ranking Executive to Leave New York Mets Front Office

Pat ragazzo | aug 19, 2024.

New York Mets

The New York Mets are making additional changes in their front office.

According to MLB insider Joel Sherman of The New York Post , Liz Benn will depart from the organization after the 2024 season concludes.

As SNY baseball insider Andy Martino reported, Benn will leave the Mets to pursue other opportunities, but will finish out the season in her current role.

Benn was the highest-ranking female executive in the Mets' baseball operations department. Benn was hired as the team's director of major league operations prior to the 2022 campaign, which is a role she has served in for the past three seasons.

Benn was brought in at the beginning of former general manager Billy Eppler's tenure in the 2021-2022 offseason. She worked in the commissioner's office for Major League Baseball from 2017 until landing her gig in the Mets' front office.

Benn is the latest Mets' staff member, who was informed they would not be returning after the season. Director of international scouting Steve Barningham and a pair of long-time scouts in Ash Lawson and Rudy Terrasas will also not be back.

With David Stearns nearing the end of his first season as president of baseball operations for the Mets, he has been evaluating the front office and is now fully making his mark. This is a common practice whenever a new head decision maker comes in to take over leadership.

Stearns told Martino recently that he is undecided on whether he will start searching for a new GM or not.

PAT RAGAZZO

Pat Ragazzo is the reporter, publisher, site manager and executive editor for the Mets and Yankees websites on Sports Illustrated. Pat was selected as The Top Reporter & Publisher of the Year 2024 by the International Association of Top Professionals (IAOTP) for outstanding leadership, dedication, and commitment to the industry. He appears on several major TV Network stations including: NBC4, CBS2, FOX5, PIX11, SNY and NY1; and is frequently heard on ESPN New York FM 98.7 FM and WFAN Sports Radio 101.9 FM as a guest. Pat also serves as the Mets insider for the "Allow Me 2 Be Frank" podcast hosted by Frank "The Tank" Fleming of Barstool Sports. You can follow him on Twitter/X: @ragazzoreport.

Follow ragazzoreport

tvScientific secures TV outcome optimisation tech patent

August 20, 2024

tvScientific, the performance advertising platform for connected TV (CTV), has announced the approval of a new patent continuation of its issued patent covering Scientific System and Method for Optimising Television Advertising. tvScientific’s patented technology automatically optimises TV advertising to meet advertiser-declared outcome goals, including cost per sale, cost per app install, cost per website visitor, cost per call, etc.

The newly granted patent relates to tvScientific’s suite of advanced ML and AI-based optimisation technologies that automatically ingest signals from internal and external data sets and determine which sets of signals are driving success for a given campaign, through the use of advanced machine learning algorithms. The system then optimises the campaign towards what is driving advertiser-declared outcomes, and away from what doesn’t, delivering a virtuous cycle for improving ROI for users of the tvScientific platform. tvScientific provides marketers with transparency into the granular details of campaign delivery, the relative performance of each channel, and the ability to control or overwrite spend allocations for any reason.

“For as long as TV has been around, the best advertisers could hope to achieve is delivering ads to TV audiences based on reach and frequency KPIs, targeted by indexes that approximate audience demographics based on what shows the audiences watched, as determined by a relatively miniscule panel of TV viewers,” said Jason Fairchild, CEO and co-founder of tvScientific. “This archaic system, in place since the 1950s, has resulted in a TV advertising marketplace that is dominated by just a couple hundred national advertisers (85 per cent of the $63.1 billion TV Market), and has resulted in stagnant growth for years. Meanwhile, digital advertising in the US has grown to $269 billion, led by companies that have built their ad businesses on delivering measurable outcomes to advertisers. These outcome-based ad markets, led by Google and Facebook, have exploded, and now claim up to nine million advertisers.”

