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[Paskran]

I have filed a non-provisional patent application two months ago.

However, I think my patent lawyer did a horrible job.

On the first draft, I could find many loop holes that even an elephant could pass though.

For example, claim 1 had three different specifications all written into together and even a very specific detail for size and gab that I only related to describe the benefit of the invention was written into claim 1. So, anyone could dodge infringement by not using that specific size and gab.

We went through revision process a couple of times but it just took so long for each revision to be done. So I went ahead and filed the application to have the protection first.

As I am corresponding with a few companies for license agreement now, I want to know if I can revise how my application is written hiring another patent lawyer.

I am not changing my invention at all. I just want to revise how the invention is described and claims are structured.

I once read in a thread in this forum that changing application might invalidate the application itself.

Can someone please give me some advise?

[George White]

While no new matter can be added to that application, you could work with someone to develop a whole new claim set that can be swapped for the original claim set in a preliminary amendment. If it is missing detailed support for some of the claims you would like to file now, another option is to treat this one almost as if it were a provisional. A continuation-in-part could be filed getting priority from this one.

--George

[bleedingpen]

If you don't have any 102 issues, you can expressly abandon the recently filed one and file an entirely new application. 

[davekorpi]

Well.. This is not too uncommon I must say.

Why don't you consider filing a provisional patent? Write all of the elements of your existing non-provisional and take advantage of being able to extend your provisional for 24 months. Call me if you need help at 831-455-0418

Search Google for Provisional Patent Video Course to see some ideas as well.

Thanks,

Dave

I have filed a non-provisional patent application two months ago.

However, I think my patent lawyer did a horrible job.

On the first draft, I could find many loop holes that even an elephant could pass though.

For example, claim 1 had three different specifications all written into together and even a very specific detail for size and gab that I only related to describe the benefit of the invention was written into claim 1. So, anyone could dodge infringement by not using that specific size and gab.

We went through revision process a couple of times but it just took so long for each revision to be done. So I went ahead and filed the application to have the protection first.

As I am corresponding with a few companies for license agreement now, I want to know if I can revise how my application is written hiring another patent lawyer.

I am not changing my invention at all. I just want to revise how the invention is described and claims are structured.

I once read in a thread in this forum that changing application might invalidate the application itself.

Can someone please give me some advise?

[Paskran]

George, studying preliminary amendment I found that the amendment filed within 3 months from original filing date would not be disapproved. Can you tell me how critical it is to file within 3 months? I don't think I can file the amendment by then.

Dave, can you please explain how I can file provisional after non-provisional and extend the provisional for 24 months?
I don't understand how that is possible.

Thank you for all the responses.

[patentsusa]

I would either file a preliminary amendment or file a continuation with new claims.  What exactly did you read about three months?  It will take a lot longer than that for an application to get examined.  Maybe there is some term addition rule but that is a small issue compared to lousy claims.  You should also sit down with an attorney and make sure you are interpreting your existing claims correctly.  They may not be as bad as you think. 

[Yak]

George, studying preliminary amendment I found that the amendment filed within 3 months from original filing date would not be disapproved. Can you tell me how critical it is to file within 3 months? I don't think I can file the amendment by then.

I believe George is referring to MPEP 714.04 para. IV.
"(3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
(i) Three months from the filing date of an application under § 1.53 (b);
(ii) The filing date of a continued prosecution application under § 1.53 (d); or
(iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application."

Dave, can you please explain how I can file provisional after non-provisional and extend the provisional for 24 months?
I don't understand how that is possible.

Dave may be referring to the USPTO announcement that they would be implementing a pilot program aimed at trying to provide inventors with some additional options with respect to moving from a filed provisional patent application to a nonprovisional patent application. The program is the Extended Missing Parts Pilot Program that will effectively provide a 12-month extension to the existing 12-month provisional application period, providing applicants additional time to find financial help, evaluate a product's worth in the marketplace or further develop the invention for commercialization.  According to the USPTO notice, applicants wishing to participate in the pilot program must file a nonprovisional application within twelve months of the filing date of a provisional application, directly claim the benefit of the provisional application, and submit a certification and request to participate in the program with the nonprovisional application. 

You should also sit down with an attorney and make sure you are interpreting your existing claims correctly.  They may not be as bad as you think. 

