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   Author  Topic: Priority Claims  (Read 1462 times)
Bill Richards
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Priority Claims
« on: Sep 1st, 2006, 9:29am »
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I have a case that dates back to 1996, parts of which are still pending in the US.  I have another pending case, filed in 2001, and I am considering claiming priority to the 1996 case to remove the 1996 case as a reference.  What are the drawbacks?  Problems?
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
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Isaac
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Re: Priority Claims
« Reply #1 on: Sep 1st, 2006, 9:43am »
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on Sep 1st, 2006, 9:29am, Bill Richards wrote:
I have a case that dates back to 1996, parts of which are still pending in the US.  I have another pending case, filed in 2001, and I am considering claiming priority to the 1996 case to remove the 1996 case as a reference.  What are the drawbacks?  Problems?

 
One drawback is that the clock on your 20 years of patent term would start in 1996.
 
It's also possible that the claiming priority may not be sufficient to prevent the application from being used in an obviousness rejection for any claims not supported by the parent application.  See the recent discussion here of In re Chu.
 
There may also be some timeliness limits in the agency rules that would prevent you from claiming priority years after filing an application.
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Isaac
Bill Richards
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Re: Priority Claims
« Reply #2 on: Sep 1st, 2006, 10:13am »
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I thought about the patent term issue, too.  I'd lose about three years.
As for obviousness, there's only one inventor on each application and it's the same person.
At Isaac's excellent suggestion, I checked the Rules.  (My law school research & writing instructor used to tell us to "Read the 'frilly' rule/statute/case!")  The later-filed application meets the requirements of Rule 1.78(a)(2)(ii)(C).
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
Isaac
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Re: Priority Claims
« Reply #3 on: Sep 1st, 2006, 10:27am »
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An unsupported claim not getting the benefit of the claimed priority might run afoul of 102(b) if the parent application was published.  But I suppose the 1996 case was not published.  
 
Make sure that no child of the 1996 case has issued or was published in time to become a 102(b) reference.  Other than that, I'm out of ideas.
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Isaac
Bill Richards
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Re: Priority Claims
« Reply #4 on: Sep 1st, 2006, 10:42am »
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Thanks, Isaac!  I appreciate your suggestions, as always.
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William B. Richards, P.E.
The Richards Law Firm
Patents, Trademarks, and Copyrights
614/939-1488
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