Is a withdrawn claim "pending"

[Fresh Monniker]

My deposit account got dinged for extra claims (this could be
expensive in the future) when I withdrew claims, and added others, for
a total number that I thought was no more than had been paid for.

Is "cancel" the magic word? When would one withdraw but not cancel?

What is the significance of the difference?

[Steve Marcus]

Post by Fresh Monniker
My deposit account got dinged for extra claims (this could be
expensive in the future) when I withdrew claims, and added others, for
a total number that I thought was no more than had been paid for.
Is "cancel" the magic word? When would one withdraw but not cancel?
What is the significance of the difference?

Withdrawn means still pending, but withdrawn from prosecution. For example,
suppose that pending claims are subject to a requirement to restrict between
distinct inventions (claims to an article of manufacture and claims to a
method of making that article of manufacture are often "restricted" by the
examiner), or to an election of species requirement (a claim to species #1
and a claim to species #2 are often subject to a requirement to elect a
single species for prosecution in the application, subject to allowance of a
generic claim). If you elect the article of manufacture claims, but do not
cancel the method claims, the method claims are still pending (they haven't
been canceled) but are "withdrawn from further consideration" by the
examiner (the quoted language is from 37 CFR 1.142(b).

Canceled claims are no longer pending.

Steve

[Fresh Monniker]

Post by Steve Marcus

Post by Fresh Monniker
My deposit account got dinged for extra claims (this could be
expensive in the future) when I withdrew claims, and added others, for
a total number that I thought was no more than had been paid for.
Is "cancel" the magic word? When would one withdraw but not cancel?
What is the significance of the difference?

Withdrawn means still pending, but withdrawn from prosecution. For example,
suppose that pending claims are subject to a requirement to restrict between
distinct inventions (claims to an article of manufacture and claims to a
method of making that article of manufacture are often "restricted" by the
examiner), or to an election of species requirement (a claim to species #1
and a claim to species #2 are often subject to a requirement to elect a
single species for prosecution in the application, subject to allowance of a
generic claim). If you elect the article of manufacture claims, but do not
cancel the method claims, the method claims are still pending (they haven't
been canceled) but are "withdrawn from further consideration" by the
examiner (the quoted language is from 37 CFR 1.142(b).
Canceled claims are no longer pending.

What would be the harm in canceling claims in a restriction
requirement circumstance, then adding them as new if needed?

[Chuck Szmanda]

Post by Fresh Monniker

Post by Steve Marcus

Post by Fresh Monniker
My deposit account got dinged for extra claims (this could be
expensive in the future) when I withdrew claims, and added others, for
a total number that I thought was no more than had been paid for.
Is "cancel" the magic word? When would one withdraw but not cancel?
What is the significance of the difference?

Withdrawn means still pending, but withdrawn from prosecution. For example,
suppose that pending claims are subject to a requirement to restrict between
distinct inventions (claims to an article of manufacture and claims to a
method of making that article of manufacture are often "restricted" by the
examiner), or to an election of species requirement (a claim to species #1
and a claim to species #2 are often subject to a requirement to elect a
single species for prosecution in the application, subject to allowance of a
generic claim). If you elect the article of manufacture claims, but do not
cancel the method claims, the method claims are still pending (they haven't
been canceled) but are "withdrawn from further consideration" by the
examiner (the quoted language is from 37 CFR 1.142(b).
Canceled claims are no longer pending.

What would be the harm in canceling claims in a restriction
requirement circumstance, then adding them as new if needed?

Suppose you elect without traverse and the elected claims are in condition
for allowance - and you have cancelled the remaining claims. The examiner
can pass your claims to issue without so much as a phone call. If you
haven't filed a divisional on the originally non-elected (cancelled) claims
at that point, the chain of pendency could be broken and you may lose your
right to file and prosecute the non elected claims.

The lessons are these:

1. Always elect with traverse - even if you know your argument will fail.
Do not argue that the non elected claims are patentably indistinct lest you
create a possible estoppel. Electing with traverse imposes the requirement
that the examiner notify you before passing the case to issue. That gives
you a chance to file a divisional application.

2. Do not cancel the non elected claims. It isn't necessary anyway.
Making an election will automatically withdraw the non elected claims from
consideration. If you don't follow the advice in 1, the examiner can cancel
the non elected withdrawn claims by examiner's amendment and pass the case
to issue. Again, the chain of pendency could be broken and you could lose
your right to file on the non elected claims. See M.P.E.P. § 821.02.

