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

[Jim Larsen]

You are claiming benefit in CON1 through NPA1, the Application number should be the NPA1 application number.  Otherwise it is interpreted as CON1 directly claiming benefit to PPA1 after its expiration, which, of course, doesn’t compute.  So, what you likely wanted when you filed CON1 was:

(blank, for the instant application) claims benefit of (pending) NPA1 filed 11/23/22
NPA1 claims benefit of (expired) PPA1 filed 12/02/21,
NPA1 claims benefit of (expired) PPA2 filed 6/14/22,
NPA1 claims benefit of (expired) PPA3 filed 10/10/22,

Filing a corrected ADS now, I believe you’d put “patented” instead of “pending” for NPA1.

And you may need to petition for a late claim of priority.  (MPEP 214.02)

Best regards,

-Jim

James C. Larsen
Attorney
Larsen IP PLLC
p: 425.298.6846
e: jim at Larsen-IP.com<mailto:jim at Larsen-IP.com>
w. www.Larsen-IP.com<http://www.Larsen-IP.com>

NOTICE OF CONFIDENTIALITY: The information contained in this email, including any attachments, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient or authorized agent, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. Unintended recipients are requested to notify the sender immediately and to permanently delete this e-mail, any attachments, and copies.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Thursday, April 4, 2024 at 10:34 AM
To: patentpractice at oppedahl-lists.com <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/20240404/3d618ac6/attachment.html>