“TV Advertising 1.0 is finally coming to an end, and TV Advertising 2.0 will be built on principles that have seen the digital ad ecosystem skyrocket: democratized access, and outcome measurement/ optimisation,” continued Fairchild. “These two simple concepts will radically disrupt the TV Ad Market in a positive way, introducing the most impactful screen in the world to millions of advertisers that have been limited to advertising on small screen sizes in cluttered environments under the draconian control of walled gardens. TV Advertising 2.0 will be enabled by the ability to measure and optimise against advertiser-declared outcomes, and tvScientific’s patented technology is the cutting edge of this new technology frontier.”

This newly granted patent follows on the heels of tvScientific’s current patents on Scientific System and Method for Optimising Television Advertising, System and Method for Scoring Audience Responsiveness to TV advertising; Audience Responsiveness Analytics Index for TV Advertising and System and Method for linking Activation on Consoles to Connected Television Advertisement Delivery.

tvScientific launches CPO CTV ad buying through partners
tvScientific raises $9.4m in convertible note funding
4C ‘BYOD’ for business outcome, ad campaign optimisation
tvScientific Launches Retail Performance TV
NBCU, tvScientific ad platform partnership

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Tags: patent , tvScientific

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COMMENTS

306-Assignment of Division, Continuation, Substitute, and Continuation
306.01 Assignment of an Application Claiming the Benefits of a Provisional Application [R-07.2015] If an application which claims the benefit of the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later ...
300
302.10-Electronic Submission of Assignment Documents; 303-Assignment Documents Not Endorsed on Pending Applications; 304‑305-[Reserved] 306-Assignment of Division, Continuation, Substitute, and Continuation-in-Part in Relation to Parent Application. 306.01-Assignment of an Application Claiming the Benefits of a Provisional Application
Frequently Asked Questions about Patent Assignment
How much does it cost to assign a patent application. Assignment is technically free, but it costs about $100 ($40 in filing costs and about $60 in paralegal time) to record the assignment at the U.S. patent office. Note that the office charges US$ 40 for each patent or patent application listed on the recordation form.
Is it important to record assignments in divisional and continuation
Yes, you can obtain what is called an "Abstract of Title" from the USPTO for any US patent. It will list, one by one, every document relating to title that has been recorded at the USPTO for that US patent. It will say that Assignor A has assigned to Assignee B in a first document. It will say that Assignor B has assigned to Assignee C in a ...
301-Ownership/Assignability of Patents and Applications
If the application on which a patent was granted is a division, continuation, or continuation-in-part of an earlier application, the assignment records of that earlier application will be open to public inspection because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14.
Patent Assignment: How to Transfer Ownership of a Patent
A patent assignment is an agreement where one entity (the "assignor") transfers all or part of their right, title and interest in a patent or application to another entity (the "assignee"). In simpler terms, the assignee receives the original owner's interest and gains the exclusive rights to pursue patent protection (through filing ...
Continuation, divisional and continuation-in-part applications
A continuation-in-part (CIP) application is a refiling of the same specification as in the parent application but also includes information about additional features of the invention. The claims are directed to the additional features. A CIP does not need to be filed. Instead, the application can be filed as a stand-alone nonprovisional patent ...
Practical Considerations for Patent Assignments After the Supreme Court
A further example is situations when an assignee returns to the patent office after the assignment by the inventor and files a broadening amendment or continuation that results in new claims which ...
A Brief Guide to Subsequent Patent Applications in the United States
The filing of continuation, continuation-in-part, and divisional applications is limited by the co-pendency requirement of 35 U.S.C. § 120: each subsequent application cannot be filed after the ...
PDF Patent Assignment Considerations within the U.S. and under the Patent
PCT Applications and Assignment Issues - Example New Matter in PCT Application Must obtain new assignment specifically for the PCT application (and for US Application if filed substantially in parallel) This should not be news, because in effect you have filed the PCT application as a Continuation-In-Part type application, with
Continuing patent application
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 ...
Patent Continuation: A Comprehensive Guide to Evolving Your Patent
