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rnemtcc44
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design change
« on: Jul 14th, 2005, 1:09pm »
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I submitted a patent app. 4/04.  Through continual research I have found that I had to change the design of the device.  It is about 50% the same as the device I applied the patent for.  So basically, all the components are the same, the design is different.  Could I apply for a design patent to cover the new design to supplement the nonprovisional patent ? (when or if it is granted)  If the nonprovisional patent is not granted, does the design patent hold some value?  Can I ammend the application that I submitted 4/05, and if so, does the waiting period start back to as if they just received the patent?  Currently there is a 23 month wait until you hear from the uspto in this particular area.  Thanks
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JimIvey
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Re: design change
« Reply #1 on: Jul 14th, 2005, 6:26pm »
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on Jul 14th, 2005, 1:09pm, rnemtcc44 wrote:
Could I apply for a design patent to cover the new design to supplement the nonprovisional patent ? (when or if it is granted)

Yes.  But remember the design patent application would only be for the design -- the way it looks.  
 
on Jul 14th, 2005, 1:09pm, rnemtcc44 wrote:
If the nonprovisional patent is not granted, does the design patent hold some value?  

Yes, but only for things that look very similar.
 
on Jul 14th, 2005, 1:09pm, rnemtcc44 wrote:
Can I ammend the application that I submitted 4/05, and if so, does the waiting period start back to as if they just received the patent?

No, well sort of, yes.
 
You can't amend your 4/05 application (at least not in any way that adds new material), but you can file a continuation-in-part (CIP) application claiming the benefit of the earlier filing date of your 4/05 application.  The CIP would have a split effective filing date.  The filing date would go back to 4/05 (perhaps to 4/04 if your provisional was substantially the same, i.e., covered the same material to about the same degree of detail) for things described in the 4/05 application and you'd get a new filing date for the new stuff.
 
What this does is prevents your 4/05 (and 4/04) applications from being considered prior art.  It's a common technique for exactly the situation you describe.
 
Yes, you'll have to wait about the same amount of time for the CIP to be examined.  But your 4/05 application can go forward on its own.
 
The question that most people want to know is whether the earlier application covers the newer embodiments.  And, the answer is, "It depends."  If you did your claims right, there's a good chance that it does.  Which means that, to cover your latest greatest product, all you have to do is absolutely nothing but stay with the current application.
 
Regards.
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rnemtcc44
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Re: design change
« Reply #2 on: Jul 14th, 2005, 9:36pm »
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Thank you for the reply, sorry but I messed up on the dates, it is only one app. 4/04.  So the CIP app. would have the same uspto fees as applying for any non-provisional app., is that correct?  Also, it would not effect the progression of the 4/04 app., is that correct?  The improved device (without going into specifics) actually is also applied on another section of a human body but works the same way as the other sections of the human body as described in the app. on 4/04.  So the device is just expanded to another section of the human body but the function is the same for all parts of the human body.  So if I had a design patent covering the whole configuration of the device, no one can copy my design?  Also, if my patent app. submitted 4/04 doesnt grant, would the design patent hold any value as far as licensing is concerned?  I feel that the design of the device is exactly how it should be and any other designs would produce problems to the user.  The design cannot get any better for prehospital use and that is my target area.  Thank again for the input.
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JimIvey
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Re: design change
« Reply #3 on: Jul 14th, 2005, 11:22pm »
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on Jul 14th, 2005, 9:36pm, rnemtcc44 wrote:
Thank you for the reply, sorry but I messed up on the dates, it is only one app. 4/04.  So the CIP app. would have the same uspto fees as applying for any non-provisional app., is that correct?

Yes.  Well, the fees have gone up since then and they're based on the number of claims, so it will vary -- but about the same.
 
on Jul 14th, 2005, 9:36pm, rnemtcc44 wrote:
Also, it would not effect the progression of the 4/04 app., is that correct?  

Yes, that's correct.  They'd be two separate applications pending in the PTO.
 
on Jul 14th, 2005, 9:36pm, rnemtcc44 wrote:
The improved device (without going into specifics) actually is also applied on another section of a human body but works the same way as the other sections of the human body as described in the app. on 4/04.  So the device is just expanded to another section of the human body but the function is the same for all parts of the human body.  So if I had a design patent covering the whole configuration of the device, no one can copy my design?  

The design patent (assuming you can get one -- more on that later) would cover how the thing looks.  You would have drawings of the thing, and infringement would be determined by comparing competitors' things to your drawings.  A quote from a case that stuck in my mind years ago was that "design patents have virtually no scope" meaning that the appearance has to be nearly identical (unless things have changed in recent years -- it's been a while since I looked into that).
 
on Jul 14th, 2005, 9:36pm, rnemtcc44 wrote:
Also, if my patent app. submitted 4/04 doesnt grant, would the design patent hold any value as far as licensing is concerned?  

Well, see my anwser above and below.  My guess is that the answer is "not really."
 
on Jul 14th, 2005, 9:36pm, rnemtcc44 wrote:
I feel that the design of the device is exactly how it should be and any other designs would produce problems to the user.  The design cannot get any better for prehospital use and that is my target area.  Thank again for the input.

See, that first sentence above suggests a problem for you with design patents.  It's not just how the thing looks; the look has to be "ornamental".  If the "look" of the thing is functional rather than ornamental, I don't think you can get a design patent.  Poking things into body parts (trying not to chuckle because I know it's a serious invention...), especially when no devices with a different "design" or appearance would work as well, sounds like a functional thing to me.  But maybe a good and proper argument could be made to the contrary.  Maybe you should see an attorney.
 
Getting back to value of a design patent briefly, you're sort of caught in a tight spot.  If the design really must be like yours to function properly, then a design patent with virtually no scope might be valuable.  However, it might also be susceptible to challenge on the grounds that the design is functional rather than ornamental.  On the other hand, if your design is truly ornamental, then different looking designs would also work well and the particular design covered by your design patent wouldn't have much value except to protect against direct knock-offs in the marketplace.
 
I hope that helps.
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James D. Ivey
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