What must an applicant do if the second-filed application discloses but does not claim the same subject matter as a prior application?

When an applicant files a second application that discloses but does not claim the same subject matter as a prior application, the appropriate course of action is to file an affidavit showing derivation. This is important because it establishes that the subject matter in the second application is derived from the earlier application, which may have implications related to priority and interference proceedings.

Filing an affidavit can help clarify the relationship between the two applications, ensuring that the United States Patent and Trademark Office (USPTO) understands that the applicant is not attempting to claim the same invention in multiple applications without proper disclosure. This step becomes especially relevant if the second application is later cited against the first in terms of patentability or if an issue of priority arises.

In contrast, pursuing other options like instituting a derivation proceeding or claiming a new invention does not address the core issue of ensuring that the disclosure from the first application is properly represented and accounted for in the second. Abandoning the second application would not be a practical or beneficial solution if the applicant wants to protect the unique aspects of the disclosed material in a separate application. Therefore, filing an affidavit showing derivation is the correct and most relevant action to take in this situation.