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I have one patent application filed and two more coming soon, all on the same general subject matter. Application A was filed in 2018 and has yet to see action, and I will soon be filing applications B and C. My plan is to file them on the same day, with only B as a CIP, as I believe C is patentable over A.

So I actually have two questions:

  1. If I file a request for expedited examination on B and/or C due to age, will that force an office action on A?

  2. If the examiner rejects C over A, can I amend C, making it a CIP of A?

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Making B or C special due to age will not change the course of A at all. If there are a few claims in A that you would really like examined quickly you could include them in an expedited B (if a CIP) and cancel them from A. Note that an application made special for age has a limit on the number of claims.

CIPs are not as magic as people sometimes think. Any claim in a CIP that is 100% supported by the parent application will be treated with the priority of the parent but any claim that needs even a small bit of support from the new matter will be treated exactly as if it had been filed when the CIP was actually filed. If that is a year past the publication of A then A can be used against it as if it was some random reference by someone else. The new mater claims of B will not be granted if they are obvious in light of A. See this article.

It is possible to add a claim of priority for some period (4 months) after the filing date but that would have no effect on claims in C with new matter unless A was published a year or less before C.

If it has been a year since the parent published, a good reason to have a CIP is that you think there are claims not made in A that could have been made in A, and separately you have something (related to A) new to disclose and claim and want to do both in one application to save money.

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  • If the patent is obvious based on the prior patent of the CIP and than someone else gets a patent that for that subject matter because of negligence of an examiner will it automatically null the approved patent or there is a need to go through a lengthy process to disallow it and support infringements?
    – Moti
    Jan 31, 2021 at 6:32
  • "...any claim that needs even a small bit of support from the new matter will be treated exactly as if it had been filed when the CIP was actually filed." So an intervening provisional filed less than one year after publication of A and less than one year before B or C will bridge that gap?
    – Lou
    Jan 31, 2021 at 13:05
  • @Moti - there is no automatic null of an issued patent. To invalidate it will require an IPR.
    – George White ♦
    Jan 31, 2021 at 20:40

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