Must priority claim be in first sentence?

Started by MR, 03-17-17 at 04:41 AM

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MR

As I understand it, if the priority claim is incorrect in the ADS but correct in the specification, then a proper priority claim has been made.  In the specification, does it need to be in the first sentence or can it be in the first paragraph (or elsewhere)?

bluerogue

Not since AIA. See CFR 1.78. Priority claims can only be made in the ADS after AIA.

Quote1.78 (a)(3) Any nonprovisional application or international application designating the United States that claims the benefit of one or more prior-filed provisional applications must contain, or be amended to contain, a reference to each such prior-filed provisional application, identifying it by the provisional application number (consisting of series code and serial number). 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(b)(5) ).

For pre-AIA applications, you can do it the old way of 1st sentence or ADS

Quote1.78 (h) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (a)(3) and (d)(2) of this section that any specific reference to a prior-filed application be presented in an application data sheet (§ 1.76), this requirement in paragraph (a)(3) and (d)(2) of this section will be satisfied by the presentation of such specific reference in the first sentence(s) of the specification following the title in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012.
The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

mersenne

Gotta check those filing receipts carefully, and fix any problems within (a small number of) days.  Otherwise, it's Really Expensive, as well as time-consuming and fraught.

I personally think 1.78(a)(3) is ultra vires in view of the statute, but that's an even more expensive fight, plus you'll be threatening a PTO gravy train...not the best move for a client.
Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

snapshot

Yeah, that's a $1700 petition for a large entity, and the petitions office is so backlogged that it will take many months for that petition to get reviewed.

Plus, as bluerogue said, for AIA cases, it's ADS or bust for a priority claim.

MR

Mersenne, why is 1.78(a)(3) ultra vires?

mersenne

It's not a slam-dunk, but 35 USC §120 says "the application contains or is amended to contain the claim..." It says various things about what the Director can do, but it doesn't say that the Director can refuse to recognize a priority claim submitted in paragraph 1, which is unquestionably part of "the application."  (ADS is not a part of a statutory application under 35 USC §§112-113, so although I guess the PTO can require one, I don't see how it can avoid giving effect to a §120 claim in the originally-filed spec.)

That was my situation: proper claim in paragraph [0001] not recognized by the Office, so I had to petition and pay the fee.  And my first petition was dismissed because it was signed "/s/My Name/", but the person reviewing it wanted "/My Name/".  Fortunately, they accepted a renewed petition without requiring another filing fee, because my inventor was ready to burn down the petitions office, notwithstanding that I paid the petition fee for him since it was my mistake.

More generally, this is the kind of shit that chaps my ass about the PTO -- they seem to set things up specifically so that practitioners will make mistakes, and then charge 1.17(m) fees to fix them.  For example, why force people to enter the same information on two different lines, in different orders, on an ADS?  Why have some dates in M-D-Y order, and others on the same form in D-M-Y order?  And why is the order displayed on Private PAIR yet again different?  Unless, of course, you make money when people make mistakes.

Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO



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