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[bsclayton]

I have a design patent on an ergonomic support on a power tool.  When the patent was issued, the design consisted of two discrete parts assembled with a fastener.  I've now improved the design so that it can be molded as a single part.  The shape, function, dimensions, etc. have not changed - just the fact that it's now a one piece part.  I'd like to add the new design to the existing patent so that I'm covered.  Is there some mechanism by which one can update their patent?  My attorney advised me that submitting a new design patent would be futile, as the existing one would be considered prior art.  I can't believe that there's not some method to show an improved design.  Any thoughts?

[dablueman]

So the design hasn't changed, only the manner in which the erogonomic support is made?

[DogDayPM 9er9er9er]

I have a design patent on an ergonomic support on a power tool.  When the patent was issued, the design consisted of two discrete parts assembled with a fastener.  I've now improved the design so that it can be molded as a single part.  The shape, function, dimensions, etc. have not changed - just the fact that it's now a one piece part.  I'd like to add the new design to the existing patent so that I'm covered.  Is there some mechanism by which one can update their patent?  My attorney advised me that submitting a new design patent would be futile, as the existing one would be considered prior art.  I can't believe that there's not some method to show an improved design.  Any thoughts?

Hi

You can indeed patent improvements (not by "adding" to a prior patent but rather by filing a new application).

But the problem with an improvement is whether the patent office will view the improvement as something that someone skilled in that field would obviously do.  And your original patent will count as what someone skilled in the field would use as their background knowledge base, and then build upon. 

So, imagine yourself today as the guy skilled in the field - you didn't necessarily think about doing it as a single IM part back then, but today as you stand there looking at your "old" (publicly known) two-part version, would it be obvious (say, for reasons of more efficient manufacturing) to the guy skilled in the field to go ahead and make the one-mold version?

I can't really speak to power tool accessories, but in the fields I've worked, trying to patent the "it's more efficient" version of something has been fairly difficult because the patent office always views efficiency improvements as something the skilled person always strives after in any case.  But where you can show there was some tough impediment in gettng from point A to point B, it's still possible to argue your case.

[dablueman]

I have a design patent on an ergonomic support on a power tool.  When the patent was issued, the design consisted of two discrete parts assembled with a fastener.  I've now improved the design so that it can be molded as a single part.  The shape, function, dimensions, etc. have not changed - just the fact that it's now a one piece part.  I'd like to add the new design to the existing patent so that I'm covered.  Is there some mechanism by which one can update their patent?  My attorney advised me that submitting a new design patent would be futile, as the existing one would be considered prior art.  I can't believe that there's not some method to show an improved design.  Any thoughts?

You can indeed patent improvements (not by "adding" to a prior patent but rather by filing a new application).

DogDay, I read the OP as having a design patent and the improvement doesn't have to do with the design ("the shape, function, dimensions, etc. have not changed").

How does one receive an "improvement" design patent when the design hasn't changed?

[DogDayPM 9er9er9er]

DogDay, I read the OP as having a design patent and the improvement doesn't have to do with the design ("the shape, function, dimensions, etc. have not changed").

How does one receive an "improvement" design patent when the design hasn't changed?

Hi, dablueman,

It has changed, though.  I understand the OP to say that he means that it functions essentially the same (edit) but the original was said to be a two-piece version.   

So if the newer version (what is now his improvement) is to IM it as a single piece, then given what is normally viewed as pretty narrow coverage for design patents it would seem his first patent may not read on the new version.

In any event, he can't add anything to the granted patent.  So he'll have to have a good argument for why the 1-piece molded version is unobvious in view of the already-published 2-piece molded version, if he'd like to file a new application trying to cover the 1-piece version.

[dablueman]

...you'll see the drawings in the...design patent pretty clearly showing a two-piece [something]. 

Ah. Not sure how you managed to get the patent from the OP's post (you a magician?). I had assumed the drawing showed one piece because he said the dimensions and shape hadn't changed, only the method of manufacturing changed from two pieces to one. Now I see the original clearly shows 2 pieces.

[DogDayPM 9er9er9er]

...also got a neat dust shroud for drilling that would have been handy yesterday as I mounted the kids' new dry-erase boards.  (Would have saved the vacuuming.)  If I did that sort of thing a little more often (like if I was a handyman or not just so lazy as a Dad/Husband) it'd be worth ordering one. 

[bsclayton]

thanks for the advice, and kudos on unveiling my true identity.  Magicians dread having someone like you in the audience.  That's a real shame on the improvement though.   Would have been nice if the patent office provided a way to protect new iterations of a novel product. 

[DogDayPM 9er9er9er]

Magicians dread having someone like you in the audience.  That's a real shame on the improvement though.   Would have been nice if the patent office provided a way to protect new iterations of a novel product. 

Please don't mistake what I'm saying.  A new iteration can be protected (with a new patent application).  But you do have to be able to argue that the new iteration is not a "merely obvious" improvement. 

And whether an improvement is obvious or not can be a tough call - definitely an area where "reasonable minds can differ" and people argue about obviousness every day.  Based on your first post, I guess your patent attorney thought the improvement might be viewed as obvious.  But in the end, it's the patent office that decides.  If you don't think your improvement is obvious in view of what's already published and it's important to you, go back and talk to your patent attorney.  And/or, get a second opinion.

Good luck to you.

P.S. Sorry about "outing" you.  I figured you intended it to be found.  An easy fix is for you to change your screen name (and hide your email address in your profile).  I'll go back and pull identifying info from any of my posts.

[bsclayton]

Thanks, and no worries on outing me... just be sure to put that drill on your xmas list for next year!