Filing a continuation application from a long application

[cheesepep]

Need some advice here. I recently filed a very long application with over a 100 page spec/drawings/claims. Of course, need to pay additional fees for this which is fine. The specification contains elements A, B, and C and only claims A.

Client now wants to file another application, claiming priority to the 1st application, for element B. But considering the additional fee, how should I approach this? Should it be a continuation application while having the same long spec/figures, or can I just make a new application and copy over the relevant spec/figures over so I'm under 100 pages? Would this be considered a continuation application?

Or do I even need to submit the specification? I can just claim priority in the ADS.

[mersenne]

I have a client who files some really long applications, and files continuations from those.  On a continuation (actually, it's often a division) I always file the original papers -- I worry that just filing the necessary subset will cause trouble on a subsequent CON or DIV, where I want to claim something different from the original disclosure.

Yes, it means that you may have to pay extra-page fees.  In fact, suppose you're below the limit, but you want to file a preliminary amendment canceling the parts you don't want.  They count *all* pages filed on the filing date against you, so you can go from no extra fees, to significant extra fees.  If you've got a prelim amendment to file, submit it the next day.

[cheesepep]

In fact, suppose you're below the limit, but you want to file a preliminary amendment canceling the parts you don't want.  They count *all* pages filed on the filing date against you, so you can go from no extra fees, to significant extra fees.  If you've got a prelim amendment to file, submit it the next day.

Thanks for responding, but I don't understand this part. If I am under the 100 page limit, then cancel the parts that I don't need via a prelim, then I am still under the limit. Why in both cases do I need to pay extra fees?

[mersenne]

Thanks for responding, but I don't understand this part. If I am under the 100 page limit, then cancel the parts that I don't need via a prelim, then I am still under the limit. Why in both cases do I need to pay extra fees?

When this bit me, I believe I had filed the original (long) application, then a PA with directions to cancel some figures and remove some paragraphs, annotated figures showing changes, replacement figures with changes committed and numbers changed, and a substitute spec that omitted the extraneous material.  They counted most or all of those pages and billed me for 'em.

[cheesepep]

Thanks for responding, but I don't understand this part. If I am under the 100 page limit, then cancel the parts that I don't need via a prelim, then I am still under the limit. Why in both cases do I need to pay extra fees?

When this bit me, I believe I had filed the original (long) application, then a PA with directions to cancel some figures and remove some paragraphs, annotated figures showing changes, replacement figures with changes committed and numbers changed, and a substitute spec that omitted the extraneous material.  They counted most or all of those pages and billed me for 'em.

Thanks. So it is best to file the parent app with over 100 pages (pay additional fee), then file a continuation app with the same over 100 pages and pay normal fee, and then file a prelim for the continuation app on a next day that reduces the total number of pages to be less than 100 pages, and thus no additional fees are needed (normal fee only). Is this right? I sure hope so.

[NoMotivation]

I worry that just filing the necessary subset will cause trouble on a subsequent CON or DIV, where I want to claim something different from the original disclosure.

Why would you have this worry so long as you supply the appropriate incorporation-by-reference language in your pared-down continuing application?

[mersenne]

Yes, if you're doing anything involving long (extra-page) applications and preliminary amendments, don't file any more than the minimum on the filing day.  File whatever you want the next day.

Re: incorporation-by-reference, that should work, but in long (> 2-3 applications) chains, I'm always worried that there'll be some sort of problem that makes it difficult or impossible to bring in language or figures from the parent application.  I figure if I file the exact original parent application (while maintaining co-pendency), there's no plausible argument that I've given up any material or (equally important) that I've added new matter by omitting incorrect or inconvenient material.

[smgsmc]

Re: incorporation-by-reference, that should work, but in long (> 2-3 applications) chains, I'm always worried that there'll be some sort of problem that makes it difficult or impossible to bring in language or figures from the parent application.  I figure if I file the exact original parent application (while maintaining co-pendency), there's no plausible argument that I've given up any material or (equally important) that I've added new matter by omitting incorrect or inconvenient material.

Exactly.

