In Part I, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III will discuss some of the implications of these. When an applicant seeks to add new claims pursuant to a continuation or divisional application, U.S. Patent Law explicitly requires that the original specification provide adequate support for the new claims by the original specification satisfying the Section 112(a) written description and enablement requirements for the new claims. 35 U.S.C. § 120. The same is also true for continuation-in-part (CIP) applications claiming overlapping subject matter but not for claims comprising “new matter” because the new matter claimed must find support in additional disclosure, i.e., in material added to the CIP application itself.
- Implications of Filing Subsequent Patent Applications in the United States (Part III)
- AAM v. Neapco Misreads Federal Circuit Precedent to Create a New Section 101 Enablement-like Legal Requirement – Part II
- New Enablement-Like Requirements for 101 Eligibility: AAM v. Neapco Takes the Case Law Out of Context, and Too Far – Part I
- An Emerging Section 101 Expansion to Section 112(a) Enablement? The Federal Circuit Should Stop It Now
- UK Supreme Court Refuses to ‘Water Down’ Sufficiency Requirement
- Thought Experiment: Is Our Patent System Ready for a Potential Future of Brain Interfacing?
- How Patents Helped Sprout the World’s First Plantable Pencil
- Cybergenetics Appeals Ohio Federal Judge Ruling that Alice Kills DNA Analysis Patents
- We Made it to November: The IP Community Gives Thanks in a Year Like No Other
- Patent Filings Roundup: Battle-Tested Off-Roading Patent Asserted; Jack Henry Battered Again