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[VG]

A quick overview of facts. 
- Application A is pending and has an outstanding issued pre-appeal brief decision, which is still within the extension period. 
- Application B is a continuation of App A and was filed after App A entered the extension period.
- No extension fees were paid in App A at the time of filing of App B (of course, I should have).

Question – can I pay the extension fees in App A right now (i.e., 2 weeks after filling App B) or App B has to be re-filed again together with paying the extension fees in App A.

The relevant MPEP section is 201.06(c).  Unfortunately, it is not clear from this section about the timing of the events.

Thanks in advance

[NJ Patent1]

VG:  The general question; “is a parent ‘pending’ for continuity purposes if extension fees are owed?” has come-up in a number of threads, albeit it different fact patterns.  The consensus - with which I concur - appears to be no.  It’s tough to articulate exactly why, with pinpoint cites to USC & CFR.  But IMO Isaac recently gave a cogent analysis in a different thread.  Check his recent posts in “prosecution”.

[klaviernista]

When was your continuation application filed, relative to the notice of appeal and the USPTO's panel decision?  Without that information, it is impossible to determine whether an extension of time should have been paid to maintain copendency of the parent and the continuation.

Regardless, it is generally not possible to correct defects in a continuation filing by paying required extension of time fees late.  This is why many firms maintain a deposit account and prophylactically authorize the USPTO to charge that deposit account for any required extensions of time, or any deficiency in an enclosed fee.

Why do we need the timing information noted above?  Because the notice of appeal filed in support of the pre-appeal brief request for review tolls the response deadline to the last Office Action (i.e., the one prompting the Pre-Appeal).  Thus, whether or not an extension of time was required to support the continuation filing will depend on when the notice of appeal was filed and when the panel decision was issued.

Per the OG notice regarding the pre-appeal brief conference program (available at http://www.uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm)

"7. Time Periods Before/After a Panel Decision:
   . The time period for filing an appeal brief will be reset to be one
     month from mailing of the decision on the request, or the balance of
     the two-month time period running from the receipt of the notice of
     appeal, whichever is greater. Further, the time period for filing of
     the appeal brief is extendible under 37 CFR 1.136 based upon the mail
     date of the decision on the request or the receipt date of the notice
     of appeal, as applicable.  To the extent that any existing USPTO rule
     is inconsistent with this pilot program, the rule is waived until
     regulations directed to pre-appeal brief conferences are promulgated,
     or the pilot program is ended.  For example, if a request for a
     pre-appeal brief conference is filed with a notice of appeal, the time
     period set in 37 CFR 41.37(a)(1) is waived so that an appeal will not
     stand dismissed if an appeal brief is not filed within two months of
     the filing date of a notice of appeal, but is filed within one month
     of the decision on the request."

I understand this to mean that if the continuation in your case was filed while the pre-appeal brief was pending, no EOT would be required.  Similarly, I understand this to mean that if the continuation was filed witihn the window for filing an appeal brief after the panel decision, no EOT would be required.  However, if the continuation was filed after the window for filing an appeal brief (or taking other action), an extension of time under 1.36 would be required.

[klaviernista]

The consensus - with which I concur - appears to be no.  It’s tough to articulate exactly why, with pinpoint cites to USC & CFR.  But IMO Isaac recently gave a cogent analysis in a different thread.  Check his recent posts in “prosecution”.

1.  35 U.S.C. 120, 37 C.F.R. 1.53(b), and 37 C.F.R. 1.78(a) specify the requirements for filing a continuation application, one of which is that the parent must be pending (i.e., not abandoned) when the child is filed.  This is widely regarded as the copendency requirement, as I am sure you know.

2.  37 C.F.R. 1.134 -1.136 relate to maintaing the pendency of a patent application.  1.134 and 1.135 collecitvely say that the PTO can set a shortened statutory period for reply to an office action, and failure to reply within that shortened statutory period or the period set by 1.136 will result in abandonment of the application.  1.136 says that the shortened statutory period may be extended by the payment of government fees.  Thus, it follows that if an office action is pending in a parent application, and the shortened statutory time period for reply has elapsed, payment of an extension fee under 1.136 is required to maintain copendency of the parent if an applicant wishes to file a continuing application at that time.  Why? Because per 1.135, failure to pay that extension fee means that the application will be abandoned as of the expiration of the shortened statutory period set by the Office.

