Jim, thanks for your thoughts. My original question stemmed from incorrectly
understanding the 103(c). But wrong understanding seemed logical, and I obviously
wasn't alarmed that this is the first time I came across such information
I thought that patent owner can add the improvements to the patent, regardless
of whether the patent is published or not. And even though DogDayPM 9Cubed made the
reality of the legal situation very clear, and you made the motivation to have
this ability in place clear as well, I think giving the patent owner the right to
add obvious improvements to the patent would also be ok. As long as the term
of such "improvement" patents is the same as the original.
So, the motivation would be to protect the improvements to the patent without
having to mess with the obviousness analysis at the patent office. Frankly, I was
stunned to see the quality of my rejection, and I was equally stunned to see some
of the patents that survived obviousness analysis when I was looking through
prosecution histories. I think you have mentioned it in some thread that courts
recognize that the invention is not cast in stone, and improvements are constantly
made, hence doctrine of equivalents, and some broadness given to claim language.
But, again, court interpretations are unpredictable. Giving the inventor ability to
add to the patented matter throughout the life of the patent wouldn't be too bad
a choice, at least at first glance. For non-obvious matter that ability exists already,
and the patent term is reset for non-obvious matter. So, how about obvious matter?
Why not give an inventor a choice: if he/she thinks it's non-obvious, patent it.
If he/she thinks it's obvious, do an "addendum" patent. That way the inventor doesn't
have to worry about the possibility that an obvious improvement would be patented
by a competitor, and having to litigate, and what not. Sure, an obvious improvement is
likely to be protected by original app claims, and then simple publication of the improvement
will ensure protection and non-issue of any patent. But I am not sure every obvious
improvement is of this type. So to me having this "addendum" patent makes sense.
1. Have the same term as the "parent"
2. Parent is excluded from any 103 rejection
3. Relevance test: "addendum" is not enabled if the parent's spec is excluded.
4. Any of the new material added to the "parent" spec must be novel (no portion of it can be found
in prior art).
I think it would encourage continuous disclosure. The inventors/companies would be keen to keep
disclosing any new developments because they will get better protection.
EDIT: I do realize that this post is more proper on improvement patent board, but it's
kind of proper here as well (historically).