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 1 
 on: Today at 05:38 pm 
Started by edrocnoc - Last post by JV
Bartman's answer is correct, but I think that you might benefit from a little bit more explanation.
First, a CIP application will always be a non-provisional application, meaning that it is an application that can mature into a US patent.

Having gotten that out of the way, let's talk a little bit more about CIPs vs. a straight Continuation (CON) application.  If you want to get coverage on additional aspects of the invention that were fully disclosed in the original application, then you should file a CON.  This will get all the benefit of the priority date that the parent application has, which is the filing date of the provisional application if everything was done correctly.
If, however, you want to get coverage on aspects that were not fully disclosed and supported in the original application, then you have two options:
1) you can file a patent application without any priority claim at all (i.e. not a CON, not a CIP). 
2) you can file a CIP application claiming priority to the whole chain of the parent (provisional->PCT->national stage entry)

It is important to note that the priority date, for prior art purposes, of option (1) is the filing date of the new application.  This means that the published PCT application and the published national stage entry US application will both be prior art that you have to overcome.  This can be difficult, but it is not impossible if the new matter that you are adding in makes the claims of this application not obvious in light of the prior publication combined with any other available prior art.
Here's where people go wrong though.  The above caveat is exactly the same for a CIP application, except for any claims that are fully supported by the parent application.  So if all of the claims of your CIP include the new matter, they are subject to the same prior art as if you did not claim any priority at all.  And option (2) has a downside over option (1) in that the patent term will be based on the CPT filing date rather than on the new application's filing date, so the patent will expire sooner.
So why use a CIP at all?  Good question.  Here's my answer: if you want to get both (a) claim coverage that is fully supported by the original filing and (b) claim coverage on new matter that was not in the original filing, then a CIP could be a good solution because you can kill both birds with one stone.  My preferred approach is always to have the independent claims fully supported by the parent, and have the new matter only in the dependent claims.

As far as foreign filings are concerned, whichever path you choose will let you claim priority to the new application under Paris convention within one year.  However, note that the prior art date for those foreign applications will always be the filing date of the new US application.  It doesn't matter if it was a CIP or not, and it doesn't matter whether the claim scope is fully supported by the parent application.  This then has the effect that your own prior publications will always be prior art against the new foreign applications.

 2 
 on: Today at 09:24 am 
Started by edrocnoc - Last post by bartmans
Both 2a and 2b are valid options, but in both cases you claim priority under the Paris Convention. This also means that the claim to priority can only extend to the subject matter that is newly added to the C-i-P and which thus is not contained in the earlier application(s).
Schematically:
US-P: invention A
US-NP: invention A
US-CiP: invention A + B
in this case you can only claim priority to the CiP with respect to subject matter B.

The answer to your first question is that the CiP application is (identical to) a Non-provisional application, but for the (vaildly) claiming of priority this has no consequences.

Final thing to consider is that your original application on invention A will be considered prior art to all applications covering invention B (even for the US C-i-P application; in re Rosetta and in re Chu and in re Van Langenhoven). Further, you should realise that filing a C-i-P may be disadvantageous (see. e.g. https://www.perkinscoie.com/en/news-insights/beware-of-the-cip-parent-applications-can-be-prior-art.html)

 3 
 on: Yesterday at 09:12 pm 
Started by edrocnoc - Last post by edrocnoc
I am new to this forum, so please pardon me if I do not use the correct terminolgy.

I have previously filed a provisional application for an invention, then entered the PCT phase and finally filed national applications in a number of countries, including the USA.

I have received notice of allowance in all but one of these countries thus far, with the most relevant one being notice of allowance from the USPTO.  I am in the process of preparing a CIP application for filing with the USPTO at the moment.

My question has two aspects, which I will address separately.

1.  Is the CIP application a "provisional" or "non-provisional" application by definition?  My concern is that if it is "non-provisional", I might not have the protection sought until I execute the next step, which is either 2a or 2b below.

2a. I have the option of claiming the benefit of the USPTO CIP application for filing national applications in countries other than the USA within 12 months of filing the CIP application, by using the Paris convention.  Is this a valid option?

OR

2b. I have the option of claiming the benefit of the USPTO CIP application for entering the PCT phase within 12 months of filing the CIP application. Is this a valid option?


