Describing your own prior art in specs for a CIP


In a CIP application that is essentially an improvement on one's own prior art:

  • Should specifications review and summarize what the parent patent (or application) does (maybe state that patent's number), then describe how the new specs are different?
  • Or just do the specs as if it's a new application, given that the reference to the parent(s) would be in the "Related Applications" section ending with the "...incorporated herein by reference in its entirety" statement?
  • Or maybe it doesn't matter whether or not such a summary is included?


Posted 2019-07-28T01:40:12.140

Reputation: 759



Explaining the new applications relationship to a previous application of yours is much more likely to hurt than help. It would be cited in the first sentence of the application as "The current application is a continuation-in-part of U.S. application XYZ, dated XYZ."

Note - the term "prior art is very loaded. Prior Art == something they can use against a given application. Best to remove it from your vocabulary. There are ome things do not qualify as prior are unless you admit they are prior art, then they do qualify as prior art.

George White

Posted 2019-07-28T01:40:12.140

Reputation: 21 648