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   terminal disclaimer?
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   Author  Topic: terminal disclaimer?  (Read 947 times)
perg
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terminal disclaimer?
« on: Oct 31st, 2007, 2:23pm »
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i currently own a patent that was issued more than one year ago.  
now i want to claim several new features which were not disclosed in the first patent. these features would probably be obvious in view of the first patent.
can i still use a terminal disclaimer to overcome my own patent? (issued over a year ago)
 
if so, what type of application should I file (new? continuation?) can the scope of the new application overlap the patent?  
 
if not, what is my best course of action at this point.
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PA
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Re: terminal disclaimer?
« Reply #1 on: Oct 31st, 2007, 2:33pm »
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on Oct 31st, 2007, 2:23pm, perg wrote:
i currently own a patent that was issued more than one year ago.  
now i want to claim several new features which were not disclosed in the first patent. these features would probably be obvious in view of the first patent.
can i still use a terminal disclaimer to overcome my own patent? (issued over a year ago)
 
if so, what type of application should I file (new? continuation?) can the scope of the new application overlap the patent?  
 
if not, what is my best course of action at this point.

Since it was issued more than a year ago, your previous patent will be considered prior art if you file a new application.  A double patenting rejection would not be applicable here.
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perg
Guest
Re: terminal disclaimer?
« Reply #2 on: Oct 31st, 2007, 2:40pm »
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so am i completely out of options?
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pentazole
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Posts: 197
Re: terminal disclaimer?
« Reply #3 on: Oct 31st, 2007, 3:04pm »
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You say that your new features would probably be obvious in view of the prior patent, but you also say that these features were not disclosed in the prior patent.  Are you simply assuming the PTO is going to reject them as obvious?  If they're new and patentable, then you can file them as a new application.  It's ok if you embody your previous invention, as long as you have additional novel and patentable features in there.
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