I agree with this comment.  It is possible the independent claims may be overly narrow.  However, it is also possible that given the current state of the art, that the only non-obvious novelty to your invention is the particular specifics included within the claim. 

[Paskran]

I believe George is referring to MPEP 714.04 para. IV.
"(3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
(i) Three months from the filing date of an application under § 1.53 (b);
(ii) The filing date of a continued prosecution application under § 1.53 (d); or
(iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application."

And, can you explain how this would affect my preliminary amendment?

You should also sit down with an attorney and make sure you are interpreting your existing claims correctly.  They may not be as bad as you think. 

I agree with this comment.  It is possible the independent claims may be overly narrow.  However, it is also possible that given the current state of the art, that the only non-obvious novelty to your invention is the particular specifics included within the claim. 

Well, I can assure you that is not the case. It was like, in the patent application for starbucks cup holder, specifying the height of cup holder as 3 inches so that anyone producing the cup holder with height longer or shorter than 3 inches could dodge the infringement.
Fortunately I was able to remove the specific numbers through revision process. However, I am still not confident with my application.
He was a patent lawyer for over 30 years.

Is "Sitting down with an attorney" a metaphor for direct phone conversation or a real life face-to-face meeting?
I never expected that I would have such an easy access to my lawyer and I did not have one before.

[klaviernista]

And, can you explain how this would affect my preliminary amendment? . . . .

In most cases, it doesn't.  You should try to file a PA as early as possible.  But in these days of electronic filings, a PA can be successfully filed quite close to when an examiner picks up the case.  In the rare instance that your PA is not entered before the examiner picks up your case, you can traverse the OA as being based on the wrong claims.  As long as you can show that the amendment was filed before the OA issued (use your PA filing receipt), your chances of success are very high.

FWIW, I have filed a PA 1 day before a first OA issued, and had it entered.  I have never had a PA denied entry because it was filed more than 3 months after the filing date

[klaviernista]

Is "Sitting down with an attorney" a metaphor for direct phone conversation or a real life face-to-face meeting?
I never expected that I would have such an easy access to my lawyer and I did not have one before.

Either.  The point is to talk to a licensed patent attorney.  As you no doubt have realized, some of us are better than others.

[khazzah]

It is possible the independent claims may be overly narrow.  However, it is also possible that given the current state of the art, that the only non-obvious novelty to your invention is the particular specifics included within the claim. 

Well, I can assure you that is not the case. It was like, in the patent application for starbucks cup holder, specifying the height of cup holder as 3 inches so that anyone producing the cup holder with height longer or shorter than 3 inches could dodge the infringement.

All that tells me is that the claim is narrow and easy to design around. It doesn't say that the patent attorney was off-base in his assessment that such narrow features were necessary to avoid the prior art.

I don't know how much experience you, as an inventor, have with patents. It might be that you have a preconceived idea of what particular words mean, and you think they describe your invention but not other things, where the patent attorney, with his years of experience, understands how that same words also describe lots of other things. In such a case, he would write a narrower claim than you were thinking of. 

[patentsusa]

I believe George is referring to MPEP 714.04 para. IV.
"(3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
(i) Three months from the filing date of an application under § 1.53 (b);
(ii) The filing date of a continued prosecution application under § 1.53 (d); or
(iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application."

And, can you explain how this would affect my preliminary amendment?

This section basically says that a preliminary amendment can be refused if the examiner was in the process of preparing an Office Action.  If you file a preliminary amendment soon enough, it is not likely to be refused.  I wouldn't lose sleep over this section.

If you have a high budget, filing a continuation and prosecuting two applications may not be a bad idea.  The more patents you have, the more likely you will have something enforceable.  Contingency fee litigators and potential licensees will prefer to see multiple patents and would like to have a continuation that is "alive" and can be possibly be molded to cover infringers that show up after the first patent has issued. 

If your budget is tight, and your specification supports broader claims, you may even want to wait until you receive an office action before deciding what to do with the claims.  It is sometimes easier to obtain allowance of broader claims after you get the examiner to allow narrower claims.

It sounds like the claims may be narrower than you like but the claims have to be drafted after taking the prior art into account.  Also, the first Office Action is almost always a rejection.  It isn't a bad strategy to start with some claims that are narrower, then try to get more in a broadening continuation. 

