Amendments and CIP

[HBTinker]

Hello all,

Background: Received the First OA, made an Amendment A/Reply, and received Notice of Allowance November 16, 2016.
Have not yet paid the issue fee, which will be due February 16th.

I intend to file a CIP, but would like to amend my first Application so that it is clear which matter is new and which is not.  I have submitted an Amendment B (Rule 312) on Jan 21 and submitting an Amnt C (Rule 312) today for a few minor corrections.  The CIP is ready to be submitted, but I would like the Amendments to be approved before sending in a terminal disclaimer.

I spoke to the Examiner yesterday, she told me she won't be reviewing my Amnt B for another 1 1/2 weeks (I have Track 1 prioritization).  Although I like my Examiner, she never gives me a straight answer, always repeating the stuff she knows and not the answer I'm asking for.  It's like she's on the clock and waiting for the time to run out.

I am concerned that the Amendments won't be approved by the time my issuance fee is due.  I was planning to submit my CIP and terminal disclaimer after the Amendments are approved, but before the issuance fee is due to avoid abandonment.  And even then, the Examiner told me the correct process is to submit my CIP, wait for her to send a notice of double patenting, and respond with a terminal disclaimer.  Furthermore, she told me that the worst that would happen if I miss the issuance fee due date is that I would have to pay a late fee for every month it's late, and I won't have to worry about my application being abandoned as it states in my Notice of Allowance. 

Is what she saying about the process to file my CIP true and about what happens if I miss the issuance fee due date?  If I miss the due date, will the late fees still apply when I file my CIP and terminal disclaimer?  If I submit my CIP now, will the amendments still affect the original application?

She also mentioned something about how I can submit a rejection of the Allowance to extend my Examination period, but it seems to be taking too far a step back, something I'd like to avoid, although it is something to consider.

Appreciate your assistance!

[Tobmapsatonmi]

(Editing, on re-read, some things are clearer to me today.  Sorry if the first presentation of my reply caused any confusion to the OP).

Some generalities.  312 amendments are (in my experience, my usage) usually directed to cleaning up minor mistakes (e.g., of typographical nature) that anyone skilled would understand to have been originally intended.  I'm not sure of the scope of your TWO amendments, but I can say that if they are of the nature that I have described (minor fixits), then in my experience these are normally entered as a matter of course without any objection.

In fact, most of the time when I file rule 312 amendments, I file them at the same time as I file the issue fee.  Not before.  I just file them with the issue fee and assume that they will be entered.  And they always have been.  But then, they always fit the "minor fixits" profile.  If instead you're attempting to provide some significant revisions to your specification, then, yes, you might expect them to be refused as introducing new matter.

Next - your CIP.  This can be - and is often smartly - filed not later than the date you file the issue fee in the parent.  But note the absolute deadline is not when the parent's issue fee is filed, but rather the date your parent application actually issues, which is normally at least a few weeks after you file the issue fee in the parent.

(Newly added comments)
As for when/why on the terminal disclaimer, and also as for the comment about "late" filing of the issue fee, I agree with Lefty714's comments.

[Lefty714]

First, the examiner is not correct if you miss paying the issue fee by the due date. The application will be deemed abandoned. In order for the PTO to accept a late issue fee payment, you have to submit a petition to accept late payment of the issue fee. With the petition, you have to include the amount of the issue fee plus the petition fee (which is $850 for a small/micro entity).

Second, I would follow the examiner's advice with respect to filing a terminal disclaimer. I would not preemptively file a terminal disclaimer because, arguably, it may not be necessary in the CIP. Even if it might be necessary to file one, I would wait until there is an actual non-statutory double patenting rejection on the record before filing the terminal disclaimer.

[HBTinker]

Thank you for your responses, Tobmapsatonmi and Lefty714, my pulse is calming down already.

I was under the impression that by filling a CIP and submitting my terminal disclaimer, I wouldn't have to pay the issue fee, since I'm "terminating" the application.  But I'm guessing that it needs to be paid so my original material gets recorded?

