[Patentpractice] correcting a filing receipt for failure to properly list the priority claim

[Bruce Young]

I am not sure if they are correct that a petition cannot be used to correct the problem, but the initial benefit claim was not correct in my opinion because when no application number is listed, it refers to the current filing (CON1, which had not yet been assigned an application number when the initial ADS was filed). And at the date of the initial filing, the PPAs were all expired, so the new application could not directly claim priority to them.

If, it had shown that NPA1 claimed benefit to each of the PPAs and CON1 claimed benefit to NPA1 it would have been OK.

-Bruce Young
(712) 541-9822

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via Patentpractice
Sent: Thursday, April 4, 2024 12:30 PM
To: patentpractice at oppedahl-lists.com
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [Patentpractice] correcting a filing receipt for failure to properly list the priority claim

A listserv member asks to post anonymously ...

I request your thoughts concerning a request to correct a filing receipt for failure to properly list the priority claim.

Here are the facts:

PPA1 filed 12/02/21
PPA2 filed 06/14/22
PPA3 filed 10/10/22
NPA1 filed 11/23/22
CON1 filed 5/8/23
NPA1 issued 08/01/23

Filing receipt for CON1 only lists the claim to NPA1 serial number.
It does not include the claims to the PPAs.

The USPTO is telling me the petition to correct is denied because of the way the PPAs are recited in the ADS.

Here’s what the ADS looks like for the claim to the PPA1 (the claims to the other PPAs are the same):

Prior app status                    Expired
Application number              ---
Continuity type                      Claims benefit of provisional
Prior app number                 63xxxxxx
Filing date                              12/02/21

The USPTO employee is telling me the reason the benefit claim is improper is because there is not a number, but instead dashes, for the “Application number”.

Is the USTPO employee correct?



-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240404/fc61ed56/attachment.html>