[klaviernista]

VG:  The general question; “is a parent ‘pending’ for continuity purposes if extension fees are owed?” has come-up in a number of threads, albeit it different fact patterns.  The consensus - with which I concur - appears to be no.  It’s tough to articulate exactly why, with pinpoint cites to USC & CFR.  But IMO Isaac recently gave a cogent analysis in a different thread.  Check his recent posts in “prosecution”.

Here is the specific thread NJ is referring to:

http://www.intelproplaw.com/ip_forum/index.php/topic,20976.msg96626.html#msg96626

[NJ Patent1]

Why do we need the timing information noted above?  Because the notice of appeal filed in support of the pre-appeal brief request for review tolls the response deadline to the last Office Action (i.e., the one prompting the Pre-Appeal).  Thus, whether or not an extension of time was required to support the continuation filing will depend on when the notice of appeal was filed and when the panel decision was issued.

Good point Klav, I completely overlooked that.  Devil is always in the details. 

[NJ Patent1]

2.  37 C.F.R. 1.134 -1.136 relate to maintaing the pendency of a patent application.  1.134 and 1.135 collecitvely say that the PTO can set a shortened statutory period for reply to an office action, and failure to reply within that shortened statutory period or the period set by 1.136 will result in abandonment of the application.  1.136 says that the shortened statutory period may be extended by the payment of government fees.  Thus, it follows that if an office action is pending in a parent application, and the shortened statutory time period for reply has elapsed, payment of an extension fee under 1.136 is required to maintain copendency of the parent if an applicant wishes to file a continuing application at that time.  Why? Because per 1.135, failure to pay that extension fee means that the application will be abandoned as of the expiration of the shortened statutory period set by the Office.
 
Well articulated Klav!  IMO "case closed".  Thanks.  One for the files.  Wish I knew how to save this string for future citation here bcs the question will come-up again (and again, and again ...)

[VG]

I guess I was not entirely clear with my original question, which is much more specific that simply "whether I should pay the extension fees?" (I know I should)

Back to the facts - The CON was filed after the parent went into the extension period (just trust me on that, for those who needs additional details, approximately 4 months after the pre-appeal board decision was issued).

I realize that the extension fees are required and should be paid to maintain the pendency of the parent application - NO questions about this.

My question is much more subtle - since the CON was filed before the extension fees were paid (and while the extension fees were already due), do I need to REFILE the CON when I pay the extension fees? 
In other words, will my originally filed CON "survive" if I pay the extension fee later?

[NJ Patent1]

VG:  Q1: Per Klav's post, yes if you want the filing date. You have no continuity.  Q2: No, it is a nullity as a "con", no continuity, unless you had an authorization to debit on file in the parent.   

[VG]

I am still not sure that I see the answer, but thank you all for brainstorming this issue.

According to Klav - "Why? Because per 1.135, failure to pay that extension fee means that the application will be abandoned as of the expiration of the shortened statutory period set by the Office." 

But I will pay the extension fees. According to MPEP 710.02(e) "under 35 U.S.C. 133 and 37 CFR 1.135 (e.g., where the extension is obtained solely for the purpose of copendency with a continuing application, and no reply is filed, the application will become abandoned upon expiration of the so-extended period for reply)."  It seems to suggest that the application is not abandoned right away at the end of the shortened period

Furthermore, the same MPEP section provides a somewhat related example:"Where a reply is filed after the set period for reply has expired and no petition or fee accompanies it, the reply will not be accepted as timely until the petition (which may be a constructive petition under 37 CFR 1.136(a)(3)) and the appropriate fee are submitted. For example, if an Office action sets a 3-month period for reply and applicant replies in the 4th month and includes only the petition for a 1-¬month extension of time, the reply is not acceptable until the fee is filed. If the fee is not filed until the 5th month, an additional fee for the 2nd month extension would also be required in order to render the reply timely."

Analogizing this scenario to my facts, it seems that filing a petition for extension of time (and, of course, paying appropriate fees) will be treated as if the application has never been abandoned after the shortened period and until the end of extended period.

