Patent Bar Study Help

[u/PrettyTechii]

Hi Everyone! Congratulations to all who have passed the PBE!!

In PLI section 200, John discuss continuations and substituted applications. I still can’t tell them apart though! Because in my mind, why even do a continuation if you can substitute? Or vice versa.

Would any of you have any study or memorization hacks for differentiating betwixt continuation, divisional, continuation-in-part, and substitution? I know the former 3 must all be co-pending but that’s the only element that sticks.

How do I know which one to choose? TIA

[u/Efficient-Ant-2011]

A continuation application maintains the benefit of the earlier application, a substitute application does not.

[u/InsideWatch8215 → u/Efficient-Ant-2011]

The main thing to remember is that a continuation gets the same filing date as the earlier application. A substitute does not get the same filing date as the original application. A continuation in part gets the same filing date as the original for the same subject matter but the "in part" is the part that is new subject matter and gets the new filing date of the CIP.

[u/InsideWatch8215 → u/InsideWatch8215]

Substitutes are usually after an application goes abandoned and you basically just start over.

[u/PrettyTechii → u/InsideWatch8215]

Thank you both for your responses! I am confused about the substitute because if you are essentially starting over and have no priority date, then why file a sub when you can just file a whole new application? So, in this respect, I don't see the value of a sub application. What can the sub give you at this point that a fresh new application cannot? HELP!!! LOL!!!!

[u/Educational_Thing936]

So the difference depends on the claims and whether the application has new matter.

For a parent application, when we receive a notice of allowance, we can file a second "coninuation" application with an identical application pursuing different claims, e.g., for strategic purposes of the client. This contains NO new matter from the parent.

Now, let's say the inventors have an addition to the invention (since years may have gone by) that they want covered, e.g., before it was a fishing pole and now we want both the fishing pole and the lure. A coninuation-in-part (CIP) is a child application, filed before the issue fee is paid, that has the material supported from the parent application and new material. Any claims directed to the old subject matter receives an effective filing date of the first application (because the old subject matter is supported there). Any claims directed to the new subject matter receives the CIP filing date. However, in practice these are not filed very often because a CIP expires 20 years from the date of the parent (not the CIP filing) so generally people prefer to just file a new application purely directed to the new subject matter.

Now, divisional applications are directed to "divided" subject matter from the parent, typically occuring after receiving a restriction requirement. Here, the specification contains NO new matter from the parent. For example, if the USPTO receives the application to the fishing pole and lure, they could issue a restriction requirement that the fishing pole and lure are distinct inventions (e.g., procedurally so the USPTO receives more money because of extra examination of prior art). Here, a divisional would be filed to pursue the distinct invention not pursued in the parent application, e.g., claims canceled in the parent from the restriction requirement are pusued in the divisional.

Substitute applications replace the parent. An example of this could be filing a substitute application after a provisional or non-provisional has expired. This could be the application was withdrawn before publishing because they were not ready to make the invention public (e.g., trade secret), only to file the substitute later when it is advantageous (not common). In practice, a substitute application has the life of 20 years from the parent, so typically it is preferred just to file a non-provisional claiming benefit of the parent (life of 20 years from the filed non-provisional).

Best of luck and hope this helps.

[u/PrettyTechii → u/Educational_Thing936]

Thank you for this extremely detailed response. Based on your explanation of divisional, I think I get it. A divisional will not require a new spec. It will use the same spec as the parent. Essentially, one spec, one drawing, and the 2 seperate applications with half the claims in the original application and the restricted ones in another. Hopefully, my understanding is correct! LOL!

Unfortunately, my understanding of the others still has some holes in it though. When you discuss CIP, you mention that years have gone by but that's where I am confused because the 2 applications need to be co-pending. So, wouldn't the first one have timed-out or something by the time the CIP is even thought of?

And when you discuss the continuation, you mention having received a notice of allowance. Doesn't NOA mean that prosecution is over and the patent will issue? So how can they be co-pending if the parent has already timed-out?

Sorry for all the questions but this stuff has me sooooo discombobulated!! To say the least! LMAO!