Need some advice here. I recently filed a very long application with over a 100 page spec/drawings/claims. Of course, need to pay additional fees for this which is fine. The specification contains elements A, B, and C and only claims A.
Client now wants to file another application, claiming priority to the 1st application, for element B. But considering the additional fee, how should I approach this? Should it be a continuation application while having the same long spec/figures, or can I just make a new application and copy over the relevant spec/figures over so I'm under 100 pages? Would this be considered a continuation application?
Or do I even need to submit the specification? I can just claim priority in the ADS.
I have a client who files some really long applications, and files continuations from those. On a continuation (actually, it's often a division) I always file the original papers -- I worry that just filing the necessary subset will cause trouble on a subsequent CON or DIV, where I want to claim something different from the original disclosure.
Yes, it means that you may have to pay extra-page fees. In fact, suppose you're below the limit, but you want to file a preliminary amendment canceling the parts you don't want. They count *all* pages filed on the filing date against you, so you can go from no extra fees, to significant extra fees. If you've got a prelim amendment to file, submit it the next day.
Quote from: mersenne on 05-04-20 at 08:17 PM
In fact, suppose you're below the limit, but you want to file a preliminary amendment canceling the parts you don't want. They count *all* pages filed on the filing date against you, so you can go from no extra fees, to significant extra fees. If you've got a prelim amendment to file, submit it the next day.
Thanks for responding, but I don't understand this part. If I am under the 100 page limit, then cancel the parts that I don't need via a prelim, then I am still under the limit. Why in both cases do I need to pay extra fees?
Quote from: cheesepep on 05-05-20 at 10:41 AM
Thanks for responding, but I don't understand this part. If I am under the 100 page limit, then cancel the parts that I don't need via a prelim, then I am still under the limit. Why in both cases do I need to pay extra fees?
When this bit me, I believe I had filed the original (long) application, then a PA with directions to cancel some figures and remove some paragraphs, annotated figures showing changes, replacement figures with changes committed and numbers changed, and a substitute spec that omitted the extraneous material. They counted most or all of those pages and billed me for 'em.
Quote from: mersenne on 05-06-20 at 10:01 AM
Quote from: cheesepep on 05-05-20 at 10:41 AM
Thanks for responding, but I don't understand this part. If I am under the 100 page limit, then cancel the parts that I don't need via a prelim, then I am still under the limit. Why in both cases do I need to pay extra fees?
When this bit me, I believe I had filed the original (long) application, then a PA with directions to cancel some figures and remove some paragraphs, annotated figures showing changes, replacement figures with changes committed and numbers changed, and a substitute spec that omitted the extraneous material. They counted most or all of those pages and billed me for 'em.
Thanks. So it is best to file the parent app with over 100 pages (pay additional fee), then file a continuation app with the same over 100 pages and pay normal fee, and then file a prelim for the continuation app on a next day that reduces the total number of pages to be less than 100 pages, and thus no additional fees are needed (normal fee only). Is this right? I sure hope so.
Quote from: mersenne on 05-04-20 at 08:17 PMI worry that just filing the necessary subset will cause trouble on a subsequent CON or DIV, where I want to claim something different from the original disclosure.
Why would you have this worry so long as you supply the appropriate incorporation-by-reference language in your pared-down continuing application?
Yes, if you're doing anything involving long (extra-page) applications and preliminary amendments, don't file any more than the minimum on the filing day. File whatever you want the next day.
Re: incorporation-by-reference, that should work, but in long (> 2-3 applications) chains, I'm always worried that there'll be some sort of problem that makes it difficult or impossible to bring in language or figures from the parent application. I figure if I file the exact original parent application (while maintaining co-pendency), there's no plausible argument that I've given up any material or (equally important) that I've added new matter by omitting incorrect or inconvenient material.
Quote from: mersenne on 05-07-20 at 11:10 AM
Re: incorporation-by-reference, that should work, but in long (> 2-3 applications) chains, I'm always worried that there'll be some sort of problem that makes it difficult or impossible to bring in language or figures from the parent application. I figure if I file the exact original parent application (while maintaining co-pendency), there's no plausible argument that I've given up any material or (equally important) that I've added new matter by omitting incorrect or inconvenient material.
Exactly.
