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THORPE, NORTH & WESTERN
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GENERAL
E-MAIL: PATLAW@TNW.COM
HOME PAGE:http://www.xmission.com/~tnw
October 24, 1997
Mr. Robert Hinderliter
Delux Cleaning Supply of Ft. Worth
2513
Warfield Street
Fort Worth, TX 76106-7554
Re: Continuation, Divisional and Continuation-In-Part Patent Applications
Dear Robert:
Thank you for your call this morning. As per your request, please find a brief explanation of how certain types of patent applications can have an effective date prior to the date on which they were filed.
In pursuing a patent application, a patent owner files his or her patent application with the U.S. Patent and Trademark Office. The filing date has several effects, one of which is to help determine whether the patent will be found valid. If the invention was publicly used or sold more than one year before the filing date, the patent is invalid. Additionally, the patent examiner will often rely upon this date when determining what references to apply to determine whether the claims are patentable.
There are several situations, however, where the effective filing date for such an analysis is prior to the actual filing date of an application. If, for example, an applicant is unable to obtain claims, or does not obtain claims with the desired breadth in the original or “parent” application, he or she may file a “continuation application” under the provisions of 35 U.S.C § 120. The continuation application may be filed at any time prior to abandonment of the parent application, or prior to the issuance of the parent application as a patent. While the continuation application” will usually be filed well after the parent application, its effective filing date for the purpose of validity over prior sale, use, etc., is the filing date of the parent application.
A similar situation is present in a divisional application filed under 35 U.S.C. § 121. When a patent examiner determines that the claims of an invention fall into different classes, etc., the examiner can refuse to consider some of the claims. To have these claims considered, the applicant must file a new application, which is referred to as a divisional application. The effective filing date of the divisional application is the same as the parent application, even though the divisional application may be filed much later.
Still yet another scenario is when an inventor makes an improvement or modification to his or her invention. The inventor may file a continuation-in-part application. As the name implies, part of the teachings of the parent application are carried forward in the application, and part of the application is new. The effective filing date for all of the subject matter which was in the parent application is the date the parent application was filed. For all new subject matter, the effective filing date is the filing date of the continuation-in-part application.
I hope this provides you with a concise summary of how patent filing dates work. If we can be of further assistance, please let us know.
Very truly yours,
THORPE, NORTH & WESTERN, L.L.P.
Randall B. Bateman
RBB/tlc