Adding Subject Matter to International Patents

International Patents

Is adding new subject matter, similar to continuation-in-part (CIP) applications, more difficult in other countries? Is it easier to maintain the original priority date for new subject matter in the United States than internationally?

CIPs are more difficult abroad because the parent applications of a CIP will be used as prior art against the CIP in those instances.  Thus, the newly added subject matter of the CIP must independently be patentable (inventive and non-obvious) over the base subject matter that it shares with the parent application.  In the US, we allow applicants to build on their own prior art significantly more than in other countries.  For instance, at one point, the United States had a §103(c) exception – prohibiting Examiners from citing any prior patent publications in a §103 obviousness-type rejection that had ‘common ownership’ to the Existing Applicant.  So, while the Applicant will not have to deal with combating their own prior art under § 103 in the United States, international jurisdictions tend to be more stringent in their considerations.  

John DeStefano, Patent Agent

John DeStefano
Technical Advisor

John is a patent and technology technical advisor at Founders Legal. John performs patent prosecution assistance for the Intellectual Property practice.

He received his Bachelor’s Degree in Electrical Engineering from Missouri University of Science and Technology and is pursuing a law degree through the University of New Hampshire.

Prior to joining Founders Legal, John was a Technology Transfer Intern for the Missouri University of Science and Technology, providing intellectual property support in a university setting.

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