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jeanette
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question about express abandonment/CIP
« on: Sep 6th, 2006, 6:50pm »
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Hi there
 
I filed a utility patent and a subsequent CIP. My utility has been rejected but is still under examination (a non-final rejection). I want to go ahead and proceed with examining the CIP in lieu of the original. The form I filled out was PTO/SB/24 "Express Abandonment Under 37 CFR 1.138" and I selected option 2: "Express Abandonment in Favor of a Continuing Application".  Is this correct?  
 
Also,re  the second application, the CIP has been docketed for a year waiting resolution of the first application which I now wish to abandon. My understanding is that because it is in the docket, it will be forwarded to the examiner once I do this?
 
Pls advise, the people on the phone at the USPTO are only so helpful.
 
Thank you very much.
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JimIvey
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Re: question about express abandonment/CIP
« Reply #1 on: Sep 6th, 2006, 7:01pm »
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Unless you're hoping to hurry up abandonment for any particular reason (e.g., to avoid publication of your application), you don't have to do anything to abandon your application.  Just don't respond to the next action by the PTO.  Done.
 
The problem with express (explicit) abandonment is that it's irrevocable.  If you just put the application on the back burner and don't do anything with it and still reserve the option of resuming prosecution of the application, you preserve your right to revive any unintentionally abandoned application.  Of course, you can't intentionally let the deadline go by, but you can change your mind anytime up until the abandonment occurs.  And, if you miss that deadline unintentionally, you can revive your application.
 
It's just a matter of preserving options.
 
It's also tougher to make a mistake when your task is to do nothing at all rather than taking some affirmative action.
 
Your CIP is not waiting for your parent application -- well, except that it's in a long line behind your parent application.  So, abandoning your parent application won't appreciably expedite examination of your CIP.
 
Regards.
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James D. Ivey
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jeanette
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Re: question about express abandonment/CIP
« Reply #2 on: Sep 6th, 2006, 7:21pm »
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well, this is my situation
 
my CIP redresses problems that the examiner has with the first application
 
I want the second application examined, and the examiner's supervisor told me that this will not happen until the first application is resolved. My CIP has been shown as forwarded to examiner and ready for examination since June 2005.
 
I really appreciate your thoughtful response. Do you have any suggestions how I can get moving on the second application (CIP)? Can I change the staus so that it goes forward instead of waiting on examination of the first application?
 
Thank you very much
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JimIvey
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Re: question about express abandonment/CIP
« Reply #3 on: Sep 7th, 2006, 8:10am »
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on Sep 6th, 2006, 7:21pm, jeanette wrote:
the examiner's supervisor told me that this will not happen until the first application is resolved. My CIP has been shown as forwarded to examiner and ready for examination since June 2005.

Well, I don't think they're supposed to do that, hold up one application for a co-pending one.  In fact, for better efficiency, it would be wise for the same examiner to examine both applications at the same time.  My understanding is that the order of examination is supposed to be according to serial number, i.e., in the order of receipt by the PTO.  However, examiners have a lot of discretion as to what cases get examined when.
 
It's not fair and, I believe, it's contrary to the rules.  However, I see examiners (under pressure from supervisors) use tactics not based in the law or the rules to pressure abandonment of applications.  If you truly don't mind losing that application and you really think it will help your CIP, maybe you should go ahead and expressly abandon it.  Besides, you can refile it later if you like, as long as the CIP or one of its children (if it ever has any) are pending.
 
For what it's worth, waiting a year for examination is not long at all for many technologies.
 
on Sep 6th, 2006, 7:21pm, jeanette wrote:
Do you have any suggestions how I can get moving on the second application (CIP)? Can I change the staus so that it goes forward instead of waiting on examination of the first application?

Other the acquiescing to undue pressure from the PTO, your only option is a Petition to Make Special.  However, that may take months and your examiner's supervisor may decide to ignore any granting of your petition.  It's not right, but that doesn't mean it won't happen.
 
Regards.
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James D. Ivey
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Isaac
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Re: question about express abandonment/CIP
« Reply #4 on: Sep 7th, 2006, 8:22am »
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on Sep 7th, 2006, 8:10am, JimIvey wrote:

Well, I don't think they're supposed to do that, hold up one application for a co-pending one.  In fact, for better efficiency, it would be wise for the same examiner to examine both applications at the same time.  My understanding is that the order of examination is supposed to be according to serial number, i.e., in the order of receipt by the PTO.  However, examiners have a lot of discretion as to what cases get examined when.

 
I haven't researched this at all, but I'm guessing that what's going on here is that the PTO is going to examine the CIP earlier than its serial number requires  but will not do so if the parent application is not smushed.  I don't know if there is a rule governing this issue, but that form the OP describes at least suggests that there might be.    
 
If the PTO is refusing to examine the application in its proper slot, then I'm not sure on what basis they can do that.
 
 
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Isaac
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