For the sake of my peace of mind, the steps I should take are:
1.Submit my CIP (I'll need to pay another application fee)
2. Pay the issuance fee for my original application
3. Wait for the approval for my amendments
4. Wait for Double Patenting Rejection (Im 99% sure my CIP can't stand alone)
5. Submit Terminal Disclaimer
6. Wait for notice of allowance for CIP, pay issuance fee
7. PARTY!

[lazyexaminer]

There seems to be a misunderstanding or miscommunication, maybe it is you being pro se or maybe the examiner is confused. So a few broad comments.

You have a notice of allowance so any amendments are governed by rule 312 (37 CFR 1.312). Such amendments are generally only for formal matters, like correcting minor things, and not things that will require more search or examination. See MPEP 714.16. You have no right to such amendments so they may be denied entry. Hard to say without knowing the case.

Regardless of that, the issue fee must be paid by the due date in the allowance or your application will be abandoned, i.e. No patent. That time can't be extended.

After the issue fee is paid, the patent will issue soon after, generally within a month. I believe they send you a notice before telling you when, but I wouldn't rely on that. It will be on a Tuesday. A continuation, including a CIP, must be filed on or before the issue date. That is a new application with all new fees.

I don't know what you mean about the application being terminated. I assume you want the patent.

Anyway, once your CIP is examined, the examiner might issue a double patenting rejection based on the first patent. One way to remove that rejection is to file a terminal disclaimer. That has its cons, no need to get into now. No real reason to file one before you get such a rejection though. If that's the only rejection and you file a terminal disclaimer you would then hopefully get another allowance. Pay second issue fee, get second patent.

Then party.

[klaviernista]

Others have addressed your issues pretty well, so I won't reiterate their points.  However, I wanted to chime in on the terminal disclaimer issue.

One needs to remember that the point of a terminal disclaimer is to: 1) address unjustified patent term extension by having the patentee/applicant disclaim a terminal portion of a LATER FILED application that would extend beyond a patent with an EARLIER filing date; and 2) to prevent multiple parties from having the same "exclusive" rights by having the patentee/applicant contractually agree to only sell/license the two patents together (i.e, patentee can't sell patent 1 to party A and patent 2 to party B, when A and B have cliams that overlap in scope or are obvious variants).

That said, there is NO BASIS for the Examiner to ask you to file a terminal disclaimer in an earlier filed application (i.e., your current case).  None.  This is because there is no possibility that the patent term of your current filed case will extend beyond the patent term of your to be filed CIP.  So, with regard to the filing of a TD in the current case, you can tell the Examiner to pound sand (not literally of course). 

Finally - as to amending your current case to make it more clear in the CIP as to what is new and what is not, my question to you is "why?"  What benefit do you hope to achieve from making such amendments in the current case, vs. simply altering the specification of the CIP?  In my view all you are doing by amending your current case post allowance is creating a headache at the PTO and prosecution history/fodder for litigators to focus on during a later enforcement proceeding.

Good luck

Klav

[HBTinker]

Thank you for your responses Klav and Lazy, they were illuminating.

I think the source of my confusion was my understanding of the TD...I thought it affects my first application, not the CIP, thank you for your explanation Klav.

As Lazy suspected, I am doing this pro se and this is my first patent app.  To explain the purpose of my CIP, when I first drafted my first application I thought that if I had described my invention narrowly, it could help avoid the issue of obviousness.  However, in prosecution I realized it didn't help, but in using inspired logic I was able to show in another way how my invention was non-obvious.  The CIP greatly broadens my invention (in claims and spec), and gives me the opportunity to add new matter that I had came up with during the prosecution.  I should also mention that the filing date of my application was only a year ago, so it's not a great loss of time for the CIP.  Besides, I don't have enough matter in the CIP for it to be considered non-obvious from the first application and the other patents of the category.

[HBTinker]

So, I did a little research to find the source of my confusion...I've been using Nolo's Patent it Yourself as my bible.  Under the section of CIP, Pressman states "Generally, the parent application should be allowed to go abandoned when a CIP is filed.  However, if you do want the parent application to issue, you must be sure that the claims of the CIP application are patentably different..."

