[Patentpractice] Continuation from provisional?

Sat May 4 10:47:35 UTC 2024

Hi, Dale

I think what David meant to say is that it doesn't make any difference what the ADS says if the filing receipt has the wrong information.  You need to file a Request for Corrected Filing Receipt if the filing receipt has the wrong domestic benefit or foreign priority information even if the ADS is correct.

Randall S. Svihla
NSIP Law
Washington, D.C.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Dale Quisenberry via Patentpractice
Sent: Friday, May 3, 2024 4:29 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Dale Quisenberry <dale at quisenberrylaw.com>
Subject: Re: [Patentpractice] Continuation from provisional?

David,

Did you see what Randall wrote and cited?

Hi, Katherine

ADS controls.  See 37 CFR 1.76(d):

(d) Inconsistencies between application data sheet and other documents.  For inconsistencies between information that is supplied by both an application data sheet under this section and other documents:
(1) The most recent submission will govern with respect to inconsistencies as between the information provided in an application data sheet, a designation of a correspondence address, or by the inventor’s oath or declaration, except that
(i) The most recent application data sheet will govern with respect to foreign priority (§ 1.55 ) or domestic benefit (§ 1.78 ) claims . . . .

Best regards,

Randall S. Svihla

NSIP Law

Just curious to know if there is some rule, statute, etc. that I’m not aware of that says the filing receipt controls.

Thanks.

Dale

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From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of David Boundy via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Friday, 3 May 2024 at 3:18 pm
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: David Boundy <DavidBoundyEsq at gmail.com>
Subject: Re: [Patentpractice] Continuation from provisional?
What REALLY controls is the filing receipt.  If that doesn't say what you want it to say. file a petition to correct/add omitted benefit claim.

On Fri, May 3, 2024 at 12:57 PM Katherine Koenig via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
For priority/benefit claims, does the ADS or statement in the Specification control?

On a published application, the Related US Application Data (1st page) states the application is a “continuation of application No. [X], filed on [Date].”  That App. No. [X] is a provisional, 63-series.  The ADS also provided that the application is a “continuation” of App. No. [X] (provisional, 63-series).  The application was filed by a pro se inventor, so this was (I assume) an inadvertent error.

However, the body of the Specification sates “This application is a nonprovisional filing with priority to a provisional application, No. [X], filed on [Date].”

Can the application properly be considered to be a continuation of the earlier provisional for patent term calculation?  In other words, does patent term begin at the provisional filing date or the current application filing date?

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
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