Legal Question in Intellectual Property in Texas

Re: Can first to invent date be applied to abandoned patent applications

Answer: Assuming you mean "first filing date" rather than "first invention date", Maybe 1996, Maybe 2001.

The "first to invent" date in the US has nothing to do with filing date, but rather goes back to the date of conception of the invention provided diligent reduction to practice occurred, otherwise "date of first invention" will be presumed to be the filing date of the application in the chain of applications you list which first discloses the subject matter of the claim in question.

In non-US countries, however, the date of first filing of a patent application having a disclosure of the claimed invention is the priority date of the claimed invention and is the "first to invent" date. So, the first answer given you is incorrect for foreign countries.

It also depends on how you are using the claim, prior art for purposes of invalidating a later claim by another or as a patent right for purposes of infringement determination. If for purposes of prior art the earliest filing date is probably the date. If for purposes of infringement analysis, you are concerned with the issue date and date of publication, as those are the dates when the infringement protection takes effect.

For these types of questions, you can see that the answer depends on additional facts not stated in your question. You should see a patent attorney if this is important to you, as there are also other factors that can come into play in the determination that time does not permit me to detail here.

Re: Can first to invent date be applied to abandoned patent applications

The first to invent date is independent of the patent filing or issuance date.

Re: Can first to invent date be applied to abandoned patent applications

Actually, your situation is more complicated than it seems. A "continuation" of a previous application is treated as if it has the same filing date (priority date) as the previous application, because it is supposed to describe only the same subject matter as the previous application. A "continuation-in-part" (CIP) on the other hand, is like a continuation, except that there is new matter added. The priority date for the CIP is considered to be the same as the old app for any old subject matter, but it is the same as the filing date of the CIP for any new matter added. So, if you have a CIP in the chain of application (like in your fact scenario), that means that something was added in the CIP that wasn't in an earlier application. If that's the case, then it's highly probable that (at least for some claims) the actual date of invention is not the same as for the material covered in the original 1996 application. Note that (as the previous attorney noted) the priority date or filing date is not the same as the date of invention (since you have to invent something first, before you file an application on it). Also, you will note that the fact that a previous application has been abandoned has no bearing on the priority dates of the continuations and CIPs. Nonetheless, you can often get at least some idea as to when the date of invention for each of the claims might be, based on the priority dates.