CIP benefit w/o paying fees on parent

[dbmax]

2/1/11 PPA1 filed.
2/1/12 NPA1 filed without fees, claiming priority ot PPA1.
3/1/12 Filing receipt mailed by uspto granting filing date of 2/1/12 and acknowledging priority claim. Notice to file missing parts allows 2 months to pay fees for NPA1.
4/1/12 CIP1 filed claiming benefit of NPA1 and priority to PPA1.
4/2/12 NPA1 expressly abandoned without paying fees.

Because NPA1 is copending when CIP1 is filed, CIP1 gets the benefit of filing dates of NPA1 and PPA1, even though no fees for NPA1 are ever paid.   

Is this correct?

Thanks,
DB

[klaviernista]

Unfortunately you are wrong.  See MPEP 201.11:

"There are several conditions for a later-filed appli­cation to receive the benefit of the filing date of a prior-filed application under 35 U.S.C. 120, 121, or 365(c), or, provided the later-filed application is not a design application (see 35 U.S.C. 172), under 35 U.S.C. 119(e). The conditions are briefly summarized as follows...

(H)   If the prior-filed application was filed under 35 U.S.C. 111, the prior-filed application must be entitled to a filing date and the basic filing fee of the prior-filed application must have been paid. See 37 CFR 1.78(a)(1)(ii) regarding a benefit claim under 35 U.S.C. 120, 121, or 365(c), and see 37 CFR 1.78(a)(4) regarding a benefit claim under 35 U.S.C. 119(e)."

Quote from 37 C.F.R. 1.78(a)(1)(ii): "A nonprovisional application or international application designating the United States of America may claim an invention disclosed in one or more prior-filed copending nonprovisional applications or international applications designating the United States of America. In order for an application to claim the benefit of a prior-filed copending nonprovisional application or international application designating the United States of America, each prior-filed application must name as an inventor at least one inventor named in the later-filed application and disclose the named inventor's invention claimed in at least one claim of the later-filed application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed application must be...(ii)   Entitled to a filing date as set forth in §1.53(b) or §1.53(d) and have paid therein the basic filing fee set forth in §1.16 within the pendency of the application."

Unfortunately, it looks like you might be screwed.  The parent app was expressly abandoned, so it will be tough to revive (how do you argue that an express abandonment was unavoidable/unintentional?).  And since the basic filing fee for the parent was not paid, the priority claim to it (under 120) is not valid.

Good luck,

Klav

[dbmax]

Unfortunately, it looks like you might be screwed.

K,

Not screwed yet; the above dates were hypothetical.

Paying the basic filing fee ($95 electronic small entity, plus late payment penalty) and filing a CIP seems to be a relatively cheap way to preserve dates and avoid the cost of two applications for minor additions.

Many Thanks,
DB

[klaviernista]

Unfortunately, it looks like you might be screwed.

K,

Not screwed yet; the above dates were hypothetical.

Paying the basic filing fee ($95 electronic small entity, plus late payment penalty) and filing a CIP seems to be a relatively cheap way to preserve dates and avoid the cost of two applications for minor additions.

Many Thanks,
DB

Good!  Glad to hear it will work out.

[dbmax]

Quote from 37 C.F.R. 1.78(a)(1)(ii): "A nonprovisional application or international application designating the United States of America may claim an invention disclosed in one or more prior-filed copending nonprovisional applications or international applications designating the United States of America. In order for an application to claim the benefit of a prior-filed copending nonprovisional application or international application designating the United States of America, each prior-filed application must name as an inventor at least one inventor named in the later-filed application and disclose the named inventor's invention claimed in at least one claim of the later-filed application in the manner provided by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed application must be...(ii)   Entitled to a filing date as set forth in §1.53(b) or §1.53(d) and have paid therein the basic filing fee set forth in §1.16 within the pendency of the application."

If the parent app is filed without the basic filing fee, and the parent basic filing fee is paid within 2 months of the NOMP, it appears from 37 CFR 1.78 that the late payment surcharge on the parent filing fee is not necessary in order to claim the benefit of the parent's filing date in the CIP prior to abandoning the parent. 

Is this correct?
Thanks,

DB

PS: 65 bucks is 65 bucks