While rule-making efforts by the U.S. Patent and Trademark Office (“USPTO”) to reduce patent continuation filings have an unclear future due to the decision on March 20, 2009, in
Think Carefully When Filing Continuation Applications
Recent decisions have assaulted continuations on several fronts. Because of a new requirement to rescind claim scope disclaimers, it will be easier to avoid infringement of continuations, and because of strengthening enablement and written description requirements, more continuations will be invalidated on those grounds and on prior art grounds when priority claims are more easily broken. Consequently, care should be taken in the preparation and prosecution of any patent application claiming priority to another application.
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