The Intellectual Property Forum

Hi,

We have the following situation which I hadn't previously encountered and cannot find a solid answer after much searching:

Application 1 is a nonprovisional with inventors A, B and C.

Application 2 is filed as a continuation of Application 1 (which has since issued as a patent), originally with the same claims as Application 1.  Applicants subsequently filed a preliminary amendment canceling all claims and replacing them with a single new claim.  As a result of the claim cancelations, inventors A, B and C are no longer inventors and were removed by petition.  A new inventor, inventor D, is added as he is the only inventor of the subject matter now claimed in Application 2.

Seems to me the priority claim is no longer valid since, as a result of the amendment, there are no longer any overlapping inventors with Application 1.  The only thing I was able to find in the MPEP is a narrow exception where Application 1 lists inventors A, B and C, but during prosecution a restriction requirement is issued and the Applicant elects an invention of which only inventors B and C are properly listed (inventor A is removed), and a divisional is then filed with invention 2, the inventor of which is only inventor A.  In this case, priority is maintained despite the parent and divisional having no inventors in common as the result of a restriction requirement.  On the other hand, the MPEP does warn that removing inventors may affect the priority claim...

So, my take on this is that the parent application needs to be filed with claims covering all the subject matter in the application.  That way, you are sure to be able to meet the 120 requirements for overlapping inventors for any continuing or divisional application filed off THAT parent application.  However, if, for whatever reason, you file a first divisional/continuation listing only a subset of the inventors originally listed on the parent, you would NOT be able to file a divisional/continuation off the first divisional unless there is at least one inventor in common with those listed on the first divisional (if not, the second divisional would have to be filed directly off the parent).

Any thoughts?

Any biotech people in the house?  Appreciate any help in confirming and answering the following:

1. To get a filing date for a nonprovisional, you need only file a specification, claims and drawings if required - it's my understanding that a sequence listing isn't technically considered part of the "specification" and therefore you don't need to file a formal sequence listing to get a filing date.  Rather, you will get a Notice to File Missing Parts requiring that the formal Sequence Listing be filed within a month. 

2. For a continuation or divisional, the sequence listing does not carry over from the parent - you either have to file a new sequence listing or a request that the sequence listing be transferred from the parent to the continuing application

3. You don't have to list sequences in the specification - you can simply refer to them by SEQ ID Number and file a sequence listing with the actual sequences.

So, if you have listed all the sequences in the specification (e.g. in figures) and then file the specification (and claims and drawings) but do not file a sequence listing, you'll get a NOtice to file missing parts and you can file the sequence listing at that point with no issue.

HOWEVER, if you ONLY refer to SEQ ID Nos in the specification and then file the specification (and claims and drawings if necessary) you'll get a Notice to File missing parts but if you try to file the Sequence Listing at that point, that would ahve to be considered new matter, so you'd get a filing date, but would not be able to supplement the application with the sequences and would therefore have to refile (and lose the original filing date).

Can anyone confirm this?

If the above is correct, it would seem to be good practice to include sequences in the specification itself, but this isn't always possible or practical.  I've definitely come across a lot of applications which only contain the actual sequence in teh sequence listing.

Thanks

Background:  A CIP application has been rejected on the grounds of non-statutory double patenting over the parent application.  The parent application has 3 inventors who have all assigned to corporation A.  The CIP has the same 3 inventors plus another inventor.  The 3 common inventors assigned to corporation A.  The fourth inventor assigned to corporation B.

Problem - we cannot file a terminal disclaimer b/c the applications are not commonly owned.  Is there any reason we cannot have corporation B file an assignment to corporation A and then file a terminal disclaimer?

Does it matter whether the fourth inventor had an obligation to assign to corporation A at the time the invention was made?  I know that this is a requirement under 103(c) (requiring common ownership at the time the later invention was made") but I don't see any similar requirement for filing a terminal disclaimer.

THanks!
 

1. Say you filed a terminal dislaimer (to obviate a non-statutory obviousness-type double patenting rejection) during prosecution of application B against patent A.  Application B subsequently issues into patent B.  According to the TD, the term of patent B cannot extend beyond the expiration date of patent A and the 2 patents must be commonly owned.  Side note - I frequently see it written (including in court decisions) that a TD means that patent B expires on the same day as patent A.  This is not necessarily the case - for example if B is a continuation/CIP of A and patent A has 100 days of PTA and patent B has 0, patent B will expire before patent A.

2. Now, say patent A becomes abandoned for failure to pay maintenance fees (or any of the other exculpatory conditions in the second part of the standard terminal disclaimer form occur for patent A).  What happens to patent B?  As far as I can tell, you treat patent B as if patent A had not lapsed.  In other words, patent B remains "in effect" but the term of patent B still cannot extend past that of patent A's had patent A not lapsed.  The relevant language is as follows: "the owner does not disclaim the terminal part of the term of any patent granted on the instant application that would extend to the expiration date of the full statutory term...of the prior patent...in the event that said prior patent later: expires for failure to pay a maintenance fee...."  Compare this to the language in the first section of the TD: "The owner [of] the instant application hereby disclaims, except as provided below, the terminal part of the statutory term of any patent granted on the instant applicaiton which would extend beyond the expiration date of the full statutory term of prior patent no...."

I keep seeing it written that if patent A lapses for failure to pay maintenance fees then the TD is no longer effective (i.e. the term of patent B can now extend past that of patent A's had it not lapsed).  However, the plain language in PTO/SB/26 seems to contradict that. 

Thoughts?

A restriction requirement was issued in a case with claims directed to novel compounds and their use in treating disease.

Compound claims were elected without traverse.

Call from the Examiner following response to non-final OA - the compound claims are allowable.  The Examiner asks if I would like to rejoin method of treatment claims. 

Two questions:
(1) Can claims be rejoined even if the election was made without traverse?  I don't see anything saying that they can't be and i realize that traverse is done in large part to preserve the right to petition the Examiner's final decision on the restriction requirement.  Also, I presume the Examiner has some discretion in this regard?
(2) Are there any benefits to pursuing the method of treatment claims in a divisional rather than rejoining them?  I ask because the method of use claims will be examined on the merits and could potentially face 112 rejections which could delay issuance of the patent and I also worry that the Examiner might come back later with a prior art rejection of the compound claims.

Thanks

If a petition to correct a priority claim is filed for an application, listing several US provisional and nonprovisional applications not listed in the executed declaration, is there a need to file a substitute declaration listing these applications?  I suspect you should, but 37 CFR 1.63 only refers to the need to list "foreign applications" from which priority is claimed on the declaration.

Thanks

Is there any way to get the PTO to consider references after you've paid the issue fee?

I suspect not.  According to CFR 1.97, once the issue fee is paid, the PTO won't consider references on an IDS.  So, it seems that reexamination is the only way to get references considered after the issue fee is paid.

Thanks in advance.