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I have a few questions on both a granted patent and a pending non-provisional application.

Our granted application was abandoned because the Oath was filed "after" the Allowance and Issue fee were paid.

When this granted application is revived (after filing a petition requesting revival based on unintentional delay set forth in 37 CFR 1.137(b)) what is its status?

Can it be claimed as the parent application in another pending application because it's not issued or is it now prior art against me?

We want to benefit from granted/revived application priority date and make it a priority claim in a modified ADS of a pending non-provisional application that was filed within 12 months of the granted application. (sorry it's a little confusing)

Thank you in advance for your help and insight.

Best regards,

JB

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This is definitely a corner case and I can’t provide a definitive answer. However, if and when it is revived, it could be granted very quickly and then it would be too late.

You might talk to the petitions office. Bye the way, in a petition to revive you will swear that the entire delay was unintentional so I hope you aren’t waiting to file it.

Also, is very important to keep your language clear. You say it is a granted application but that is wrong. As you say in your title it was allowed but not granted.

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  • thank you, George...I will be move specific in my questions...
    – InFlight
    Oct 3, 2023 at 17:38
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thank you for this reply...your insight is very helpful. Yes, it was my mistake is using "granted" and "allowed" incorrectly.

My plan is to revive the "allowed application" and enter a statement that this was entire delay was unintentional. Concurrently, I will update and e-file an amended ADS to the pending application (filed within 12 months of the allowed application) to claim benefit to the allowed application to continue the lifeline on the allowed application before it grants. (I was not sure if I could claim benefit to an abandoned but allowed application prior to it's revival).

Additionally, I will take you advice and call petitions for their input.

Kindly let me know if you have any other thoughts or input. I greatly appreciate you help.

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  • You might not have enough reputation points to comment but for your future postings it is not correct to post something like this as an answer. All SE sites are set up strictly as Questions and Answers. Anything that is neither a question or an answer to the associated question should be a comment. Or you could edit your question to add information. Also it is not the style of SE sites to have any kind of sign-off so I edited it out to be instructive. That conveyed, welcome to Ask Patents.
    – George White
    Sep 14, 2023 at 5:31

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