possession : CAFC Alert

CAFC Draws a Line in the Sand as to Adding “Boundary” Lines; PTO recants earlier design practice

Ryan Chirnomas | April 3, 2013

In re Owens

March 26, 2013

Panel:  Prost, Moore and Wallach.  Opinion by Prost.

Summary

Although a practice previously endorsed by the USPTO, the CAFC now holds that the addition of a “boundary” line to a design application constitutes the addition of new matter.  Since the parent application gave no indication of one portion of the design being separable from the remainder, the CAFC held that there was no “possession” of the later modification in the original application.


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