News & Analysis as of

Continuation Applications

Haynes Boone

Strategies to Consider with USPTO's New Fast-Track Examination Pilot Program

Haynes Boone on

On Oct. 27, 2025, the U.S. Patent and Trademark Office (USPTO) announced it is offering a Streamlined Claim Set Pilot Program in an effort to further accelerate examination of currently pending applications with a limited...more

Wolf, Greenfield & Sacks, P.C.

2025 USPTO Recap: What This Year’s Developments Mean for Patent Filers

The US Patent and Trademark Office (USPTO) is navigating a period of significant transition. Driven by workforce shifts, operational restructuring, evolving approaches to subject matter eligibility, and new fee structures,...more

Ropes & Gray LLP

Causam v. ITC: A New Development and Potential Cautionary Tale in Patent Assignments

Ropes & Gray LLP on

In the recent case Causam Enterprises, Inc. v. International Trade Commission, the United States Court of Appeals for the Federal Circuit (the “CAFC”) found that an invention assignment agreement that broadly assigned the...more

Baker Botts L.L.P.

Patenting Play: Analyzing Recent Video Game Play Patents

Baker Botts L.L.P. on

The video game industry is a dynamic space that encourages innovation, with game developers often creating and employing novel technology and game design elements....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Strategic Prosecution in 2026: What Patent Examiners Might Do Differently — And What That Means for Your Portfolio

As companies and markets increasingly view patents not just as a defensive shield but as strategic assets (e.g., for licensing, enforcement, or other potential revenue generation), the prosecution phase is critical....more

Dickinson Wright

Fewer Claims in the Fast Lane: USPTO’s Streamlined Claim Set Pilot Program

Dickinson Wright on

In a Federal Register Notice published October 27, 2025 (“Notice”), the U.S. Patent and Trademark Office (USPTO) announced a new pilot program called the “Streamlined Claim Set Pilot Program” (hereinafter “Pilot Program”)....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

IP Hot Topic: Causam Enterprises, Inc. v. ITC: An Assignment for “Continuations” Did Not Include “Continuations-in-Part”

In Causam Enterprises, Inc. v. ITC, No. 23-1769 (Fed. Cir. Oct. 15, 2025), the Federal Circuit addressed whether Causam was the owner of the asserted patent and, thus, had Article III standing. The central issue was whether...more

Mintz

The “Hakim Statement” – Avoiding Estoppel During Prosecution

Mintz on

Parallel, divisional, or continuation applications can be strategically filed to pursue additional or broader claims. Yet, claim scope across related applications can be constrained by the judicially created doctrine of...more

Haynes Boone

Life Sciences Due Diligence and the Interplay with Recent Prosecution Timing Changes at the USPTO

Haynes Boone on

Most life sciences transactions result in intellectual property (IP) due diligence being carried out on underlying IP assets that are often central to the transaction. Typically, this includes a focus on patent due diligence...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Narrows Prosecution Laches in Google v. Sonos

In Google LLC v. Sonos, Inc., the U.S. Court of Appeals for the Federal Circuit reversed in part a district court ruling that had held Sonos’s “Zone Scene” patents unenforceable due to prosecution laches. The Federal Circuit...more

Proskauer - Minding Your Business

Sonos, Inc. v. Google LLC: CAFC Leaves Expanded Role for Prosecution Laches in Limbo

The practice of serially filing continuation applications through a patent’s lifetime has come under increased pressure in recent years from newly implemented continuing application fees to expanded case law on non-statutory...more

Foley & Lardner LLP

Federal Circuit Skeptical of Prosecution Laches

Foley & Lardner LLP on

In Google v. Sonos, the Federal Circuit soundly disposed of arguments that the patent-in-suit was unenforceable due to laches based on an “unreasonable delay” in patent prosecution. Does the court’s reasoning foreclose the...more

Morrison & Foerster LLP

Federal Circuit Pushes Back on Prosecution Laches

In October 2023, we reported on the district court decision in Sonos, Inc. v. Google LLC. The decision was notable for reviving the prosecution laches doctrine to render unenforceable a continuation patent filed 13 years...more

Baker Botts L.L.P.

Patent Application Prosecution Timeline: What Startup Leaders Need to Know

Baker Botts L.L.P. on

For startup founders and CTOs navigating the patent landscape, understanding the prosecution timeline is essential for strategic planning and resource allocation. After filing your patent application with the USPTO, the...more

Wolf, Greenfield & Sacks, P.C.

Strategic Uses and Considerations for Reissue Applications (Part 3 of 3)

Reissue applications represent a very small fraction of the total number of applications filed at the USPTO each year. Indeed, at the midpoint of 2025, over 1.2 million utility applications have been filed, with less than 300...more

Womble Bond Dickinson

USPTO Accelerates Patent Issuance Timeline - Key Impacts for Patent Applicants and Holders

Womble Bond Dickinson on

Effective May 13, 2025, the United States Patent and Trademark Office (USPTO) will implement a significant change to its patent issuance process, substantially reducing the time between issue notification and patent issuance....more

Wolf, Greenfield & Sacks, P.C.

Broadening Your (Patent) Protection

In the fast-paced world of innovation, inventors sometimes realize that their patents do not fully protect their inventions until after the patent issues. If the patent family has an application still pending at the patent...more

Seyfarth Shaw LLP

The USPTO Is Issuing Patents Faster — Here’s Why That Matters

Seyfarth Shaw LLP on

Beginning May 13, 2025, the window between paying the issue fee and your patent officially issuing will become much shorter....more

Harris Beach Murtha

USPTO Filing Fee Changes

Harris Beach Murtha on

New fees affecting trademarks and patents have taken effect at the United States Patent and Trademark Office (USPTO). The new fee structures will dramatically influence trademark and patent filings. Applicants need to rethink...more

Mintz - Intellectual Property Viewpoints

Avoiding the Provisional Application Filing Pitfall of Narrowed Claim Interpretation

Provisional patent applications are popular in the U.S. for the various advantages they may provide applicants, including lower filing costs, less restrictive United States Patent and Trademark Office (USPTO) filing...more

Adler Pollock & Sheehan P.C.

The U.S. Patent and Trademark Office (USPTO) Fee Changes – What You Need to Know

The USPTO has announced fee increases and new fees for patents and trademarks to take place on January 18, 2025, for trademarks, and January 19, 2025, for patents.  The increase in fees and the introduction of new fees by the...more

Mintz - Intellectual Property Viewpoints

USPTO Takes a Hint from European Practice in Addressing Late Continuation Concerns

As expected, the United States Patent and Trademark Office (USPTO) is raising its fees this year, effective January 19, 2025. However, the USPTO is doing something a little unusual this time—they’re raising the cost of filing...more

McCarter & English, LLP

USPTO Increases Patent Fees Effective January 19, 2025

McCarter & English, LLP on

The US Patent and Trademark Office (USPTO) recently announced that it will increase patent fees effective January 19, 2025. The USPTO will raise almost all existing patent fees. Although the USPTO made a few exceptions for...more

Foley & Lardner LLP

When Will the LLM Patent Wave Hit?

Foley & Lardner LLP on

Major technology paradigm shifts are typically followed by a wave of patent application filings. If you don’t believe that, a quick patent search will validate this for your technology of choice. What you’ll also find is...more

Morrison & Foerster LLP

Sonos v. Google Breathes New Life into Prosecution Laches Doctrine

A recent district court decision in Sonos v. Google has set forth a novel application of the prosecution laches doctrine to a patent with a post-1995 priority date. Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320...more

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