Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[VG]

Klav, thank you so much for your response.  I think we are on the same page, i.e., that an EOT may be filed after filing the CON, and that this CON does not need to be refiled (for priority reasons) after filing the EOT.  Another way of stating it, if an EOT is filed, the application does not go abandoned for any period prior to filing the EOT.

To be honest, I don't see the different between my proposal # 2 (which I called "retroactive" abandonment) and your proposal # 3.

[klaviernista]

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"

Read 1.135(a) again.  It says, quote, "If an applicant of a patent application fails to reply within the time period provided under §1.134 and §1.136, the application will become abandoned unless an Office action indicates otherwise."

Now see MPEP 714.3, which states, "Failure to file a reply during the shortened statutory period results in abandonment of the application unless the time is extended under the provisions of 37 CFR 1.136."

[klaviernista]

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"

That basically means copendency.  If an application is patented, abandoned, or its proceedings have been terminated, it is no longer under consideration by the Office - i.e., not pending.

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

You don't see a problem because there is no problem!  Your example is essentially example 2 of one of my prior posts in this thread.

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

This is not how it works.  The date of effective abandonment cannot be determined until the entire potential time period for reply has elapsed, e.g., 6 months from the mailing date of the office action.  If an EOT is paid, the application was never abandoned, not even during the period between the 3 month date and the date the EOT was filed.    See option three in one of my posts above.

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.

This is actually a pretty straightforward issue.  I think a lot of people have the issues twisted around in their head, and are confused as a result.  I also think that you have not framed the question very well.

What I think you are trying to ask (and the question I have tried several times to answer), is as follows:

Hypo:  A continuation is filed after the 3 monthy shortened statutory period for reply to an Office Action in a parent application, but within the 6 month statutory period for reply to such office action.  No extension of time is filed in the parent application when the continution was filed.  Can the continuation application be saved by later filing an extension of time in the parent application?

Answer:  YES!  So long as the extension of time in the parent is filed within the full statutory period for reply in the parent, and is the correct extension of time.  I.e., say the continuation was filed without an EOT within the fourth month after the mailing date of an office action in the parent. If applicant files an EOT in the fifth or sixth month to save the continuation, the EOT must be a two or three month EOT, not a 1 month EOT.

[klaviernista]

Klav, thank you so much for your response.  I think we are on the same page, i.e., that an EOT may be filed after filing the CON, and that this CON does not need to be refiled (for priority reasons) after filing the EOT.  Another way of stating it, if an EOT is filed, the application does not go abandoned for any period prior to filing the EOT.

YES!