TAKEAWAY: While there is no affirmative duty for patent practitioners to resubmit art from a parent application in a continuing application, doing so may improve prosecution.
MPEP § 609.02 states that an examiner will consider information which has been considered in a parent application. In fact, according to the Federal Circuit, “it can not be inequitable conduct for an applicant not to resubmit, in [a] divisional application, the information that was cited or submitted in [a] parent application.” ATD Corp. v. Lydall, Inc., 159 F.3d 534, 547. This may cause some practitioners to consider whether resubmitting references from a parent application is worth the time and expense. While there is arguably no legal consequence for failing to resubmit references from a parent application, there are potential benefits to resubmitting.
For example, resubmitting the references on an Information Disclosure Statement in the continuing application will highlight the existence of such references to examiner, rather than relying on the examiner to take the additional step of searching through each parent application. This can be particularly burdensome to the examiner when examining continuing applications with longer priority chains. To the extent that consolidating the references in one location 1) reduces the amount of time that examiners need to search through parent applications and 2) highlights examiners’ attention to the most relevant art, the quality of examination (and of the resulting issued patents) should improve. Additionally, Federal Circuit law is subject to change, and thus, given the relative ease of identifying references cited in parent applications, applicants may further consider resubmitting art in continuing applications to insulate themselves against future changes in inequitable conduct case law.