Continuation vs. Continuation-in-Part vs. Divisional patent applications There are 3 effective mechanisms through which an inventor may make modifications to the original parent application: A Continuation Application, a Continuation-In-Part Application, and a Divisional Application.
Considerations for Patent Assignments After Minerva Ruling
The Minerva Decision. Inventor Truckai had assigned patent applications to Novacept, Inc., which was later acquired by Hologic, Inc. [iii] Afterwards, Truckai founded Minerva Surgical, Inc., and Hologic sued Minerva for patent infringement on resulting patents. [iv] Hologic argued that assignor estoppel barred Minerva from arguing the patents ...
Procuring U.S. Patents without a Signed Assignment of Patent Rights
Recording an assignment may be necessary to permit the assignee to "take action" in the patent application during prosecution and for the patent to issue in the name of the assignee. 37 CFR 1.46; MPEP §§ 301, 302, 605 . In other words, assignees may face obstacles prosecuting a patent without an executed assignment.
Assignment Center
Assignment Center is the USPTO's online system for filing and managing patent and trademark assignments. Learn how to use it with our tutorial videos and FAQs.
Patents Assignments: Change & search ownership
Assignment Center makes it easier to transfer ownership or change the name on your patent or trademark registration. See our how-to guides on using Assignment Center for patents and trademarks. If you have questions, email [email protected] or call customer service at 800-972-6382.
Continuation Patent Applications: 10 Reasons You Should Consider Filing
Maximize Value. When a patent might be sold or licensed in the future, maintaining a continuation application can maximize value by allowing the purchaser or licensee to use the continuation to pursue their objectives. Defer (Decisions, Costs). Sometimes, it is necessary to defer a decision or cost. Continuation application can be used to delay ...
Continuation-in-Part Patent Applications: A Comprehensive Guide
If you are building a patent family, or need helping managing a portfolio of patents, or are considering filing a continuation-in-part application, please contact Phoenix patent attorney Tom Galvani at 602-281-6481 for more information.
Continuing patent application at the USPTO and the EPO
III-B. Continuing patent application at the EPO. The only continuing patent application option offered by the EPO is filing one or more Divisional Applications as provided by under Article 76 EPC. Although such Divisional Applications may be filed at any time during the pendency of a parent application, the same fees already paid for the parent ...
Assignment of a Part of a Continuation-in-Part?
The defendant further pointed out that two continuations-in-part from the same parent, the '263 and the '134, were expressly assigned. If the above assignment of the '633 transferred ownership of all continuation-in-part applications, then the inventors would not have owned the '263 and '134 patents at the time they purportedly ...
Patent Continuation In Part
A continuation in part patent application should contain a good amount of the information included in the parent or original patent application as well as whatever improvements or changes it hopes to support, called "new matter." The purpose and layout of a continuation in part patent application is defined well by the Manual of Patent ...
Can I Change Patent Examiners?
As shown below, there were about 170,000 applications published or patented in 2017 which were a continuation, continuation-in-part, or divisional. The overwhelming majority ended up in the same U.S. class (which is still the basis of art unit assignment, but will soon be replaced by CPC for that purpose), same art unit, and with the same ...
302-Recording of Assignment Documents
Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28. The cover sheet for patents or patent applications must contain: (A) The name of the party conveying the interest; (B) The name and address of the party receiving the interest;
1895-A Continuation, Divisional, or Continuation- in- Part Application
Thus, rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of the international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as "bypass" applications.
PDF United States Court of Appeals for the Federal Circuit
'011 patent did not receive any PTA and will expire on March 14, 2025, i.e., twenty years from its priority date. The application leading to the '709 patent was filed on November 30, 2012, as a continuation of the '011 patent. The '709 patent issued on December 17, 2013, and is sub-ject to a terminal disclaimer over the '356 patent ...
High-Ranking Executive to Leave New York Mets Front Office
The New York Mets are making additional changes in their front office.. According to MLB insider Joel Sherman of The New York Post, Liz Benn will depart from the organization after the 2024 season ...
tvScientific secures TV outcome optimisation tech patent
tvScientific, the performance advertising platform for connected TV (CTV), has announced the approval of a new patent continuation of its issued patent covering Scientific System and Method for Optimising Television Advertising. tvScientific's patented technology automatically optimises TV advertising to meet advertiser-declared outcome goals, including cost per sale, cost per app install ...