Continuation filing

[Faustina77]

A parent utility application is under a final rejection.  Just seeking confirmation that  a continuation application with new claims can be filed prior to the 3-month deadline for responding to the final rejection of the parent, without need to keep parent alive after the continuation is filed.

[Tobmapsatonmi]

A parent utility application is under a final rejection.  Just seeking confirmation that  a continuation application with new claims can be filed prior to the 3-month deadline for responding to the final rejection of the parent, without need to keep parent alive after the continuation is filed.

Yes, the parent is still pending within that 3 month period and its earliest abandonment date (should you just let it lie for over 6 months) should not be earlier than the end of that original 3 month period.

Note if you do happen to go past the original, 3-month shortened statutory period deadline (let's say you're between 3-4 months), most people then would advise filing the continuation, and in the parent, filing a 1-month extension of time; that way there's no question about co-pendency under that circumstance, either.

[khazzah]

A parent utility application is under a final rejection.  Just seeking confirmation that  a continuation application with new claims can be filed prior to the 3-month deadline for responding to the final rejection of the parent, without need to keep parent alive after the continuation is filed.

Correct on both points. You can file a con at any time that the parent is alive -- before a 3-month deadline, even before the 1st OA. And you need co-pendency up and until filing, then you can let the parent go abandoned.

[Faustina77]

Great!  Thanks for the replies!

[lawstudent]

I don't see a legal basis for paying an extension fee in the parent application, in the scenario where applicant merely wants to file a CIP before abandonment of the parent.

As long as the continuation is filed while the parent is pending, priority will be acknowledged. The parent becomes abandoned the day after exhaustion of the six month statutory period. The date of abandonment is invariant, whether or not an extension is filed.

If you do pay an extension fee, you will likely not hear anything or receive a refund. Since you filed a piece of paper past the SSP, you are expected to pay a fee...

[mersenne]

I don't see a legal basis for paying an extension fee in the parent application

I haven't investigated the ugly details, but I have always paid any necessary extension fee in the parent when I need copendency with a new application.  When I was at BigLaw, somebody else handled it, but my understanding was that's the way we did it there, too.

Logically, on responses that have a SSP of 1 or 2 months (where the extension fees can get really high) you could save money by filing a CON (and paying a new filing fee) if you were in the 4th or 5th month.  However, in my experience, the PTO doesn't leave money on the table like that.  So my guess is, you do have to pay extension fees if you need one case to be alive when you file something else.

[khazzah]

I don't see a legal basis for paying an extension fee in the parent application, in the scenario where applicant merely wants to file a CIP before abandonment of the parent.

As long as the continuation is filed while the parent is pending, priority will be acknowledged. The parent becomes abandoned the day after exhaustion of the six month statutory period. The date of abandonment is invariant, whether or not an extension is filed.

Not true, lawstudent. It's ok to pay the EOT fees after the 3-month period, but you must pay them. Otherwise, the parent is *constructively abandoned* as of the 3 month date.

I'm pretty sure this in in the MPEP somewhere, though I don't have time right now to look it up.

[Tobmapsatonmi]

As long as the continuation is filed while the parent is pending, priority will be acknowledged. The parent becomes abandoned the day after exhaustion of the six month statutory period. The date of abandonment is invariant, whether or not an extension is filed.

Karen is right and I want to stress to anyone reviewing this thread that this (underlined matter) is flat-out incorrect.  Although the parent does not become abandoned until after the close of the 6-month statutory period, absent an extension petition filed in that parent, its date of abandonment is as of the day following the close of the shortened statutory period, unless of course the close of the SSP falls on a weekend or holiday.


Now, whether the PTO has legal authority to do this is something we can argue about.  But it does do this and instructs its examiners to do so.  See e.g. mpep at 710.01(a) and 711.04(a).

However, I'm also not sure what harm can come, given the mechanics of the situation as it usually unfolds?  What I mean is, the PTO will not look at the parent until the close of the full statutory period.  At that point, it decides the parent was abandoned on a date three months earlier.  Meanwhile, the con was filed between months 3-6 and because the parent had then not yet become abandoned, the con was given its priority claim.

What are the chances the PTO would then later revisit the con's priority claim to decide whether it deserved it?  I think this would be unlikely.

So let's say the con grants as a patent and becomes involved in litigation.  I also don't think a defendant can claim as a proper defense that the patent is per se unenforceable due to failure of priority.  Perhaps when it comes to arguing invalidity due to art, the defendant could get the court to agree to sever priority and permit intervening art?  (Including I suppose the parent if it had been published > 1 year prior to con filing.)

[moonman]

Uh guys, where does statute even say that you get 6 months to respond before abandonment?