Also you need to consider how much money (if at all) you are saving.  The current excess page charge is $400 for each additional 50 pages over 100 (large entity).  If you delete material from the spec and delete figures, that entails editing the spec to maintain consistency, and maybe renumbering some of the figures.  And proofreading to make sure it's done correctly.  How much time (= $) does that involve?  And then if you later file a CON 2, and the parent is no longer pending, you will need to file CON 2 off of CON 1 (assuming it's still pending), depend on incorporation by reference for material not explicitly in CON 1, and then edit CON 1 to add back in material to the spec and add back in figures (with additional edits and maybe renumbering to maintain consistency).  And proofread to make sure it's done correctly.  How much time (= $) does that involve?

[bluerogue]

Re: incorporation-by-reference, that should work, but in long (> 2-3 applications) chains, I'm always worried that there'll be some sort of problem that makes it difficult or impossible to bring in language or figures from the parent application.  I figure if I file the exact original parent application (while maintaining co-pendency), there's no plausible argument that I've given up any material or (equally important) that I've added new matter by omitting incorrect or inconvenient material.

Keep in mind also that you cannot do an incorporation by reference back to more than one generation for essential matter. 

Example: Parent -> Child -> Grandchild

If Child incorporates by reference Parent and Grandchild incorporates by reference Child, Parent is not incorporated by reference for any essential matter that Grandchild may rely on.

[smgsmc]

Re: incorporation-by-reference, that should work, but in long (> 2-3 applications) chains, I'm always worried that there'll be some sort of problem that makes it difficult or impossible to bring in language or figures from the parent application.  I figure if I file the exact original parent application (while maintaining co-pendency), there's no plausible argument that I've given up any material or (equally important) that I've added new matter by omitting incorrect or inconvenient material.

Keep in mind also that you cannot do an incorporation by reference back to more than one generation for essential matter. 

Example: Parent -> Child -> Grandchild

If Child incorporates by reference Parent and Grandchild incorporates by reference Child, Parent is not incorporated by reference for any essential matter that Grandchild may rely on.

That's a good point.  And a strong reason to leave the spec and figures alone, and just pay the excess page charge.

Assume that the parent is no longer pending, but the child is.  The child deleted some of the material in the parent, but incorporates the parent by reference.  Can the child be amended to include all the omitted material (effectively restoring the spec and figures of the child to those of the parent)?  Then the grandchild can have full support of all the material in the parent?  Would that work?

[bluerogue]

Assume that the parent is no longer pending, but the child is.  The child deleted some of the material in the parent, but incorporates the parent by reference.  Can the child be amended to include all the omitted material (effectively restoring the spec and figures of the child to those of the parent)?  Then the grandchild can have full support of all the material in the parent?  Would that work?

My gut says yes, but I don't know.  I don't think the MPEP has anything directly on point.  The closest I can find is that when you incorporate by reference, the material is considered part of the application. If it's part of the application, then it shouldn't be considered new matter.  I'd probably be OK with it, but there are other examiners who might not be.  I would not want to be the test case over an extra $400 or whatever it may be. 

[AbstractIdeal]

Keep in mind also that you cannot do an incorporation by reference back to more than one generation for essential matter. 

Example: Parent -> Child -> Grandchild

If Child incorporates by reference Parent and Grandchild incorporates by reference Child, Parent is not incorporated by reference for any essential matter that Grandchild may rely on.

That's not quite right. Incorporating a patent application by reference is never sufficient for any essential matter. You must incorporate the U.S. patent application publication (or issued patent). But I agree that, if grandchild incorporates the publication of child and child incorporates the publiction of parent, you can't rely on the publication of the parent for support of essential matter in the grandchild.

[cheesepep]

Filed an application with 150 pages. Filed a prelim the next day bringing it down to under 100. Received excess application size fee. Filed response saying not necessary and got a notice to file missing parts for the fee. Called patent legal and after some discussion, the guy says excess fees are still needed.

[snapshot]

Filed an application with 150 pages. Filed a prelim the next day bringing it down to under 100. Received excess application size fee. Filed response saying not necessary and got a notice to file missing parts for the fee. Called patent legal and after some discussion, the guy says excess fees are still needed.

Well, the prelim amendment wasn't part of the original application since it wasn't filed the same day, so I can see why the PTO charged the size fee.

[cheesepep]

Based on what I read above and from the MPEP, it seems that including the prelim at the day of filing is part of the application size. So if the application is 100 pages and the prelim is 25 pages, but reduces the application size to be 80 pages, the fee due is 100+25 pages.

But it seems that filing the prelim the day after to be under 100 pages is not included as being part of the application, so the actual application size is 100 pages (as opposed to being 125 pages).