Also you need to consider how much money (if at all) you are saving. The current excess page charge is $400 for each additional 50 pages over 100 (large entity). If you delete material from the spec and delete figures, that entails editing the spec to maintain consistency, and maybe renumbering some of the figures. And proofreading to make sure it's done correctly. How much time (= $) does that involve? And then if you later file a CON 2, and the parent is no longer pending, you will need to file CON 2 off of CON 1 (assuming it's still pending), depend on incorporation by reference for material not explicitly in CON 1, and then edit CON 1 to add back in material to the spec and add back in figures (with additional edits and maybe renumbering to maintain consistency). And proofread to make sure it's done correctly. How much time (= $) does that involve?
Quote from: mersenne on 05-07-20 at 11:10 AM
Re: incorporation-by-reference, that should work, but in long (> 2-3 applications) chains, I'm always worried that there'll be some sort of problem that makes it difficult or impossible to bring in language or figures from the parent application. I figure if I file the exact original parent application (while maintaining co-pendency), there's no plausible argument that I've given up any material or (equally important) that I've added new matter by omitting incorrect or inconvenient material.
Keep in mind also that you cannot do an incorporation by reference back to more than one generation for essential matter.
Example: Parent -> Child -> Grandchild
If Child incorporates by reference Parent and Grandchild incorporates by reference Child, Parent is not incorporated by reference for any essential matter that Grandchild may rely on.
Quote from: bluerogue on 05-08-20 at 03:25 AM
Quote from: mersenne on 05-07-20 at 11:10 AM
Re: incorporation-by-reference, that should work, but in long (> 2-3 applications) chains, I'm always worried that there'll be some sort of problem that makes it difficult or impossible to bring in language or figures from the parent application. I figure if I file the exact original parent application (while maintaining co-pendency), there's no plausible argument that I've given up any material or (equally important) that I've added new matter by omitting incorrect or inconvenient material.
Keep in mind also that you cannot do an incorporation by reference back to more than one generation for essential matter.
Example: Parent -> Child -> Grandchild
If Child incorporates by reference Parent and Grandchild incorporates by reference Child, Parent is not incorporated by reference for any essential matter that Grandchild may rely on.
That's a good point. And a strong reason to leave the spec and figures alone, and just pay the excess page charge.
Assume that the parent is no longer pending, but the child is. The child deleted some of the material in the parent, but incorporates the parent by reference. Can the child be amended to include all the omitted material (effectively restoring the spec and figures of the child to those of the parent)? Then the grandchild can have full support of all the material in the parent? Would that work?
Quote from: smgsmc on 05-08-20 at 08:44 AM
Assume that the parent is no longer pending, but the child is. The child deleted some of the material in the parent, but incorporates the parent by reference. Can the child be amended to include all the omitted material (effectively restoring the spec and figures of the child to those of the parent)? Then the grandchild can have full support of all the material in the parent? Would that work?
My gut says yes, but I don't know. I don't think the MPEP has anything directly on point. The closest I can find is that when you incorporate by reference, the material is considered part of the application. If it's part of the application, then it shouldn't be considered new matter. I'd probably be OK with it, but there are other examiners who might not be. I would not want to be the test case over an extra $400 or whatever it may be.
Quote from: bluerogue on 05-08-20 at 03:25 AM
Keep in mind also that you cannot do an incorporation by reference back to more than one generation for essential matter.
Example: Parent -> Child -> Grandchild
If Child incorporates by reference Parent and Grandchild incorporates by reference Child, Parent is not incorporated by reference for any essential matter that Grandchild may rely on.
That's not quite right. Incorporating a patent
application by reference is never sufficient for any essential matter. You must incorporate the U.S. patent
application publication (or issued patent). But I agree that, if grandchild incorporates the publication of child and child incorporates the publiction of parent, you can't rely on the publication of the parent for support of essential matter in the grandchild.
Filed an application with 150 pages. Filed a prelim the next day bringing it down to under 100. Received excess application size fee. Filed response saying not necessary and got a notice to file missing parts for the fee. Called patent legal and after some discussion, the guy says excess fees are still needed.
