A Continuation-In-Part (CIP) Is An Unholy Mix

Addressing the issue of the priority date of claims in a continuation-in-part (CIP) application, the U.S. Court of Appeals for the Federal Circuit ruled that the burden of proof ordinarily should rest with the party claiming priority to the earlier priority date, unless the Patent Office has previously determined otherwise. PowerOasis, Inc. v. T-Mobile USA, Inc., Case No. 07-1265 (Fed. Cir., April 11, 2008) (Moore, J.).

A CIP application is an application filed during the lifetime of an earlier non-provisional application that "discloses and claims subject matter not disclosed in the prior application." Generally a CIP adds at least one claim that relies, for support, on new matter first presented in the CIP application. Typically a CIP application will contain a mix of claims, some of which are only entitled to the actual filing date of the CIP application, while others may be entitled to the