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(Message started by: alvin on Apr 23rd, 2007, 10:21pm)

Title: extent of improvement patent claims
Post by alvin on Apr 23rd, 2007, 10:21pm
I recently submitted a utility application that I thought was not well done. My attorney did not fully understand all the features of my invention and the description reflected that. He gave me only 24 hours to make corrections before we had to submit it to stay within the 1 year coverage of the provisional application. Many of the features I am trying to claim may not be sufficiently enabled by the description.

Rather than do a continuation-in-part to fix the problems, I'd like to leave the description as it is and simplify the claims, leaving only those covering the most basic and clearly described features. Iíd like to submit an improvement application soon describing everything of the first application again, but more completely and correctly. I will also add a lot of new material.

From the drawings and description of first application, it may appear that some of my claims in the improvement application could have been made there instead. Will those claims be valid in my improvement application? What priority date would they have, and what would be the terms of those claims? Can I even apply for an improvement patent to a patent that hasnít yet been granted?

A possible downside could arise from someone submitting an application for a similar invention after my first submission but before my improvement application, and that person making the claims I could have made in my first. But, then again, if I see that coming, I can always broaden the claims of my first application later with a continuation, as long as my description there supports it. Isnít that so? What are the problems with this plan?

Title: Re: extent of improvement patent claims
Post by JSonnabend on Apr 24th, 2007, 7:30am
You absolutely should not file an "improvement patent", whatever the heck that is (why is there an "improvement patents" forum here anyway?).  You absolutely should file a continuation/C-I-P.  Why would you give up whatever benefits of the earlier application you could claim?

If your attorney shafted you, find a new one.  Don't forgo competent legal advice, or you're likely to screw things up worse than they already are (as your proposed approach suggests).

- Jeff

Title: Re: extent of improvement patent claims
Post by alvin on Apr 25th, 2007, 5:39pm
Quoting a publication by Arnold B. Silverman on a TMS site I can't link to here because I'm new:  "U.S. patent law enables the inventive entity (ie, the same inventor or same group of inventors) named in the basic patent to, under certain circumstances, avoid the basic patent being deemed prior art, which is citable against an improvement patent application. If the same inventive entity named in the basic patent files an application on the improvement within one year after issuance of the basic patent, the basic patent is not prior art citable against the improvement application. This is because the statute requires that prior art of this type be invented by another. The identity of the inventive entity in this example means that the basic patent was not issued for the invention of another. If, however, the patent application directed toward the improvement is filed more than one year after the basic patent issues, regardless of inventorship, the basic patent will be a prior art reference that must be considered in evaluating patentability." Is this correct?

It is my intent to continue prosecution of the original application, leaving it with the weak description, while starting a new application with a much more thorough treatment of the original material plus extensive new matter. This way I donít give up the priority date benefits of the original application, and I gain a new 20 year term on the new matter. Wouldn't that be preferable to a CIP? What are the advantages of a CIP in these circumstances?

From the drawings and description of the original application, it may appear that some of my claims in the new application could have been made there instead. Will those claims be valid in the new application?

Title: Re: extent of improvement patent claims
Post by SoCalAttny on Aug 4th, 2007, 1:17am
Refer to 37 CFR 1.53 for the rules on Continuation in Part (CIP) applications.  

Verify - CIPs reference a parent application (the original application) , use the original specification and drawings, accept new matter and have different claim coverage than the original application.

The filing date is that of the original application with the exception of the new matter which has a later filing date.

Seek professional help.

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