Is Pressman correct about allowing the parent to go abandoned?  As I've been saying, I seriously doubt my CIP is patentably different.  Should I pay the issue fee of the parent just to let it go abandoned?  If I do let it go abandoned by not paying the fee, will my Examiner still process the Amendments I submitted, if she doesn't get to it by the issue fee due date?

[bluerogue]

So, I did a little research to find the source of my confusion...I've been using Nolo's Patent it Yourself as my bible.  Under the section of CIP, Pressman states "Generally, the parent application should be allowed to go abandoned when a CIP is filed.  However, if you do want the parent application to issue, you must be sure that the claims of the CIP application are patentably different..."

Is Pressman correct about allowing the parent to go abandoned?  As I've been saying, I seriously doubt my CIP is patentably different.  Should I pay the issue fee of the parent just to let it go abandoned?  If I do let it go abandoned by not paying the fee, will my Examiner still process the Amendments I submitted, if she doesn't get to it by the issue fee due date?

Only you know what patent strategy you want, but I don't know of many circumstances where you would not want to take an allowance.  The issue fee is not that much compared to what you've spent already and you can always decide not to pay the 1st maintenance fee if you think the 2nd patent is more valuable.

If you let it go abandoned, the examiner will not process any amendment.  It's abandoned. Just so you're aware, that could hurt you filing a CIP because it must be filed while the parent application is pending.  I think Pressman is saying that for a patent that has not been allowed or published you can let it go abandoned.  But if you're doing it yourself, why waste a couple of office actions to find out what the examiner's thinking.  You're not playing an atty 3k a pop for a response.  I don't see the point of that strategy in the book.

[Tobmapsatonmi]

Only you know what patent strategy you want, but I don't know of many circumstances where you would not want to take an allowance.  The issue fee is not that much compared to what you've spent already and you can always decide not to pay the 1st maintenance fee if you think the 2nd patent is more valuable. ...

... I don't see the point of that strategy in the book.

I don't see it either - it's certainly contrary to the way it seems most large entities operate.  Get the parent allowed, file the CIP, get parent issued, handle office actions in the CIP (including potential obviousness-type double patenting rejections, if needed). 

[HBTinker]

It's been some time since my last post...it's been in the back of my mind that I should share the conclusions of my experience and bring some closure to the topic.  I followed Tobmapsatonmi's advice; filed my CIP application and issued the parent.  As I found out in the Examiner's rejection, there are 2 kinds of Double Patenting Objections; Statutory and Nonstatutory.  The terminal disclaimer helps to avoid the Nonstatutory, but not the Statutory.

After some deliberation in another post titled "CIP and Statutory Double Patenting" (limits of the forum won't let me post an external link), I was able to contact Pressman and explain my predicament.  He admitted that his explanation of CIP was unclear, and told me that I should have abandoned (not issued) the parent application.  Abandoning the parent by not paying for a continuation won't make a difference, the patent has already been issued, the SDP still applies.  I tried asking him about the suggestions from the forum and whether they would work, but his only response was that he'd have to see the details of the patent to give me an answer (lawyer speak for "I don't know," but I'll guess if you pay me).

With no recourse, I've since abandoned the CIP.  A little heavy-hearted, my consolation lies in the fact that my parent is issued, my invention is covered, and this experience is shared for future CIP filers.

[PaulWeathers]

Hi

Wouldn't it have been sufficient to just amend the claims of the CIP to not cover the identical subject matter as claimed in the parent?

Citing from MPEP 804:

A reliable test for double patenting under 35 U.S.C. 101 is whether a claim in the application could be literally infringed without literally infringing a corresponding claim in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).

[still_learnin]

Wouldn't it have been sufficient to just amend the claims of the CIP to not cover the identical subject matter as claimed in the parent?

Yes. This overcomes the statutory double patenting rejection. If the Examiner next gives a nonstatutory (obviousness-type) double patenting rejection, that can be overcome by a Terminal Disclaimer.

[lazyexaminer]

I still don't understand why the book says "generally" one should abandon the allowed parent in favor of the unprosecuted CIP. I can see that being reasonable on occasion, but "generally?" CIPs aren't filed that often, but I can't say that I've seen this even once...