Chuck Szmanda

[Steve Marcus]

Post by Chuck Szmanda

Post by Fresh Monniker

Post by Steve Marcus

Post by Fresh Monniker
My deposit account got dinged for extra claims (this could be
expensive in the future) when I withdrew claims, and added others, for
a total number that I thought was no more than had been paid for.
Is "cancel" the magic word? When would one withdraw but not cancel?
What is the significance of the difference?

Withdrawn means still pending, but withdrawn from prosecution. For example,
suppose that pending claims are subject to a requirement to restrict between
distinct inventions (claims to an article of manufacture and claims to a
method of making that article of manufacture are often "restricted" by the
examiner), or to an election of species requirement (a claim to species #1
and a claim to species #2 are often subject to a requirement to elect a
single species for prosecution in the application, subject to allowance of a
generic claim). If you elect the article of manufacture claims, but do not
cancel the method claims, the method claims are still pending (they haven't
been canceled) but are "withdrawn from further consideration" by the
examiner (the quoted language is from 37 CFR 1.142(b).
Canceled claims are no longer pending.

What would be the harm in canceling claims in a restriction
requirement circumstance, then adding them as new if needed?

Suppose you elect without traverse and the elected claims are in condition
for allowance - and you have cancelled the remaining claims. The examiner
can pass your claims to issue without so much as a phone call. If you
haven't filed a divisional on the originally non-elected (cancelled)
claims at that point, the chain of pendency could be broken and you may
lose your right to file and prosecute the non elected claims.

I'm willing to be corrected if I'm wrong, but I believe that co-pendency
applies so long as the subsequent (divisional) application is filed during
the pendency of the original (parent) application. The parent application,
if allowed, is pending right up until the day that the patent is issued. So
I don't think that canceling nonelected claims, whether it's done
immediately upon election or whether one elects without traverse and keeps
them pending right up until the examiner cancels them by examiner's
amendment upon allowing the application matters, so long as one files the
divisional application on the nonelected claims prior to the date that the
parent issues (or becomes abandoned).

Post by Chuck Szmanda
1. Always elect with traverse - even if you know your argument will fail.
Do not argue that the non elected claims are patentably indistinct lest
you create a possible estoppel. Electing with traverse imposes the
requirement that the examiner notify you before passing the case to issue.
That gives you a chance to file a divisional application.
2. Do not cancel the non elected claims. It isn't necessary anyway.

It is if you are concerned with adding additional claims during the
prosecution and having to pay claim surcharges as a result of the
non-elected claims counting as pending claims, which appears to be what
happened to the OP.

Post by Chuck Szmanda
Making an election will automatically withdraw the non elected claims from
consideration. If you don't follow the advice in 1, the examiner can
cancel the non elected withdrawn claims by examiner's amendment and pass
the case to issue. Again, the chain of pendency could be broken and you
could lose your right to file on the non elected claims. See M.P.E.P. §
821.02.

I would like to see a citation to any authority which states that copendency
ceases to exist by reason of mere cancellation of the non-elected claims or
upon mere allowance by the examiner, as opposed to issue or abandonment of
the application prior to the filing of the divsional application. Note that
it does not hurt, when canceling the non-elected claims (and/or when
electing without traverse), to add a sentence in the remarks to the effect
that election and/or cancellation is without prejudice to filing a divsional
application. Note further that the term "divisional application" is a term
that whens that it is copending with the parent application.

Post by Chuck Szmanda
Chuck Szmanda

Steve Marcus

[Fresh Monniker]

Post by Steve Marcus

Post by Chuck Szmanda
2. Do not cancel the non elected claims. It isn't necessary anyway.

It is if you are concerned with adding additional claims during the
prosecution and having to pay claim surcharges as a result of the
non-elected claims counting as pending claims, which appears to be what
happened to the OP.

Indeed. And with the new extra claim fees, this becomes quite
pertinent.

[Alun]

Post by Steve Marcus

Post by Chuck Szmanda

Post by Fresh Monniker

Post by Steve Marcus

Post by Fresh Monniker
My deposit account got dinged for extra claims (this could be
expensive in the future) when I withdrew claims, and added others,
for a total number that I thought was no more than had been paid
for.
Is "cancel" the magic word? When would one withdraw but not cancel?
What is the significance of the difference?