 4 
 on: Yesterday at 06:33 pm 
Started by MR - Last post by fewyearsin
Quote
If the species are not mutually exclusive, you have a good shot at winning
Do you read 806.04(f) to require that the species be mutually exclusive?  I wouldn't read it that way - it seems to me that 806.04(f) is silent regarding the case in which the species are not mutually exclusive.
Regardless how I read it, the PTO does not seem to require mutual exclusivity.  But, if the species are mutually exclusive, the examiner has a very strong argument for search burden.  Without that, the added burden is often not very much (additional search terms, but not completely new/additional searches).

Also focus on any conclusory statements by the examiner.  The MPEP requires the Office to provide enough detail in an Action to put the Applicant on notice (see MPEP 2103(VI), 2141(V), for example, though 2173.02(III)(A) has a good statement, if not directly on point for restrictions, that "the examiner should clearly communicate in an Office action any findings and reasons which support the rejection and avoid a mere conclusion that the claim term or phrase in indefinite," also 707.07(g), also not directly on point with restrictions, but "Where a non-prior art ground of rejection is proper, it should be stated with a full development of reasons rather than by a mere conclusion coupled with a boiler plate expression"). <- regarding that last quote, I love that the MPEP specifically cautions examiners against just relying on boiler plate, since that is largely what ends up happening in practice.  So if your restriction is just a list of species followed by bare boiler plate, you have a shot at getting it redone or withdrawn. 

 5 
 on: Yesterday at 01:33 pm 
Started by MR - Last post by MR
Quote
If the species are not mutually exclusive, you have a good shot at winning
Do you read 806.04(f) to require that the species be mutually exclusive?  I wouldn't read it that way - it seems to me that 806.04(f) is silent regarding the case in which the species are not mutually exclusive.

 6 
 on: Yesterday at 11:56 am 
Started by MR - Last post by fewyearsin
"A losing petition, unfortunately."

Wrong.

"According to original post, Examiner properly identified the species."

Wronger.

A couple things:
 - file the petition as soon as the Restriction is made final.  Your clock doesn't stop, and the petition can take forever.  As mentioned above, follow up to get the status of the petition at regular intervals.
 - these petitions can be granted, it is highly fact/case specific.  Be as clear and detailed as you can as to why the restriction was improper.  Form paragraphs from your firm's repository won't win the day.
 - although the examiner identified "species," did the examiner really show that it would be a burden to search each species?  Are the species really so different?  If the species are not mutually exclusive, you have a good shot at winning, which at least means a new, more clear restriction, though best case it is fully withdrawn.
 - look at what the MPEP requires the examiner to set forth.  If the examiner just clicked through the form paragraphs when making the restriction, he will have missed some key explanations that are required.

Best of luck.

 7 
 on: Yesterday at 11:43 am 
Started by MR - Last post by ThomasPaine
"A losing petition, unfortunately."

Wrong.

"According to original post, Examiner properly identified the species."

Wronger.

 8 
 on: Yesterday at 10:56 am 
Started by MR - Last post by Robert K S
Adding to what I said above, when I say "the Examiner properly identified the species," I'm assuming that the hypothetical version of the facts takes a few liberties.  As set forth, there's no independence or distinctness between a Phillips-head screw, a steel screw, and a one inch screw, as a screw can be any or all of those things (nothing requires a Phillips-head screw to be less than one inch, or made of something other than steel etc.).  If the real facts track the hypo closely, and no true species are identified in the restriction requirement, then that's something that can be argued.

 9 
 on: Yesterday at 10:51 am 
Started by MR - Last post by jeff.oneill
When I've received unreasonable restriction requirements, I've called the examiner, and the examiner is often more reasonable on the phone and you can come to a compromise.

 10 
 on: Yesterday at 10:27 am 
Started by MR - Last post by Robert K S
MPEP 806.04(e) - Claims are not species.  Identifying the claims as species is incorrect.  The requirement is improper and must be withdrawn.  That's all you need to respond with.  The examiner of course will come back with some nonsense.  Then you file your petition.

A losing petition, unfortunately.  According to original post, Examiner properly identified the species.  One can argue they're not proper species; one can argue Rule 141(a); but MPEP 806.04(e) does not provide anything of substance to argue, because the basis of the restriction is not a non-species claim distinction.

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