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Jeffrey Wendt

is president and founder of The Wendt Firm, P.C. With a background in chemical engineering, working experience as an engineer, and intellectual property law, Mr. Wendt is particularly trusted by those working in the materials processing, medical device, and energy sectors (conventional and renewable), as well as startup businesses and entrepreneurs providing unique solutions to diverse problems. Mr. Wendt is a current member, former president, and former board member of NAPP, the National Association of Patent Practitioners, as well as the Austin and Houston Intellectual Property Law Associations, and is a master of the bench member of the Honorable Nancy F. Atlas Intellectual Property American Inn of Court.

Recent Articles by Jeffrey Wendt

Eight Steps to Success in Navigating Subsequent Patent Applications in the United States

In Part I of this five-part series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. In Parts III and IV we discussed various implications of the types of subsequent applicants. And now, in Part V, we provide practice tips drawn from the case law cited in this series, as well as derived from omphaloskepsis.

Prosecution and Litigation Implications of Subsequent Patent Applications (Part IV)

In Part I of this series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III discussed some of the implications of these for prosecution and litigation, and Part IV will examine some further implications. In the fifth and final installment in this series, we will distill all of the information covered to provide concrete practice tips for practitioners.

Implications of Filing Subsequent Patent Applications in the United States (Part III)

In Part I, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III will discuss some of the implications of these. When an applicant seeks to add new claims pursuant to a continuation or divisional application, U.S. Patent Law explicitly requires that the original specification provide adequate support for the new claims by the original specification satisfying the Section 112(a) written description and enablement requirements for the new claims. 35 U.S.C. § 120. The same is also true for continuation-in-part (CIP) applications claiming overlapping subject matter but not for claims comprising “new matter” because the new matter claimed must find support in additional disclosure, i.e., in material added to the CIP application itself.

Types of Subsequent Patent Applications in the United States (Part II)

In Part I of this five-part guide to U.S. subsequent patent applications, the authors reviewed the law governing such applications. In Part II, we review the different types of subsequent applications. A continuing patent application is “an application filed subsequently to another application, while the prior application is pending, disclosing all or a substantial part of the subject-matter of the prior application and containing claims to subject-matter common to both applications, both applications being filed by the same inventor or his legal representative.” In re Febrey, 135 F.2d 751, 757 (CCPA 1943) (internal quotation marks and citation omitted). A continuation application is “a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented.”