More Granular Control Over Priority Connections
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AppColl determines the priority claim type for each priority connection in an application based on what the application Type is of that application. For multi-tier priority claims, each priority claim type is determined based on what the application Type was that first made that priority claim.
This works well for many applications and is generally painless for users. However, it is completely unable to handle complex priority claims in which an application might simultaneously make two or more different types of priority claim to different parent applications. For example, mixed direct CIP and CON priority claims are simply not able to be recognized/specified in AppColl. If you call the application a continuation, then AppColl assumes both priority claims are continuation priority claims. If you call it a CIP, then AppColl assumes both priority claims are CIPs. In reality, it has one CON priority claim and one CIP priority claim.
This is potentially dangerous since AppColl populates the ADS based on what it thinks the priority claim is. If the user generates the ADS and then fails to modify it to correct the incorrect priority claims that AppColl provided, they will submit a priority claim that may be specified incorrectly, thereby jeopardizing it.
Users should have the ability to specify, for each priority claim, what the priority claim type is--it should not be tied to the Type of the application that is making the priority claim. The user-specified priority claim type is what should govern in ADS creation and in other parts of AppColl that show priority claim data.
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@jonah-soundhound-com
37 CFR 1.78 requires that "[t]he reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application." Not the same weight as 35 USC 120, of course, but still something I think should be complied with.I suspect that you may be correct that it might not actually impact the priority claim's validity if one did not, but I would not want to test it--at the very least, there could be an argument that a patentee committed inequitable conduct by, for example, labeling a CIP priority claim as a normal "continuation" priority claim. This might cause an Examiner to mistakenly assume that the subject matter in the application is identical to that in the parent, and thus incorrectly apply the parent's priority date to all claim elements when some of those claim elements were not in the priority application and not entitled to that earlier date....
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I support the request.
However, I would not worry about legal jeopardy. The choices in the "Continuity Type" field in the USPTO ADS form are just for the administrative convenience of the USPTO. They are not important for patent validity in court. 35 USC 120 is the relevant statute that would matter in litigation.
https://www.law.cornell.edu/uscode/text/35/120
A 35 USC 120 benefit claim requires that the application "contains or is amended to contain a specific reference to the earlier filed application". It does not require a designation of a "Continuity Type".
Interestingly, in the US patent laws (35 USC) there is no concept of a continuation or continuation-in-part as a type of patent application.
Nothing here is legal advice. Consult your own attorney. If you are an attorney, don't take my word, look it up.
