CIP Claiming Priority to a Provisional

JimIvey · 08-28-14 at 07:08 PM

Quote from: squeaks on 08-28-14 at 07:34 AM
The crux of the matter is that there is a time crunch to get protection for B so that we can then secure protection on A+B, but we do not have time to draft a proper set of claims.

That's not what provisional applications are for. There's no relaxed legal standard for provisional applications. Provisional applications must meet exactly the same legal standards for sufficiency of disclosure as real, non-provisional applications. Even if you don't file any claims, your provisional application must support whatever claims you hope to add in the future as well as a real application would.

Besides, how long does it take to draft a full set of proper claims? I usually take an hour or two.

Regards.

midwestengineer · 08-28-14 at 10:12 PM

Quote from: squeaks on 08-28-14 at 07:34 AM
Thanks again for all the feedback.

The reason for filing the CIP is to patent A+B.

The crux of the matter is that there is a time crunch to get protection for B so that we can then secure protection on A+B, but we do not have time to draft a proper set of claims.

I talked with a USPTO legal adviser today and his comments were:

-You can file a provisional CIP with no claims.
-You can file a CIP with a single broad claim, and then amend the claims in the period before the CIP is taken up for examination.

So, apparently provisional CIP's exist. However, it seems like the filing a CIP with a single claim, and later amending is the best approach.

1. There is no such thing as a provisional CIP. As has been previously noted, provisional applications cannot claim priority.
2. The method of steps you are proposing is relatively complicated and has many potential pitfalls. I would bet that less than 1% of filed applications have as complicated of a priority chain as you are planning to employ.
3. I recommend hiring a Patent Attorney to at least advise you on to proceed. It would probably only require a 1-2 hour conversation to explain in detail how best to proceed.
4. It sounds, from some of your posts, like you are representing an inventor. Carefully consider if you should continue doing so. The things you are saying are very disconcerting.

khazzah · 08-29-14 at 12:10 AM

Quote from: midwestengineer on 08-28-14 at 10:12 PM
4. It sounds, from some of your posts, like you are representing an inventor. Carefully consider if you should continue doing so. The things you are saying are very disconcerting.

I dunno, the OP's question sounds like a run-of-the-mill newbie question to me. If this board is his sole (or even primary) source of advice/info, then maybe he's pushing it to file a CIP for an inventor.

But I figure that at least some newbie questions on this board are from folks that work in law firms and do have some supervision, but still want to get info and/or run something by others anonymously before going to their colleagues/supervisors.

squeaks · 08-31-14 at 01:53 AM

It is always interesting to see how internet forum posts turn.

I never said that I wanted to file a CIP. Rather, I have an inventor who is dead set on filing a CIP. So, I am feeling around for why he would be so adamant about this.

Also, I never said that a provisional can claim the benefit of another application. This was an verbatim quote from USPTO personal. I always call if I have a question, why not?

Thanks again for the useful responses

NJ Patent1 · 08-31-14 at 04:22 AM

JI: "Besides, how long does it take to draft a full set of proper claims? I usually take an hour or two." Feelings of inadequacy/insecurity creeping in here. Two hrs for kick-a** set of claims

Sometimes claims occupy me for a day, maybe more. "The claim's the thing". The description then often "writes itself", so I make-up for time lost "excogitating" over what the invention "is"

NJ Patent1 · 08-31-14 at 04:50 AM

squeaks; "I never said that I wanted to file a CIP. Rather, I have an inventor who is dead set on filing a CIP." You have a client who went to one-too-many networking functions, or seminars for 'entrepreneurs', where the 'miracle' of the $500 (whatever) provisional application was extoled. Condolences. I see ignorance and stupidity, but no plain legal error (overt malpractice), in course of action demanded by client. Cash the retainer, file the provisional, and move on. What is old is old, what is new is new. Let chips will fall where the may, as long as client has been fully informed in writing. Not UR fault if client doesn't read their mail

khazzah · 08-31-14 at 05:59 AM

Quote from: squeaks on 08-31-14 at 01:53 AM
I never said that I wanted to file a CIP. Rather, I have an inventor who is dead set on filing a CIP. So, I am feeling around for why he would be so adamant about this.

No idea why your inventor likes CIPs. But filing a CIP really isn't unusual, even though we criticize the practice on this forum a lot. In my experience, the folks that file CIPs have been practicing 20+ years, when the patent term rules were different.

So, yeah, I'm with NJ Patent1 ... advise your client in writing on the pro's and con's of provisional + CIP, then do what your client instructs.

MYK · 09-01-14 at 07:03 AM

Quote from: squeaks on 08-31-14 at 01:53 AM
It is always interesting to see how internet forum posts turn.

I never said that I wanted to file a CIP. Rather, I have an inventor who is dead set on filing a CIP. So, I am feeling around for why he would be so adamant about this.

Also, I never said that a provisional can claim the benefit of another application. This was an verbatim quote from USPTO personal. I always call if I have a question, why not?

Well, in fairness, we don't know anything about you other than what you have mentioned in the five posts you have made here (under the user name "squeaks", anyway), all of which are in this thread.

In them, you haven't written "I am an experienced practitioner who knows that CIPs are bad ideas nowadays due to changes in the patent statutes, and who further knows that there is no such thing as a provisional CIP." Instead, you've posted comments like "So, apparently provisional CIP's [sic] exist."

Based on those five posts, I formed an impression that you are a relatively clueless person who is believing the USPTO help line person's vague comment about "provisional CIPs" and who thinks that the strategy you've mentioned is a good way to protect your client's IP. If this is in error, then my apologies.

NJ Patent1 · 09-02-14 at 06:59 AM

Per MYK, you got bad, really bad, advice from the Office for reasons stated. Statute and regs are crystal clear. Per MLM, IMO disclosure of "B" does not disclose "A+B". Think about it. A is A, B is B, A+B is A+B. IMO it's that simple. When / where do you describe and enable the combination? As long as client is fully aware that disclosure of A alone and disclosure of B alone does not per force disclose A+B, file it and move on, unless UR personal ethics, informed by your best understanding of rules, don't allow. Then forego the representation.

JimIvey · 09-02-14 at 07:24 PM

Quote from: NJ Patent1 on 08-31-14 at 04:22 AM
JI: "Besides, how long does it take to draft a full set of proper claims? I usually take an hour or two." Feelings of inadequacy/insecurity creeping in here. Two hrs for kick-a** set of claims Sometimes claims occupy me for a day, maybe more. "The claim's the thing". The description then often "writes itself", so I make-up for time lost "excogitating" over what the invention "is"

I've heard that before -- typically from people who write the claims first. The claims are one of the last things I write in an application. The whole time I'm writing the spec, I'm considering what's important and what isn't. By the time I get to the claims, they more or less write themselves.

Regards.

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