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[dab2d]

Hypo:

Can you file a Continuation off of a case that is under a restriction requirement, it is past the due date, and an extension of time has not been filed. What if it is over 4 months past due. Basically do cases have to be caught up with fees, before you can file a Cont. from them?

[klaviernista]

You need to pay whatever EOT fees would be required if you were to respond to the RR (or other office action).  Otherwise you will be missing one of the key requirements needed to file a continuing application, namely copendency between the parent and the continuation.   

E.g., say that a restriction is issued in the parent, and the examiner sets a 1 months shortened statutory period for reply.  A month and half passes, and your client wants to file a continuation from the parent.  To do so, you need to pay a 1 month EOT fee in the parent and file the continuation before the expiration of two months from the mailing date of the restriction.

[NJ Patent1]

dab2d:  In the unlikely event klav's post was not clear enough; the controlling question is:  "is the con, cip, div filed during the pendency of the parent"?  One case where the patent statute is deceptively plain on it's face.  If you don't at least pay the EOT fees, the case goes bye bye.  A RR, like (almost) all OAs, starts a 6 mo statutory clock.  You can always refile, "All" you loose is any priority claim. 

[dab2d]

That was my thought, but I started thinking...

Co-pending.... If the Parent has not been ABN, then isn't it still pending, even if it is past the due date for a response.

[Isaac]

That was my thought, but I started thinking...

Co-pending.... If the Parent has not been ABN, then isn't it still pending, even if it is past the due date for a response.

That sounds logical, but it is not the way things work.   If you never file the response, your application will be deemed non-responsive based on the shortened response period despite the fact that the PTO cannot know that you've abandoned until the date when it becomes impossible to extend.  Effectively it is a back dating of your date of abandonment.

If you pay for an extension, then you have until the end of the paid for period until your application becomes abandoned.

[dab2d]

Everyone, thanks for the clarification.

That sounds logical, but it is not the way things work.   If you never file the response, your application will be deemed non-responsive based on the shortened response period despite the fact that the PTO cannot know that you've abandoned until the date when it becomes impossible to extend.  Effectively it is a back dating of your date of abandonment

Not that it matters, but when a case goes ABN, is it legally ABN the date of the last office action, the date of the the time period expired, or the date the ABN is entered? Does it even have a legal effect beyond the fact that it is ABN?

[Isaac]

Not that it matters, but when a case goes ABN, is it legally ABN the date of the last office action, the date of the the time period expired, or the date the ABN is entered? Does it even have a legal effect beyond the fact that it is ABN?

If no extension is filed for and no response if filed, the application will be legally abandoned as of the shortened response time, for example, three months after a substantive office action.