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Author Topic: Abandoning Appeal and Filing Continuation  (Read 374 times)

rraolex

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Abandoning Appeal and Filing Continuation
« on: 02-07-18 at 01:25 pm »

Consider this situation:

1. Application A had a final OA rejecting all claims.
2. I filed an RCE amending independent claims only.
3. A Non-Final OA ensues
4. Since there was at least ONE dependent claim that was twice rejected, I believed that I was eligible for appeal (please correct me if I'm wrong on this one)
5. Filed a Notice of Appeal on October 1 2017
6. I believe I have until December 1 2017 to file an appeal brief without payment, and until April 1 to file the appeal brief with payment (again, please correct me if I'm wrong on this one)
7. Now, the client doesn't want to spend the money on an appeal brief and wishes to file a a brand new specification and and a brand new set of claims
Questions:
1. How do I make sure that Application A is still pending? Can I pay the extension fees in App A without filing Appeal Brief in order to keep it alive? If so, what's the relevant form for doing this?
2. The new Application B is a brand new spec and claims, but the client still wants to claim "priority" to the Application A. So, on the ADS and in the spec of App B, do I note App A as the parent, as in, does App B become a CIP?
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ThomasPaine

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Re: Abandoning Appeal and Filing Continuation
« Reply #1 on: 02-07-18 at 01:58 pm »

You can extend the due date for the appeal brief until May 1.  (The two month period for filing an appeal brief after a notice of appeal is non-statutory, and thus may be extended 5 months.)

To maintain application A pending, just pay the extension fee necessary to cover App B's filing date.  No appeal brief necessary.

App B would be a CIP of App A.  Of course, what the client would be getting priority to is unknown from the facts you presented. 
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still_learnin

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Re: Abandoning Appeal and Filing Continuation
« Reply #2 on: 02-07-18 at 04:40 pm »

2. The new Application B is a brand new spec and claims, but the client still wants to claim "priority" to the Application A. So, on the ADS and in the spec of App B, do I note App A as the parent, as in, does App B become a CIP?

Yes, with a new spec, the only way to claim "priority" is to make B a CIP of A. Yes, priority claim requires statement in the ADS and in the spec.

App B would be a CIP of App A.  Of course, what the client would be getting priority to is unknown from the facts you presented. 

+1. CIPs have been discussed here before, and the general consensus is a CIP is useful only in very limited circumstances. Make sure your client understands what he's getting -- and not getting -- by filing as a CIP.

I'm curious what sort of stuff the client wants to put in a CIP. A small tweak to the original invention? A new embodiment? A related feature of the same device/product/etc.? Another piece of a larger system?

It may make sense to include, in the new application, some/much/all of the text and drawings of the original application. But that doesn't mean you need to file as a CIP.
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bluerogue

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Re: Abandoning Appeal and Filing Continuation
« Reply #3 on: 02-07-18 at 05:42 pm »

Yes, with a new spec, the only way to claim "priority" is to make B a CIP of A. Yes, priority claim requires statement in the ADS and in the spec.

After AIA, a priority claim must be in the ADS only.  A priority claim may be in the spec, but it is given no operative weight. See various CFR sections stating that a claim for priority must be in an ADS.
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still_learnin

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Re: Abandoning Appeal and Filing Continuation
« Reply #4 on: 02-08-18 at 01:06 pm »

Yes, with a new spec, the only way to claim "priority" is to make B a CIP of A. Yes, priority claim requires statement in the ADS and in the spec.

After AIA, a priority claim must be in the ADS only.  A priority claim may be in the spec, but it is given no operative weight. See various CFR sections stating that a claim for priority must be in an ADS.

Thanks for the correction.
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rraolex

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Re: Abandoning Appeal and Filing Continuation
« Reply #5 on: 02-09-18 at 07:50 am »

Thank you bluerogue, still_learnin and ThomasPaine!

So, it looks like I can pay for extension of time, without filing the brief. 

Can I follow this approach:

- aia0022.pdf - Download and complete this form.
- Login to EFS Web
- Choose "General Transmittal" as the category
- Choose "Extension of Time" as the Document Description
- Upload the AIA0022 Form previously completed
- Choose and pay for the 3 month extension on the following screens[/li][/list]

Will this approach do the trick?

And, as far as the new application B is concerned, I will not include any "Priority" paragraph in the spec itself. I will just use the ADS to indicate that this is a CIP of Application A.
« Last Edit: 02-09-18 at 07:52 am by rraolex »
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