Thursday, July 21, 2016

Continuation-in-Part Design Patent Applications

Deciding when and under what circumstances a design patent application can claim priority to an earlier filed application can be a challenging task. In particular, we often get asked whether a design patent application may be filed as a continuation-in-part (CIP) of an earlier filed design patent application. While the quick answer is yes, the disadvantages associated with CIPs often outweigh the benefits.

A CIP application is a patent application filed during the lifetime of an earlier non-provisional patent application. A CIP repeats some, a substantial portion, or all of the earlier non-provisional application, and adds matter not explicitly disclosed in the earlier application. A CIP is occasionally referred to as an “add-on” because of the additional subject matter that may be grafted on to the earlier application. The U.S. Patent Office reviews and examines CIPs in the same manner as all other non-provisional patent applications.

As you may suspect, a CIP application can be an attractive option in certain circumstances. For instance, a CIP application offers the opportunity to add subject matter, modify an existing disclosure, or expand on previously described embodiments. Accordingly, a CIP application can provide an effective tool for appending additional features to a pending application. Further, a CIP can be used to reduce up-front expenses by combining new features with an existing disclosure, potentially reducing preparation expenses and attorney’s fees. For example, a CIP application may be used to incorporate incremental improvements that would otherwise not justify a separate and parallel design application. Lastly, claims within a CIP that are limited to the subject matter of the earlier filed parent application may receive the priority date of the parent application. However, claims that include subject matter which is first disclosed in the CIP application do not inherit the priority date of the parent application.

Accordingly, CIP applications are not without their disadvantages. Principle among the considerations to be balanced when making the decision to file a CIP is the priority date that may be assigned. As mentioned, claims that include subject matter which is not disclosed in the parent application are limited to the priority date of the CIP application. Phrased another way, only a claim that is fully supported (i.e., all of its limitations) by the disclosure of the earlier filed application may inherit the earlier priority date. While this can be impactful for many reasons, we will address only one reason here for the sake of brevity – intervening prior art. In some instances, Applicant’s own art, including the parent application itself, may be available as prior art to render the later filed CIP claims obvious.

As the drawings in most design patent applications are incorporated into the claim language, walking the fine line between making adjustments to the drawings without spoiling entitlement to an earlier priority date can be a challenging task. Fortunately (or unfortunately), M.P.E.P. § 1504.04 does offer some limited guidance on the subject. Notably, the M.P.E.P. provides that a later filed application that changes the shape or configuration of a design disclosed in an earlier application is not entitled to the benefit of the filing date of that earlier filed application. (citing In re Salmon, 705 F.2d 1579 (Fed. Cir. 1983)). However, the M.P.E.P. elaborates that a later filed application that reduces certain portions of a drawing to broken lines, or converts broken line structure to solid lines, is not considered a change in configuration as defined in Salmon. This seems to suggest that reduction of solid lines to broken lines, or vice versa, is not a departure that would introduce new matter.

We also have some guidance from the Federal Circuit via In re Owens regarding unclaimed boundary lines and entitlement to an earlier priority date. 710 F.3d 1362 (Fed. Cir. 2013). In In re Owens, the Court offered that the best advice for future applications regarding unclaimed boundary lines was presented in the U.S.P.T.O.’s brief: “unclaimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists, but was unclaimed, in the original disclosure.” Id. at 1369. For a more detailed analysis of In re Owens check out our post here.

Accordingly, a properly timed and filed CIP application can be a strategic business decision to decrease short-term costs and ensure the flexibility to claim the subject matter of a prior application. However, a CIP application is not appropriate in all situations, and in many cases the additions made to the disclosure of a parent application may destroy any of the benefits provided by the CIP application. To minimize risk, an Applicant considering a CIP would be best warned to file before the publication of the parent application to avoid a situation where the parent could be available as prior art.

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