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   Author  Topic: question about express abandonment/CIP  (Read 1999 times)
Isaac
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Re: question about express abandonment/CIP
« Reply #10 on: Sep 9th, 2006, 7:45am »
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I wasn't challenging your opinion.   I don't see anything in your opinion that wouldn't be sound advice in an appropriate case.  
 
The original poster is asking how to get the PTO to examine his CIP in lieu of his current application which he doesn't expect to issue as a patent.   Your post suggested that your answer would depend on some things that are all predicated on getting a patent issued at some point.
 
I know I'm missing something, but I don't know what that something is.    
 
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Isaac
ChrisWhewell
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Re: question about express abandonment/CIP
« Reply #11 on: Sep 9th, 2006, 10:05am »
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Thank you for your patience.  The question of whether to expressly abandon, or not to expressly abandon in my view depends upon how the commercial team (in this case an individual) expects the patent that is granted on the CIP to accomplish (assuming that is to happen.)  Much can be accomplished using actual notice under 35 USC 1.154(d) after publication of the spec.  
 
We're often not given all the facts and expected to answer and do so at the best of our abillity, but these matters are complex enough that the decision tree becomes a forest in the absence of more info.
 
One possibility is that there  is an actual infringer.  If this were the case , and the parent case didn't cover what the infringer is doing, but the CIP does, then appropriate action is petition to advance based on actual infringement.  Of course 1.154(d) helps again.  
 
If there is no infringer, as in the vast majority of granted patents, then, it;s all about getting a patent in one's name so it can be displayed proudly in the den or living room or on a resume.  In that case, the advice is different and express abandonment of the parent may not be all that bad a thing.
 
I would ask the inventor, "what do you want or expect your issued patent to do for you Huh??" before I answered the question of what to do with the parent.
 
Getting the Examiner's boss to tell the Examiner to examine the CIP before the parent case would be like pulling teeth.  If there is an actual infringer of claims in the CIP only, then this could help enable filing of the special petition on the CIP only.   There are indeed many avenues of potential conjecture, which are stimulating mental calisthetics and I enjoy thinking about these topics.  On this one I need the inventor to answer the question in the penultimate paragraph.
 
Thanks,
 
Chris
 
 
 
 
 
 
 
 
« Last Edit: Sep 9th, 2006, 12:40pm by ChrisWhewell » IP Logged

Chris Whewell, M.S.
Isaac
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Re: question about express abandonment/CIP
« Reply #12 on: Sep 9th, 2006, 12:04pm »
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on Sep 9th, 2006, 10:05am, ChrisWhewell wrote:
Thank you for your patience.  The question of whether to expressly abandon, or not to expressly abandon in my view depends upon how the commercial team (in this case an individual) expects the patent that is granted on the CIP, assuming that is to happen.  Much can be accomplished using actual notice under 35 USC 1.154(d) after publication of the spec.  
 
We're often not given all the facts and expected to answer and do so at the best of our abillity, but these matters are complex enough  that the decision tree becomes a forest in the absence of more info.

 
We were given that the applicant does not intend to pursue the parent application because he does not believe it will issue as a patent and that a CIP has already been filed.   Nothing you've said suggests an advantage that can be gained by not abandoning the parent application.   Further, you haven't suggest any alternative plans that would become unavailable if the parent were abandoned.
 
Against that we have a suggestion that one of the applicants problems will go away if he abandons the parent application.
 
Expressly abandoning doesn't "feel right" for the reasons Jim gives, but if the CIP recites all of the subject matter of the parent and claims its priority, no currently available substantive rights will be lost by doing so (at least under the current rules on continuations).   Any mistakes can be fixed by using the implied "incorporation by reference" policy.  
 
What's really at stake here is the applicant's place in line at the patent office.   The Applicant cannot possibly get a better place in line than the place of his current application regardless of the success of a petition to make special.
 
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Isaac
ChrisWhewell
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Re: question about express abandonment/CIP
« Reply #13 on: Sep 9th, 2006, 12:45pm »
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You've missed my point entirely.   Let me state it again.   I would not offer advice to such a client, based on the information they have given .  I view patents as having commercial significance, which varies from case to case.  In this instance, the inventor has not supplied any commercial information whatsoever.  Thus, from a pragmatic standpoint of making money and not purely academic considerations of procedural aspects the PTO undertakes in examining its applications, I would need more info.  In my opinion, I would not supply the client an answer based on the information that was provided.      
The most correct answer depends on how the client intends to use the patent.    
 
I don't view what is at stake as being the client's place in line at the PTO, although that was the quetion posed by the inventor.  Not infrequently,  inventors don't know what they need to know.  What is at stake, from my perspective, in every case, is how a given patent is going to be used for a business advantage.   But that is becuase I've got a commercial background.  Legal guys and commercial guys, in my experience, nearly always see things from different perspectives.
 
I may differ in opinion on your statement that the Applicant cannot possibly get a different place in line regardless of a special petition.  If the claims in the CIP are being infringed and if other statements necessary for a petition to advance based on actual infringement are met, a special petition may be granted on the CIP.    Are there not cases in PTO history, where a patent was granted on a CIP before termination of proceedings on all parent cases ?  
 
I'm not sure also, on the statement that "Any mistakes can be fixed by using the implied "incorporation by reference" policy."  I've seen cases where exact language incorporating the parent case in its entirety was absent, and the Examiner did not permit entry of matter that was in the parent , into the CIP, such as in my US 5,269,953.   Assuming the entire contents of the parent are in fact in the CIP, then I would agree, but this is not always the case.  I would agree that letting the parent die a slow, natural death is preferable to an express abandonment in most cases.  I have a strong aversion to signing express abandoments.  
 
« Last Edit: Sep 9th, 2006, 1:09pm by ChrisWhewell » IP Logged

Chris Whewell, M.S.
Isaac
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Re: question about express abandonment/CIP
« Reply #14 on: Sep 9th, 2006, 4:09pm »
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on Sep 9th, 2006, 12:45pm, ChrisWhewell wrote:
You've missed my point entirely.   Let me state it again.   I would not offer advice to such a client, based on the information they have given .

 
That's fine.   I don't think the reasons you gave were particularly well tailored to the particular case at hand.
 
Quote:
I may differ in opinion on your statement that the Applicant cannot possibly get a different place in line regardless of a special petition.

 
I did not say that a petition to make special would not work.  Instead I suggested that the currently available option for immediate examination was pretty much unbeatable.   If OP abandons the parent, examination of the CIP is likely to begin while before a petition gets considered.
 
Quote:
I'm not sure also, on the statement that "Any mistakes can be fixed by using the implied "incorporation by reference" policy."  I've seen cases where exact language incorporating the parent case in its entirety was absent,

 
The rules have been changed so that if a priority claim is made, the claim for priority can be used to incorporate by reference material that is accidentally omitted even if the words "incorporated by reference" were not used.
 
In any event, this particular CIP was written for the purpose of replacing the parent.   While the applicant may have goofed, most likely it contains what's needed.
 
It's certainly possible of course that the CIP was not the proper route to take and that the OP should go back and salvage the parent.   But I don't see how business factors external to the patent office have any bearing on this decision.
 
 
 
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Isaac
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