Withdrawn means still pending, but withdrawn from prosecution. For
example, suppose that pending claims are subject to a requirement to
restrict between distinct inventions (claims to an article of
manufacture and claims to a method of making that article of
manufacture are often "restricted" by the examiner), or to an
election of species requirement (a claim to species #1 and a claim
to species #2 are often subject to a requirement to elect a single
species for prosecution in the application, subject to allowance of a
generic claim). If you elect the article of manufacture claims, but
do not cancel the method claims, the method claims are still pending
(they haven't been canceled) but are "withdrawn from further
consideration" by the examiner (the quoted language is from 37 CFR
1.142(b).
Canceled claims are no longer pending.

What would be the harm in canceling claims in a restriction
requirement circumstance, then adding them as new if needed?

Suppose you elect without traverse and the elected claims are in
condition for allowance - and you have cancelled the remaining claims.
The examiner can pass your claims to issue without so much as a phone
call. If you haven't filed a divisional on the originally non-elected
(cancelled) claims at that point, the chain of pendency could be
broken and you may lose your right to file and prosecute the non
elected claims.

I'm willing to be corrected if I'm wrong, but I believe that
co-pendency applies so long as the subsequent (divisional) application
is filed during the pendency of the original (parent) application. The
parent application, if allowed, is pending right up until the day that
the patent is issued. So I don't think that canceling nonelected
claims, whether it's done immediately upon election or whether one
elects without traverse and keeps them pending right up until the
examiner cancels them by examiner's amendment upon allowing the
application matters, so long as one files the divisional application on
the nonelected claims prior to the date that the parent issues (or
becomes abandoned).

Post by Chuck Szmanda
1. Always elect with traverse - even if you know your argument will
fail. Do not argue that the non elected claims are patentably
indistinct lest you create a possible estoppel. Electing with
traverse imposes the requirement that the examiner notify you before
passing the case to issue. That gives you a chance to file a
divisional application.
2. Do not cancel the non elected claims. It isn't necessary anyway.

It is if you are concerned with adding additional claims during the
prosecution and having to pay claim surcharges as a result of the
non-elected claims counting as pending claims, which appears to be what
happened to the OP.

Post by Chuck Szmanda
Making an election will automatically withdraw the non elected claims
from consideration. If you don't follow the advice in 1, the examiner
can cancel the non elected withdrawn claims by examiner's amendment
and pass the case to issue. Again, the chain of pendency could be
broken and you could lose your right to file on the non elected
claims. See M.P.E.P. § 821.02.

I would like to see a citation to any authority which states that
copendency ceases to exist by reason of mere cancellation of the
non-elected claims or upon mere allowance by the examiner, as opposed
to issue or abandonment of the application prior to the filing of the
divsional application. Note that it does not hurt, when canceling the
non-elected claims (and/or when electing without traverse), to add a
sentence in the remarks to the effect that election and/or cancellation
is without prejudice to filing a divsional application. Note further
that the term "divisional application" is a term that whens that it is
copending with the parent application.

Post by Chuck Szmanda
Chuck Szmanda

Steve Marcus

I would certainly agree with Steve here. I normally elect without traverse,
and cancel the non-elected claims. I always cancel caims without prejudice.
As long as the divisional is filed while the parent is still pending, there
is no problem. The parent can't issue until you pay the fee, so you are in
control. Of course, you only have three months to pay the issue fee, but it
is not much work to prepare the divisional.

Alun Palmer, US Patent Agent

[Mike Brown]

Post by Chuck Szmanda
The examiner
can pass your claims to issue without so much as a phone call.

Only if he feels like paying the issue fee out of his own pocket. He can
allow the case, but it won't issue until the fee is paid.

You always have the time from the notice of allowance to the actual
issue of the patent to file divisionals - at a minimum, the three months
after the notice of allowance within which you can pay the issue fee.

[David Kiewit]

Post by Fresh Monniker
What would be the harm in canceling claims in a restriction
requirement circumstance, then adding them as new if needed?

If you successfully traverse the restriction requirement, your withdrawn
claims will be rejoined and examined. On the other hand, if you cancel some
of the claims, the examiner only has to consider the ones that are left.

[Alun]

Post by David Kiewit

Post by Fresh Monniker
What would be the harm in canceling claims in a restriction
requirement circumstance, then adding them as new if needed?

If you successfully traverse the restriction requirement, your
withdrawn claims will be rejoined and examined. On the other hand, if
you cancel some of the claims, the examiner only has to consider the
ones that are left.

This is true, but I don't traverse if I don't expect it to succeed, which
is the usual case, and if you don't traverse then you may as well cancel
the non-elected claims. It depends on the type of restriction and the
facts.