I guess we can formulate two different views:

# 1 - Application is abandoned right away at the end of the shortened period and remains abandoned until  petition+fee is filed; after filing of petition+fee , the application is treated as non-abandoned (from the date of filing this petition and till the end of the extended period) and then becomes abandoned again (unless a response is filed) at the end of extended period

# 2 - Application is not abandoned at the end of the shortened period and stays as non-abandoned until the end of the statutory period at which point it becomes retroactively abandoned based on any petitions/fees filed during this period (or lack thereof)

# 1 - seems to be inconsistent with the above MPEP provisions.  Any votes?

[Isaac]

I guess we can formulate two different views:

# 1 - Application is abandoned right away at the end of the shortened period and remains abandoned until  petition+fee is filed; after filing of petition+fee , the application is treated as non-abandoned (from the date of filing this petition and till the end of the extended period) and then becomes abandoned again (unless a response is filed) at the end of extended period
ataaa
# 2 - Application is not abandoned at the end of the shortened period and stays as non-abandoned until the end of the statutory period at which point it becomes retroactively abandoned based on any petitions/fees filed during this period (or lack thereof)

Better go back to the formulating board.   Neither is correct.   If you don't pay the fee by the end of the statutory period, the application is considered abandoned at the end of the shortened period.   

[NJ Patent1]

Isaac:  maybe I'd dodge the post hoc / propter hoc "abandoned" argument / label.  Per your own prior post, I think, an application can't be said to be truly "abandoned" as a matter of law till the expiry of the appropriate statutory period.  It could be "snatched" from the jaws of abandonment on the last day.  I say rescued rather that resucitated/resurected - implying it's dead.  Maybe I'm wrong.  I might focus on the "copendency" requirement, and might characterize it as the pendency of parent is suspended / in abeyance untill extension fees are paid.  No fee, pendency yes, but copendency no.  My words of course appear nowhere in the statute / regs, but might provide an "analytical framework" to accept (as i have) Klav's cogent summary and put this recurring question to bed? 

[klaviernista]

According to Klav - "Why? Because per 1.135, failure to pay that extension fee means that the application will be abandoned as of the expiration of the shortened statutory period set by the Office." 

I think you might be misinterpreting what I said.  Perhaps some examples will help. 

Example 1:  OA is mailed 03/01/2011, and sets a 3 month shortened statutory period for reply.  Applicant files a CON on 06/15/2011, but does not file an EOT in the parent when the con is filed.  Moreover, applicant does not file a CON by 09/01/2011 in the parent either.  As a result, the parent is abandoned (per 1.135) as of 06/01/2011 (at the end of the shortened statutory period) and the CON should be denied for failure to comply with the copendency requirement.

Example 2: OA is mailed 03/01/2011, and sets a 3 month shortened statutory period for reply.  Applicant files a CON on 06/15/2011, but does not file an EOT in the parent when the CON is filed.  On 07/15/2011, Applicant files a two month EOT in the parent, extending the time period for response to the OA 08/01/2011.  Applicant does not file a response to the OA or any further extension of time by 09/01/2011.  As a result, the parent is abandoned (per 1.135) as of 08/01/2011 (at the end of the shortened statutory period + the two month EOT under 1.136), but the continuation complies with the copendency requirement.

-Note:  I recognize that example two is inconsistent with my prior remark that you generally cannot pay EOT fees late.  After reconsidering the issue, however, I agree that the MPEP would allow an EOT to be filed to maintain copendency between the parent and the CON, even if it is paid after the CON is filed and so long as less the maximum extension period in the parent has not elapsed.

But I will pay the extension fees. According to MPEP 710.02(e) "under 35 U.S.C. 133 and 37 CFR 1.135 (e.g., where the extension is obtained solely for the purpose of copendency with a continuing application, and no reply is filed, the application will become abandoned upon expiration of the so-extended period for reply)."  It seems to suggest that the application is not abandoned right away at the end of the shortened period

Correct.  It means that the abandonment will occur at the expiration of any extended period for reply, if an extension of time is filed (the operative phrase is "so-extended period for reply".  If no extension is filed, the application is abandoned as of the end of the shortened statutory period.