Quote from: cheesepep on 09-22-20 at 03:57 AM
Filed an application with 150 pages. Filed a prelim the next day bringing it down to under 100. Received excess application size fee. Filed response saying not necessary and got a notice to file missing parts for the fee. Called patent legal and after some discussion, the guy says excess fees are still needed.
Well, the prelim amendment wasn't part of the original application since it wasn't filed the same day, so I can see why the PTO charged the size fee.
Based on what I read above and from the MPEP, it seems that including the prelim at the day of filing is part of the application size. So if the application is 100 pages and the prelim is 25 pages, but reduces the application size to be 80 pages, the fee due is 100+25 pages.
But it seems that filing the prelim the day after to be under 100 pages is not included as being part of the application, so the actual application size is 100 pages (as opposed to being 125 pages).
Quote from: cheesepep on 09-22-20 at 10:44 AM
Based on what I read above and from the MPEP, it seems that including the prelim at the day of filing is part of the application size. So if the application is 100 pages and the prelim is 25 pages, but reduces the application size to be 80 pages, the fee due is 100+25 pages.
But it seems that filing the prelim the day after to be under 100 pages is not included as being part of the application, so the actual application size is 100 pages (as opposed to being 125 pages).
Do you have a cite for that? 37 CFR 1.115(a)(2) says any preliminary amendment filed after the filing date of the application is not part of the original disclosure. To me, that means that the original, large spec is what was counted to charge fees, and filing a preliminary amendment the day after the application was filed can't erase the fact that a large application was already filed.
The suggestion to not file a preliminary amendment to the spec day and date with a filing in the MPEP (like in 607) appears to be made to prevent applications that are in the base filing fee not to get dinged with excess size feed when their marked up and sub specs get counted on the filing date. They don't appear to say anything about avoiding size fees after the fact by shrinking a specification.
Over 100 pages, you just have to bite the bullet. In over half the US-only cases though, I recommend a CIP b/c typically inventors come up with new stuff after filing, or else what has been learned from prosecution hints what certain further new matter might be beneficially added in the CIP. This can soften the blow a little for the payor of the fees, since they're getting new material covered.
Quote from: ChrisWhewell on 09-24-20 at 06:21 PM
Over 100 pages, you just have to bite the bullet. In over half the US-only cases though, I recommend a CIP b/c typically inventors come up with new stuff after filing, or else what has been learned from prosecution hints what certain further new matter might be beneficially added in the CIP. This can soften the blow a little for the payor of the fees, since they're getting new material covered.
I don't see the usefulness of a CIP except when the CIP is filed < 1 year after the publishing of the parent. For applications > 1 year after publication of the patent, you end up losing patent term, have your own parent be available as prior art, and basically only make the examiner find the new matter, which is more than likely in the PA somewhere. If it's that new and novel, go for a new app and claim the improvement and get broader claims with a longer protection period. But that's me from about 10 years ago. I don't know if things have changed for practitioners in the interim.
Well maybe someday you'll figure it out, Sport. I don't have time to teach you, maybe someone else does. Take care
Quote from: ChrisWhewell on 09-25-20 at 10:58 AM
Well maybe someday you'll figure it out, Sport. I don't have time to teach you, maybe someone else does. Take care
Civil discourse had become the norm here of late. Oh well, all good things must come to an end.
"I don't see the usefulness of a CIP..."
Agree 100%.
I hear ya. Its been a while since I dropped by. Posted one message relating to creative ways of use of copyright & TM procedures. I was informed that I need to learn the basics of these, whilst in the same sentence the author had claimed that a TM was an identifier of goods themselves. What ?? Then, I mention something about CIP's, and another neg. reply. Maybe people just aren't as positive as they used to be. It occurs that lately, the national pasttime has switched from baseball, to Americans cutting each oher down.
Quote from: ThomasPaine on 09-25-20 at 06:36 PM
"I don't see the usefulness of a CIP..."
Agree 100%.
There are many things you all don't see, but, admitting ignorance is the first step towards its remedy. Later guys, have fun. Whatever happened to Jim Ivey, haven't seen him posting here.
Quote from: ChrisWhewell on 09-25-20 at 06:41 PM
Quote from: ThomasPaine on 09-25-20 at 06:36 PM
"I don't see the usefulness of a CIP..."
Agree 100%.
