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Author Topic: Usinga continuation without paying fees to buy time to prepare CIP  (Read 387 times)

MR

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Can we file a continuation application without paying fees, pay the issue fee for the parent, then after the parent issues but before the fees are due in the continuation, file a continuation-in-part of the continuation, and then abandon the continuation without paying fees?  This could buy as a few weeks of time to prepare the CIP without having to delay issuance of the parent. 

I don't know, though, whether a continuation application for which fees haven't been paid, may be used as a priority document.
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still_learnin

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I don't know, though, whether a continuation application for which fees haven't been paid, may be used as a priority document.

I don't know the answer either, but I think the answer is Yes. Just thinking through it, if the continuing application gets a filing date, and the parent is still pending on that filing date, priority is good. And AFAIK, you don't need to pay fees to get a filing date.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

Toot Aps Esroh

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Throwing this out for consideration. 

You file the no-fee con, get your date, get the NFMP (fees), fail to pay within the 2 months date set for response to the NFMP plus any available 1.136 extensions, and the con goes abandoned.

Meanwhile, you have filed your CIP during the time mentioned above.

What is the abandonment date of the con?  My guess is it has an abandonment date of the original due date for replying to the NFMP (fees).  I don't think the legal abandonment date will go back to your filing date, though (hopefully if this is wrong someone will correct).

This is by analogy to a non-answered final rejection, for which the paper saying "abandoned" doesn't come until after the end of the 6-month period, but for which the actual (legal) date of abandonment is at the end of the 3-month SSP for reply (assuming no extension is filed).

But assuming the "legal" abandonment date will be the due date of the NFMP, you should get your CIP filed prior to that date.  And since you said this was your plan (I assume this is what you mean by "before the fees are due"), it seems like it should work.

Or, if you end up needing more time to file the CIP than the original deadline to respond to the NFMP (fees), as people sometimes do when filing a con after the 3-month SSP in a parent under final rejection, go ahead and pay any extension fees that would be due in the pending case (as if you were going to file the open response) just to ensure there is no question of its pendency.

As an aside, there was a FCir case where someone got granted a child where the parent was not "legally" pending due to the child having been filed after the parent's open OA's 3-month SSP had passed, and with no extensions.  FCir said USPTO's administrative goof is not grounds for invalidating the patent in court.

So in light of the FCir case you could tread more dangerously and file your CIP after the deadline for the con's NFMP, and without extension, but prior to the con's factual abandonment.  But I would not do so.
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MR

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Toot Aps Esroh: do you have a name for the Fed Cir case? How is the applicant's missing the 3 month SSP the USPTO's administrative goof?

If this approach works, could I use it to extend the filing deadline for a CIP or continuation indefinitely (a few months at a time), by filing a new continuation just before the fees are due in the preceding one, and abandoning each when the fees are due?
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dbmax

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If this approach works, could I use it to extend the filing deadline for a CIP or continuation indefinitely (a few months at a time), by filing a new continuation just before the fees are due in the preceding one, and abandoning each when the fees are due?

Not sure why one would take the risk to save $75 of filing fees (small entity). However, looking at the new fee schedule, a $300 placeholder for a non-small entity is a bit steep.

IMHO, there is a big difference between relying on the PTO's goof after issue, and depending on the same goof during a new prosecution. Of course, if you have already missed the deadline, that is another issue.

Quote
35 U.S.C. 120  Benefit of earlier filing date in the United States.
..... No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director.

37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application.
(1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:  (i), (ii), or
(iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in 1.53(b) or (d) for which the basic filing fee set forth in 1.16 has been paid within the pendency of the application.

Regards
db
(not an atty)
« Last Edit: 04-16-18 at 10:35 pm by dbmax »
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Toot Aps Esroh

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Toot Aps Esroh: do you have a name for the Fed Cir case? How is the applicant's missing the 3 month SSP the USPTO's administrative goof?

If this approach works, could I use it to extend the filing deadline for a CIP or continuation indefinitely (a few months at a time), by filing a new continuation just before the fees are due in the preceding one, and abandoning each when the fees are due?


I'll have to see if I can find it.  I know I've seen it discussed here in the past. 

But by "PTO goof" I (and the CAFC, to the extent I'm accurately paraphrasing its holding) meant the PTO's failure to recognize that the applicant was filing a child in the no-man's-land period between SSP expiry and 6 month date in the parent, and without extending the parent's reply time [edit to correct; see discussion linked below] case when it no longer apparently had legal authority to claim priority to an earlier filing.


As for deliberate strategy, I'm with dbmax.  The case I'm thinking of was an after-the-fact legal analysis by the court where it just so happened the PTO didn't notice the non-pendency.

Now, to be sure, I have no clue if the people reviewing incoming child cases ever bother to look for extensions in a not-yet abandoned parent to which priority is claimed, or if they routinely only look for the parent's instantaneous status, or other. 
« Last Edit: 04-16-18 at 11:30 pm by Toot Aps Esroh »
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Toot Aps Esroh

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Me again - sorry as follows.  I misremembered the prior discussion and case law, which was the Aristocrat case, and is not really on point here, except maybe by analogy (on the question of PTO admin scewup does not equal ability to invalidate in court).  Here's a link to that discussion
http://www.intelproplaw.com/ip_forum/index.php?topic=28219.0

If there's something more on point, hopefully one of our CAFC wonks will chime in.
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