Furthermore, the same MPEP section provides a somewhat related example:"Where a reply is filed after the set period for reply has expired and no petition or fee accompanies it, the reply will not be accepted as timely until the petition (which may be a constructive petition under 37 CFR 1.136(a)(3)) and the appropriate fee are submitted. For example, if an Office action sets a 3-month period for reply and applicant replies in the 4th month and includes only the petition for a 1-¬month extension of time, the reply is not acceptable until the fee is filed. If the fee is not filed until the 5th month, an additional fee for the 2nd month extension would also be required in order to render the reply timely."

This is consistent with my comments re: example 2 above.

Analogizing this scenario to my facts, it seems that filing a petition for extension of time (and, of course, paying appropriate fees) will be treated as if the application has never been abandoned after the shortened period and until the end of extended period.

I disagree.  The only way the parent will not be considered as abandoned at the end of the shortened statutory period is if you file an extension of time.  All the scenario in the MPEP says is that where an EOT is filed in a parent application for the purpose of maintaining copendency of the parent with a child (CON), the parent will be abandoned at the end of the extension period resulting from the EOT (instead of the end of the shortened statutory period).

[klaviernista]

I guess we can formulate two different views:

# 1 - Application is abandoned right away at the end of the shortened period and remains abandoned until  petition+fee is filed; after filing of petition+fee , the application is treated as non-abandoned (from the date of filing this petition and till the end of the extended period) and then becomes abandoned again (unless a response is filed) at the end of extended period

# 2 - Application is not abandoned at the end of the shortened period and stays as non-abandoned until the end of the statutory period at which point it becomes retroactively abandoned based on any petitions/fees filed during this period (or lack thereof)

# 1 - seems to be inconsistent with the above MPEP provisions.  Any votes?

You are missing the correct option, which is:

#3:  The effective date of the abandonment of the parent application is not determined by the USPTO until after the expiration of the shortened stautory period and any available extensions thereto.  If no extension is filed, the parent is (per 1.135) abandoned as of the end of the shortened statutory period.  If an EOT was filed in the parent, but no response, the parent is (again, per 1.135) abandoned as of the end of the extended period for reply resulting from the filing of the EOT.  Note that this is subtlely different from option 2 quoted above, which is incorrect.  For the purpose of filing a continuation, the effective date of the abandonment is what counts.  Not when the PTO formally issues a notice of abandonment.

 

[VG]

Thanks again everyone, especially NJ.  I tend to see a lot of unrelated answers / responses from others but... there is some values in these responses as well.

One point to add is that 35 USC 120 does not list "copendency" as a requirement, but mere "if filed before the patenting or abandonment of or termination of proceedings"

MPEP 201.11 speaks about "copendency" i.e., - Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior application.

As far as "abandonment" - MPEP 201.11 states "The term “abandoned,” refers to abandonment for failure to prosecute (MPEP § 711.02), express abandonment (MPEP § 711.01), abandonment for failure to pay the issue fee (37 CFR 1.316), and abandonment for failure to notify the Office of a foreign filing after filing a nonpublication request under 35 U.S.C. 122(b)(2)(B)(iii) (MPEP § 1124)."

Now looking at MPEP § 711.02 / 37 CFR 1.135(a) specifies that an application becomes abandoned if applicant "fails to reply" to an office action within the fixed statutory period.   NOTE - it is NOT "shortened period set by the US PTO"

Also, considering my previous note that the US PTO will accept a response that was filed without extension fees if fees are eventually paid, I guess that patent applications are considered to be abandoned after the shortened statutory period and while the PTO is waiting for applicants decision to file a petition with extension fees.

I will try again (for the last time) with a simpler hypo:
OA issued in the parent on 1/1 (3 months fall on 4/1) - CON filed on 4/15 - 1 month extension fees paid on 4/20 in the parent

Based on what I have seen so far, I still don't see a problem with the CON filed on 4/15 as, from what I see in MPEP, the parent application was not abandoned immediately after 4/1 and then revived on 4/20, i.e., it seems to me that the parent app has never been abandoned in this example

I guess another view - the parent was abandoned during period of 4/1 and 4/20 and then revived for the period of 4/20 through 5/1 and that the CON should be only filed between 4/20 and 5/1

Any thoughts?  (BTW, please don't repeat another dozen times that the extension fees has to be paid - I think however read at least 50% of this post got it and this is not a "straight from the MPEP / Patent Bar test" type question that I am trying to get an answer to).  I think the issue is rather interesting and there are different views and thoughts about it.