Question
I'm following an IPR that includes one patent that is a continuation of a continuation-in-part. It was filed in 2006 but claims a priority of 1999, the date of the oldest patent.
I know for a fact that the subject matter was made available to the public around 2005 by a competitor of the "inventor". It seems that they figured that they could patent a competitor's product under a continuation, and keep the 1999 priority date making it much harder to find prior art.
Firstly, is my understanding of how a continuation patent works correct? Secondly, assuming it is, why should this be allowed, isn't it a loophole that prevents otherwise strong prior art being used to prevent a patent from being granted?
Answers: 2 public & 0 private
When you file a patent application disclosing a particular invention, the effective invention date of the invention is the filing date. If you file a continuation application, you are still claiming the same invention, therefore, the invention is the same as that of the original application and therefore accorded the original filing/invention date. If you file a continuation-in-part, let's say the original application disclosed an invention comprising ABC, you now file a continuation-in-part for an improved invention ABCD - ABC is the original invention and is accorded the original filing date of the original application, but for the D part of the continuation-in-part invention, D only gets the filing date of the continuation-in-part application. So why is this unfair?
Note that with continuations, in order to prevent the possible patent term from extending beyond the 20 years from the original filing date, examiners will usually, but not always, require a terminal disclaimer. For continuation-in-parts, no terminal disclaimers are usually required provided, for example, that D, added to the original invention, is, in and of itself, novel and unobvious.
Also note that it is extremely important for the continuity to be preserved with respect to continuations or continuation in parts because if the time chain is broken, that is, if you file a continuation after the original patent application issues as a patent, not only will the patent office not consider it to be a legitimate continuation, but the original disclosure of the original patent can be used against the later-filed "continuation" because in all likelihood, the first original application was published more than one year before you filed the continuation, and since you can no longer claim the priority date of the original application, because the time chain was broken, you will not be able to get your "continuation" patent because everything disclosed , and could therefore possibly be claimed in the continuation application, is already disclosed in the original application which is now prior art against you.
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