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Author Topic: Claimin priority rights in a continuation patent application  (Read 4342 times)

mlando

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I filed a continuation application through the EFS, and claimed the benefit of the parent application in the first part of the specifications, right after the title as follows:
This is a continuation of application Ser. No. ----  filed October -, 2010, which
 claims the priority rights of international patent application PCT/------filed
March --,2009, and  patent application Ser. No. ---- filed 2008 April 2, all
by the present inventor.

Unfortunately, I did not indicated the claiming of the rights of prior patent applications in an ADS.   Consequently, in the filing receipt,  there is no indication that it is a continuation application.   

Is that a problem?  I found somewhere that since the priority claim  is written explicitly  in the application, USPTO has to consider it appropriately.   

If it is a problem, how should I correct  it?.  Currently, the parent application is still active.  Thus, in principle I could simply refile the application with appropriate ADS.   Anyhow, I would like to save the fee and time consuming of refiling the continuation application.

Thank you in advance for your advice
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khazzah

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Is that a problem?  I found somewhere that since the priority claim  is written explicitly  in the application, USPTO has to consider it appropriately.   

CFR 1.78 ("Claiming benefit") says either specification or ADS can include the

Quote
(iii) If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet ( 1.76), or the specification must contain or be amended to contain such reference in the first sentence(s) following the title.

I know some of the new rules that went into effect on Sep. 16, 2012 affected ADS requirements. Not sure if this is one of them. My practice has always been to include the benefit claim in both places.   
 
Unfortunately, I did not indicated the claiming of the rights of prior patent applications in an ADS.   Consequently, in the filing receipt,  there is no indication that it is a continuation application.   

If it is a problem, how should I correct  it?

AFAIK, the PTO gets info for the filing receipt info from the ADS. So your filing receipt is as expected.

Don't file a new app, file a Supplemental ADS. I think some folks also go to the trouble to ask for a corrected filing receipt after submitting the Supplemental ADS -- though I don't know if this is necessary. I would, however, go to PAIR after submitting the Supp. ADS and check that the Continuity Data tab has been updated.
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Karen Hazzah
Patent Prosecution Blog
http://allthingspros.blogspot.com/

Information provided in this post is not legal advice and does not create any attorney-client relationship.
 



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