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BizIPEsq., Attorney
Category: Intellectual Property Law
Satisfied Customers: 996
Experience:  I am a tech attorney and I represent clients with technology, internet and intellectual property matters
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Hello - I own 3 valid currently enforceable utility patents:

Customer Question

Hello - I own 3 valid currently enforceable utility patents: 1. #5,799,609 filed May 7, 1996; 2. CIP #5,842,437 filed Oct 28, 1997; and 3. CIP #6,055,934 filed Aug 27, 1998. The product has been sold for several years and I receive royalties. I understand that the expiration date of valid patents is 20 years from the filing date so the "parent" patent is set to expire 5/7/2016.

My question is - after the main patent expires, will the 2 remaining CIP patents (the "children") still be valid enforceable patents on their own?

Please be advised I have used this service before and I always pay. If I have follow-up questions that you would be willing to answer, rest assured you will be properly compensated. Thank you
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  BizIPEsq. replied 1 year ago.

BizIPEsq. :

Hello, I will be assisting you

BizIPEsq. :

I assume the additional patents are divisional patents

BizIPEsq. :

Generally speaking, where a patent application is a divisional of another application the expiration date of the divisional is based on the application date of the parent application.

BizIPEsq. :

so the divisional will expire 20 years from May 7, 1996 (this is also often called a terminal disclaimer termination).

BizIPEsq. :

Thank you for allowing me to assist you

BizIPEsq. :

Please rate my answer

Customer :

Thank you. It is very important I get a clear understanding of the situation. All I remember when these patents issued is that they were "Continuation-In-Part". Is a Continuation-In-Part the same as a divisional patent? How can I know if my additional patents are divisional? Is there any way you can look them up since you have the numbers? Thanks again

BizIPEsq. :

A continuation-in-part patent application (also just known as a continuation application) includes subject matter not disclosed in the parent patent application. Similar to a divisional a continuation claims the sme priority date of the parent application and would therefore expire in 20 years.

BizIPEsq., Attorney
Satisfied Customers: 996
Experience: I am a tech attorney and I represent clients with technology, internet and intellectual property matters
BizIPEsq. and 4 other Intellectual Property Law Specialists are ready to help you
Expert:  montysimmons replied 1 year ago.

A "CIP" patent application contains information "OLD Material" from the parent application and "new" material not found in the parent application.

 

Such a "CIP" does claim priority back to the filing date of the parent but for the "OLD" material only. The new material only has priority back to the filing date of the CIP.

 

Thus, the new material of the CIP expires 20 years from the filing date of the CIP, not the parent application.

 

Therefore, the CIP patent does not expire on the same date as the parent for the new material.

 

 

 

Expert:  BizIPEsq. replied 1 year ago.
My colleague is generally correct. The continuation patents need to be reviewed specifically as to the claims contained in them to determine which claims relate to the parent.
Expert:  montysimmons replied 1 year ago.

Actually I am 100% correct.

 

According to USPTO Records, Patent 5,842,437 is a Continuation in part of 5,799,609 (application 08/643,985 filed on 05-07-1996) (all maintenance fees have been paid)

 

Patent 6,055,934 is a continuation of 5,799,609 (application 08/643,985 05-07-1996). I would need to review this patent to see what type of “continuation” it happens to be. (all maintenance fees have been paid)

 

Now it is true that one can call a patent application a "CIP" when it is not and the records at the USPTO are based on what the person filing the application calls the application (CIP, Divisional, continuation, etc.).

 

Thus one would need to verify a patent called a "CIP" is a true "CIP". More specifically, the important issues is what is claimed in the "CIP" and if the claims are directed to the new material.

 

In the future, since you clearly value your patents, as you paid those expensive 12 year maintenance fees, I would direct my patent questions to a local patent attorney. Patent validity is a mine field and one wrong step and boom . .. you have made an expensive mistake listening to wrong answers regarding same and there are plenty of wrong answers out there.

 

 

 

 

 

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