There are many things you all don't see, but, admitting ignorance is the first step towards its remedy. Later guys, have fun. Whatever happened to Jim Ivey, haven't seen him posting here.
http://members.calbar.ca.gov/fal/Licensee/Detail/154832
Why don't you enlighten us and further the discourse. It seems like you are giving up patent term for basically nothing.
"Then, I mention something about CIP's, and another neg. reply."
I hardly see somebody offering a counter argument to your suggestion of filing a CIP as a "neg. reply".
"...admitting ignorance is the first step towards its remedy."
Great advice. You might want to heed it yourself.
I'm an inventor, and was in the same situation - my original filing was a little over 200 pages.
On the re-filing, my attorneys suggested we could possibly change the font-size and line-spacing to the smallest options under legal guidelines, and maximize the text area by shrinking the margins to the smallest amount as well; we also changed the formatting of paragraphs to affect the indenting and pre-post spacing. All the "text" was unchanged; only the formatting of whitespace and font-styling was changed. This dropped the filing to just under 100 pages, and it was filed as an electronic document. The processing office was fine with this, and the examiner did not care.
I have a somewhat related question: Consider a US design patent application with 5 embodiments, all properly filed in the original application. After a restriction requirement; election of embodiment 1; and allowance of embodiment 1; a first divisional is filed while the original is still pending. The first divisional claims domestic priority to the SN of the parent WITHOUT explicitly incorporating the parent spec in by reference, and only filing the figures of embodiment 2.
Then, while the first divisional is still pending, a second divisional is filed claiming priority to the parent and now issued grandparent applications, and only filing the figures of embodiment 3, and incorporating both the parent and grandparent applications in by reference. The first divisional is now issued.
The Examiner says the second divisional is NOT entitled to priority since the parent (first divisional) did not expressly incorporate the original application in by reference.
My understanding is that MPEP 201.06(c)(IV) says that a proper domestic priority claim is considered an incorporation by reference. Am I missing something, or is the Examiner just flat out wrong? Or, am I wrong? (Yes, I know that a better practice, in the future, is to also expressly put in an incorporation by reference into the spec.)
Quote from: Patent-prosecutor 999 on 10-05-20 at 11:00 PM
The Examiner says the second divisional is NOT entitled to priority since the parent (first divisional) did not expressly incorporate the original application in by reference.
My understanding is that MPEP 201.06(c)(IV) says that a proper domestic priority claim is considered an incorporation by reference. Am I missing something, or is the Examiner just flat out wrong? Or, am I wrong? (Yes, I know that a better practice, in the future, is to also expressly put in an incorporation by reference into the spec.)
I think you're incorrect. I may be incorrect, however. The sction you cite says:
QuoteFor applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject[....]
Is this the bit that you were relying upon? Yours wasn't an INTERNATIONAL design application, was it?
No, not an international design application. Domestic priority under 35 USC 120.
Quote from: Patent-prosecutor 999 on 10-05-20 at 11:00 PM
I have a somewhat related question: Consider a US design patent application with 5 embodiments, all properly filed in the original application. After a restriction requirement; election of embodiment 1; and allowance of embodiment 1; a first divisional is filed while the original is still pending. The first divisional claims domestic priority to the SN of the parent WITHOUT explicitly incorporating the parent spec in by reference, and only filing the figures of embodiment 2.
Then, while the first divisional is still pending, a second divisional is filed claiming priority to the parent and now issued grandparent applications, and only filing the figures of embodiment 3, and incorporating both the parent and grandparent applications in by reference. The first divisional is now issued.
The Examiner says the second divisional is NOT entitled to priority since the parent (first divisional) did not expressly incorporate the original application in by reference.
My understanding is that MPEP 201.06(c)(IV) says that a proper domestic priority claim is considered an incorporation by reference. Am I missing something, or is the Examiner just flat out wrong? Or, am I wrong? (Yes, I know that a better practice, in the future, is to also expressly put in an incorporation by reference into the spec.)
The priority claim in the ADS is only an incorporation by reference of inadvertently omitted material. It would have allowed inadvertently omitted figures/specification in the first divisional to be added without being new matter. That appears to have not been done. I would double check in MPEP 217, but it sounds like the other 3 embodiments have been donated to the public.