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Patent Prosecutors Beware: Earlier Publication Anticipates Broad Claims of Continuing Application, PTAB Litigation Blog

February 2018

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A recent written decision by the PTAB in connection with an inter partes review (IPR) proceeding is a reminder to patent prosecutors to carefully consider the possible construction of claim terms in a continuation or divisional application of earlier filed patent applications and the entitlement of the claim to priority to those earlier filed patent applications, which have published prior to the filing date of the continuation or divisional application. In addition, the decision serves as a reminder to petitioners in PTAB proceedings (as well as litigators in litigations) to carefully review an earlier filed patent application(s) for support for claim terms used in a patent, which is a continuation or divisional application of an earlier filed patent application that published before the continuation or divisional application was filed, to determine if the earlier filed patent application is a basis for alleging anticipation of the claims.

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