CIP patent

[iassaf]

A non provisional patent application is filed. Nine months later a CIP application is filed for the original patent. Both patents are issued. The CIP patent adjusts some of the claims of the original patent to make them broader with no improvement to the invention. In addition, some art (by other inventors) was filed/published, between the filing date of the original patent and the CIP patent, that teaches the additions that make the claims broader.

1- Are the claims in the CIP patent independent claims that should be prosecuted against art filed between the filing date of the original patent and the filing date of the CIP patent?

2- Is it allowed to merely change some words in a claim of the original patent and repeat in a CIP patent to make the claim broader but add no improvements?

3-Since some claims (in the CIP) essentially repeat the original patent claims, do one need to challenge/reexamine both patents (for the repeated claims) or the ones in the original patent only?

Thank You,

 

[divgradcurl]

1- Are the claims in the CIP patent independent claims that should be prosecuted against art filed between the filing date of the original patent and the filing date of the CIP patent?

Depends. If the parent specification is broad enough to disclose the claims in the CIP, then the proper priority date is the filing date of the parent application, not the CIP application, and the art you state would not be prior art. If the claims require the new matter in the CIP, then the art would be prior art to the claims in the CIP.

2- Is it allowed to merely change some words in a claim of the original patent and repeat in a CIP patent to make the claim broader but add no improvements?

Absolutely. You don't even need a CIP to do that -- that could be done in a continuation if the original specification supported the broadened claims, or even a broadening reissue application in certain cases.

3-Since some claims (in the CIP) essentially repeat the original patent claims, do one need to challenge/reexamine both patents (for the repeated claims) or the ones in the original patent only?

Are you sure the claims are really the same? If they are really the same, the CIP should have issued with a terminal disclaimer, it would be listed on the front page of the patent near where the priority history is listed.

Either way, you need to seek reexamination on each and every claim individually that you want to try and invalidate.

 

[iassaf]

Quote:
1- Are the claims in the CIP patent independent claims that should be prosecuted against art filed between the filing date of the original patent and the filing date of the CIP patent?

"Depends. If the parent specification is broad enough to disclose the claims in the CIP, then the proper priority date is the filing date of the parent application, not the CIP application, and the art you state would not be prior art. If the claims require the new matter in the CIP, then the art would be prior art to the claims in the CIP."

The claim in question was narrower in the original patent (the invention was restricted to lower frame). In the CIP patent, the claim was broadened (claiming a Chassis instead of lower frame). In the period between filing the original patent and the CIP patent, another art was published that has the invention connected to a structure other than "lower frame" thus included under chassis.

Should the CIP patent claims be examined against this art?

Thanks,

 

[divgradcurl]

Again, the answer depends on whether or not the claims in the CIP are fully supported (disclosed and enabled) by the original specification. If the original nonprovisional was broad enough to have claimed a "chassis" in your example -- but for whatever reason the applicants did not claim a chassis, but instead claimed a narrower apparatus -- then the claims in the CIP are likely entitled to the priority date of the original nonprovisional application, and the fact that there is "intervening" art is irrelevant.

However, if the broader "chassis" is only disclosed and enabled in the CIP specification, and not the original nonprovisional application, then the "chassis" claims would likely only be entitled to the filing date of the CIP, and then the intervening art would be relevant.

It's not possible to say for sure without reading all of the relevant patents. You might also want to check the prosecution histories of the two patents, and see if there were any reasons why the claims were made in this fashion. Also, if you are filing a reexamination petition, you could include this art, and let the patent office decide what to do with it -- but you probably wouldn't want to rely on it solely, unless you can make a cogent argument that the claims in the CIP are not entitled to the earlier priority date -- and the way to do that is either to show that the claims int he CIP are not enabled by the original specification, or show that there was an express disclaimer of broader claim scope in the prosecution history of the original nonprovisional application.