35 USC 133 says you get 6 months or a shorter period as stipulated in an action. Most actions I see say 3 months.

I humbly suggest that an application is in fact abandoned at 3 months only to be retroactively revived if extension fees are paid.

[khazzah]

Uh guys, where does statute even say that you get 6 months to respond before abandonment?

35 USC 133 says you get 6 months or a shorter period as stipulated in an action. Most actions I see say 3 months.

I humbly suggest that an application is in fact abandoned at 3 months only to be retroactively revived if extension fees are paid.

Yeah, ok, I think your phrasing is probably more accurate: retroactively revived as of the 3-month date by EOTs, as opposed to constructively abandoned at the 3-month date if no EOTs.

Though I can't think of a scenario where the distinction matters.

[khazzah]

I'll preface this whole conversation by noting that a prudent attorney would not risk a fatal defect based on probabilities. But it's nonetheless interesting to explore how things might unfold.

However, I'm also not sure what harm can come, given the mechanics of the situation as it usually unfolds?  What I mean is, the PTO will not look at the parent until the close of the full statutory period.  At that point, it decides the parent was abandoned on a date three months earlier. 

Agree.

Meanwhile, the con was filed between months 3-6 and because the parent had then not yet become abandoned, the con was given its priority claim.

The first "assignment" of a priority claim is done by OPAP, when they issue a filing receipt.

You're assuming that either they don't check continuity at all, or that the check happens before the PTO processes the parent's abandonment. Timing might not work out that way, though. File a con on the 6-month date, and I wouldn't be surprised if the parent's abandonment is processed before the con's filing receipt.

What are the chances the PTO would then later revisit the con's priority claim to decide whether it deserved it?  I think this would be unlikely.

I agree that if the PTO clerks didn't check for proper pendency at the time of the con's filing, they probably won't check it later.

But  I dunno about Examiners. Perhaps the zealous ones check for actual pendency.

Overall, though, I agree: Unlikely.

So let's say the con grants as a patent and becomes involved in litigation.  I also don't think a defendant can claim as a proper defense that the patent is per se unenforceable due to failure of priority. 

Agree.

Perhaps when it comes to arguing invalidity due to art, the defendant could get the court to agree to sever priority and permit intervening art?  (Including I suppose the parent if it had been published > 1 year prior to con filing.)

I haven't come across the term "sever priority", but Absolutely, defendants can and do argue that there is a defect in the priority chain, thus allowing intervening art.

[Tobmapsatonmi]

I humbly suggest that an application is in fact abandoned at 3 months only to be retroactively revived if extension fees are paid.

Okay, I'll give you that.  It's abandoned but no one knows it's abandoned, until 3-5 months later when we learn that no post hoc extension petition/fee de-abandoned it.

Sort of like it's on double secret probation. 

Hey, if a patent falls out of the shoe but no one's there to hear it....

[Tobmapsatonmi]

The first "assignment" of a priority claim is done by OPAP, when they issue a filing receipt.

You're assuming that either they don't check continuity at all, or that the check happens before the PTO processes the parent's abandonment. Timing might not work out that way, though. File a con on the 6-month date, and I wouldn't be surprised if the parent's abandonment is processed before the con's filing receipt.

Yeah, you're right.  I had the statement from 711.04 in mind (to the effect that the examiner shouldn't normally start processing for abandonment until a month after the final deadline), which would normally give OPAP enough time to process the con.  However, in reviewing file histories I do see a fair number of abandonment notices sent just after the 6-month period, with a statement to the effect that the examiner called the practitioner to verify no reply was filed.  Count-hungry, I guess.

[NJ Patent1]

I think this has been well hashed-out here.  There is a statutory period that Congress (maybe contradicting itself ?) allowed the Office to "shorten", requiring Applicant to pony-up for the full statutory period.  Student presents an argument (maybe for SCOTUS?).  I'll let her/him be the test case.  How we denominate a case in months 4, 5, and 6 in which no EOT fees is indeed interesting.  But the SSP has expired with no action to advance prosecution- even paying a fee - having been taken. 

The Examiner?  That should not be one's only worry (N.b., I've gotten that "courtesy call" within days of expiration of the 6 month date).  When client is sued, step one is to verify patent is live (e.g. fees paid), that plaintiff is a proper plaintiff, and that all required parties are joined (potentially an easy and relatively inexpensive dismissal motion).  If the asserted patent is a CON / DIV / CIP, step two is to "check-the-chain".  Never saw a case where applicant filed CON / DIV / CIP after 3 months without paying EOT in parent.  Student's client didn't pay and s/he sues my client?  Well, we have that test case brewing.