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USPTO's Proposed Rule On Continuing Applications: Preventing Claim Surprises.pdf

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Preview of USPTO's Proposed Rule on Continuing Applications: Preventing Claim Surprises
🔗 Source: docs.justia.com
📊 Size: 172 KB
👤 Author: Judge - James C. Cacheris
⬇️ Downloads: 58

Summary

The primary rationale for the proposal, as clarified by Solicitor Whealan at the ABA meeting in Boston, is not to reduce patent pendency but to prevent applicants from introducing new claims years after the initial filing date without prior public disclosure.

The notice of proposed rulemaking (71 Fed. Reg. 49) states that maintaining continuing applications for the purpose of adding claims is not calculated to advance prosecution before the Office. The discussion highlights a legal question regarding the USPTO's interpretation of 35 USC 120, which codifies the rights of patent applicants to submit continuing applications, and whether this interpretation aligns with Chevron doctrine.

The blog post also mentions various other intellectual property-related news and events, including:
- A discussion on a previous post about the USPTO's proposed rulemaking.
- Legal issues related to patent litigation, such as the case of FireStar v Red Hat.
- Scientific and legal developments surrounding Hwang Woo-Suk's stem cell research.
- Other patent-related news, like Calgon Carbon's UV patent invalidation and a discussion on "How not to get a job.

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Description

The USPTO proposes a rule limiting continuations in patent applications to prevent unexpected claim changes years after filing, aiming to reduce application backlog rather than solely focusing on pendency. This move aims to safeguard the public from unforeseen modifications to initial applications.

Technical Information

  • File Format: PDF
  • File Size: 172 KB
  • Pages: 3
  • Language: EN
  • Author: Judge - James C. Cacheris
  • Total Downloads: 58
  • Last Updated: 2 weeks ago

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USPTO's guideUSPTO's tutorialProposed guideProposed tutorialRule guideRule tutorialContinuing guideContinuing tutorialApplications: guideApplications: tutorialPreventing guidePreventing tutorialClaim guideClaim tutorialSurprises guideSurprises tutorial

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