Also, if any one claim is infringed, the patent is infringed.  There is an "or" between each claim.  Perhaps some claims are broader than others.

Yes, there are attorneys who will spend time with you.  If you went to a big firm and had a small budget, they would want to minimize the amount of time they spend with you. 

[Paskran]

All that tells me is that the claim is narrow and easy to design around. It doesn't say that the patent attorney was off-base in his assessment that such narrow features were necessary to avoid the prior art.

I don't know how much experience you, as an inventor, have with patents. It might be that you have a preconceived idea of what particular words mean, and you think they describe your invention but not other things, where the patent attorney, with his years of experience, understands how that same words also describe lots of other things. In such a case, he would write a narrower claim than you were thinking of. 

Let me put it this way.
My invention employs an implementation method ABC which, based on patent search and internet search, no prior art has ever employed and is the essence of the invention.
And I added additional explanation that, using implementation method ABC, a specification XYZ can be as small as 1 inch to describe the benefit of my invention.
Of course, YXZ doesn't have to be 1 inch.

Then the claim 1 on the first draft stated that the invention employs the implementation method ABC and XYZ is 1 inch.
Anyone using the invention making XYZ other than 1 inch could have avoided infringement. It was just too obvious.

This section basically says that a preliminary amendment can be refused if the examiner was in the process of preparing an Office Action.  If you file a preliminary amendment soon enough, it is not likely to be refused.  I wouldn't lose sleep over this section.

If you have a high budget, filing a continuation and prosecuting two applications may not be a bad idea.  The more patents you have, the more likely you will have something enforceable.  Contingency fee litigators and potential licensees will prefer to see multiple patents and would like to have a continuation that is "alive" and can be possibly be molded to cover infringers that show up after the first patent has issued. 

If your budget is tight, and your specification supports broader claims, you may even want to wait until you receive an office action before deciding what to do with the claims.  It is sometimes easier to obtain allowance of broader claims after you get the examiner to allow narrower claims.

It sounds like the claims may be narrower than you like but the claims have to be drafted after taking the prior art into account.  Also, the first Office Action is almost always a rejection.  It isn't a bad strategy to start with some claims that are narrower, then try to get more in a broadening continuation. 

Also, if any one claim is infringed, the patent is infringed.  There is an "or" between each claim.  Perhaps some claims are broader than others.

Yes, there are attorneys who will spend time with you.  If you went to a big firm and had a small budget, they would want to minimize the amount of time they spend with you. 

patentsusa, thank you for your advise but I would shamelessly ask for a little bit more.

As briefly described above, my invention is for implementation method ABC which consists of three steps, step A and B and C.

Step A is the essence of this invention while step B and C are to be used together for the best and complete implementation.
However, the goal can be also somewhat awkwardly accomplished by using step A only.

But my patent application has all these steps A, B, C stated in the claim 1.
My concern is obvious. I am concerned that companies would use only step A and I wouldn’t be able to go after them.

What would you advise on such case?

[Isaac]

However, the goal can be also somewhat awkwardly accomplished by using step A only.

Did you enable this method of accomplishing the goal in the specification.   If not, then you needn't bother with any new claims. 

If your A only method is enabled and described, then file a preliminary amendment with new claims.   Perhaps if you include step A in an independent claim and steps B,C in one or more dependent claims you can avoid a restriction requirement.

[patentsusa]

Is step A on its own novel and non-obvious over the prior art?  If so, the ideal claim set would have one claim to A, with B and C being dependent claims or ABC could be an additional independent claim.

Assuming that the specification supports A on its own, and doesn't imply that it is always necessary to have A, B, and C together, you can fix this now or you can fix it later.  You can fix it now with a preliminary amendment.  Or you can fix it later, maybe even after receiving a Notice of Allowance, in a continuation.  If you are not sure if the specification supports A on its own, talk to a patent attorney.

I would recommend you start by asking your existing patent attorney why "A" wasn't claimed separately in an independent claim.  There may be a good reason.  If not, your existing patent attorney may be able add another independent claim more efficiently than a new attorney who would have to learn about your invention, read the application, and review the prior art.