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

[Scott Nielson]

Bruce is right. In USPTO parlance, the meaning of "---" on the ADS is "this application"—i.e., the one your filing when you are filling out the ADS, which is CON1. Why the USPTO cannot simply say "this application" or something similar instead of using dashes is beyond me. When the ADS was filled out, NPA1 should have been listed where the dashes are to show that it is NPA1 that claims direct priority to the provisionals.

Scott Nielson

801-660-4400

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, April 4, 2024 11:29 AM
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Subject: [Patentpractice] correcting a filing receipt for failure to properly list the priority claim

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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?






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