Filing a continuation application from a long application

[snapshot]

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.

[ChrisWhewell]

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.

[bluerogue]

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.

[ChrisWhewell]

Well maybe someday you'll figure it out, Sport.  I don't have time to teach you, maybe someone else does.   Take care

[smgsmc]

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.

[ThomasPaine]

"I don't see the usefulness of a CIP..."

Agree 100%.

[ChrisWhewell]

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. 

[ChrisWhewell]

"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.

[lazyexaminer]

"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.

[ThomasPaine]

"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".

[ThomasPaine]

"...admitting ignorance is the first step towards its remedy."

Great advice. You might want to heed it yourself.

[jv_]

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.

[Patent-prosecutor 999]

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.)

[MYK]

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:

For 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?

[Patent-prosecutor 999]

No, not an international design application.  Domestic priority under 35 USC 120.