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[Retarius]

I wanted to see what other practitioners tend to do in the following situation:

Sometimes I file multiple related non-provisional applications on the same date. Each application lists the title of the related application, plus a placeholder for serial number ("12/xxx,xxx") in the "Cross reference to related applications" paragraph. The first application is filed without knowing what the serial number for the first application, the second application, etc is beforehand.

By the end of the date, you know what all the serial numbers are for all the now-filed applications. My usual practice is to file a same-day preliminary amendment that updates the "Cross reference to related applications" paragraph in each application to add actual serial numbers in place of the placeholder serial numbers, so the applications are now complete. Because this isn't new matter, I don't file new or supplementary declarations.

So my questions are if others tend to follow the same practice, not file the preliminary amendments, or file supplemental declarations that specifically list the preliminary amendment (just to be safe)?

Thanks!
Retarius

[JimIvey]

I usually include enough information in the original application that the related applications can be adequately identified, typically including filing date, inventors, title, and attorney docket number.  Accordingly, the prospect of new matter never comes up and I don't file any additional declarations or anything else.  I've never had a problem with this.

Regards.

[klaviernista]

When it is necessary to update the cross reference to related apps, I always file an amendment (preliminary or otherwise), similar to your practice.  I have personally never seen a reason to file a new declaration to support that type of amendment (I assume you mean a new oath or declaration and not simply remarks).  Of course, that is not to say that a new oath/declaration is never necessary in view of such an amendment.  

[Retarius]

Thanks guys for the prompt responses. I really haven't thought that a new or supplemental declaration is required (in general), although perhaps specific circumstances might dictate otherwise.  I think I'll adopt the method that Jim uses to avoid the need for a preliminary amendment. While I'm sure it might be preferable from examiner POV to show the actual application S/N, they have the tools to adequately identify the related apps from title, inventors, and filing date.

Thanks!
Tom

[JimIvey]

they have the tools to adequately identify the related apps from title, inventors, and filing date.

Even if they don't, I make sure that I have enough to make a factual showing, if necessary.  The attorney docket number goes a long way in that respect.

Regards.

[khazzah]

I think I'll adopt the method that Jim uses to avoid the need for a preliminary amendment.

I didn't read JimIvey's post to say he doesn't file a Prelim Amend, only that he doesn't file a supplemental declaration.

My own practice is to do what JimIvey says -- lots of identifying info in the original filing -- and follow it up with a later amendment to add in serial number and delete docket number. Sometimes that's a Preliminary, sometimes it doesn't happen until the first OA.

While I'm sure it might be preferable from examiner POV to show the actual application S/N, they have the tools to adequately identify the related apps from title, inventors, and filing date.

I've seen plenty of OAs in which the Examiner objects (?) to the spec and says "replace docket numbers with serial numbers". I'm pretty sure the MPEP tells the Examiner to do this, although I'm not sure the law actually requires this amendment.

You didn't ask about this, but ...

If you're thinking you don't need to file an IDS because you listed the apps in the Cross-Ref section, some practitioners will tell you that this is *not* enough to comply with your Rule 56 Duty of Disclosure.

[Retarius]

Thanks Karen,

I'll file the preliminary amendment just to be safe, especially considering the feedback you have received in the past.

Retarius