News & Analysis as of

Continuation Applications Patents

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

BakerHostetler

U.S. Electronic Patent Grants and the Effect on the Timing of Filing Continuation and Divisional Patent Applications

BakerHostetler on

On April 18, 2023, the U.S. Patent and Trademark Office (PTO) will begin moving away from issuing paper patents and will begin issuing patents electronically as electronic patent grants (eGrants). In addition to reducing...more

Kilpatrick

Why Bypass Continuation Is Best For Nat'l Phase Patent Entry

Kilpatrick on

The U.S. is unique in that a Patent Cooperation Treaty, or PCT, application can enter national phase examination via two distinct routes: as a national phase application under Title 35 of the U.S. Code, Section 371, or as a...more

Mintz - Intellectual Property Viewpoints

Understanding Chinese Voluntary Divisional Application Patent Practice

For many parts of the world, a voluntary divisional application (known as a continuation application in the U.S.) may be filed at any time during the pendency of any parent application. The claims in the voluntary divisional...more

Manatt, Phelps & Phillips, LLP

Patent Held Invalid—Specification Disclaimer Prevented Claim to Earlier Priority Date

In Akeva L.L.C., v. Nike, Inc., the Federal Circuit held that a disclaimer in a specification that excluded a particular embodiment prevented later claims in the continuation patents from claiming the excluded embodiment,...more

Schwabe, Williamson & Wyatt PC

2017 Supreme Court and Precedential Patent Cases From the Federal Circuit, With Some Significant Cases from 2016

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

Schwabe, Williamson & Wyatt PC

Summaries of All Supreme Court and Precedential Federal Circuit Patent Cases Decided Since Jun. 1, 2016

This paper is based on reports on precedential patent cases decided by the Federal Circuit distributed by Peter Heuser on a weekly basis. ...more

Nutter McClennen & Fish LLP

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...more

McDermott Will & Emery

Federal Circuit Rubberstamps 50-Year-Old Practice to Save 10,000 Continuation Patents

Addressing the question of precisely when a continuation application must be filed in order to be entitled to its parent application’s filing date, the US Court of Appeals for the Federal Circuit held that the statutory...more

McDermott Will & Emery

Patent Term Adjustment of Parent Application Does Not Extend to Continuation Applications - Hossein Mohsenzadeh v. Michelle K. Lee

Addressing for the first time whether a patent term adjustment in a parent application is applicable to continuing applications, the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s summary judgment...more

McDermott Will & Emery

Implied License Limited to Continuation Applications, Not to Provisionals

Endo Pharmaceuticals Inc. v. Actavis, Inc. - Addressing the issue of implied license, the U.S. Court of Appeals for the Federal Circuit vacated and remanded a lower court’s denial of a preliminary injunction, finding...more

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