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ARTICLE · 04 MAY 2016

Prior Art And Continuation-In-Part Claims

What are the dates to which prior art must adhere, in examination of claims in a continuation-in-part (CIP) nonprovisional patent application?

United StatesIntellectual Property

What are the dates to which prior art must adhere, in examination of claims in a continuation-in-part (CIP) nonprovisional patent application? Each claim in a CIP, whether independent or dependent, has its own priority date. Each claim in a CIP that is fully supported in the parent application should be examined in comparison with prior art that has a filing date preceding the filing date of the parent application. Generally, any claims in a CIP that are not supported in the parent application (i.e., which would have been new material and disallowed in a continuation or divisional application) can be examined in comparison with prior art that has a filing date preceding the filing date of the CIP. This can get messy if there is a long chain of continuations mixed with one or more CIP applications. Even the parent application itself can be cited as prior art for any CIP claims not supported in the parent (see, e.g., Dennis Crouch, Patentably-O, "Continuations-in-Part

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