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[Paskran]

I have filed a patent application for an invention and am currently working on license agreement with a potential licensee.
Meanwhile, I came up with an improved design that would enhance the product.
However, this improvement is, in my opinion, beyond the specification of my original patent application, thus not covered.
What kind of options do I have to protect my improved design before releasing it to the potential licensee?
I want to release it to them as soon as possible since this resolves their concern on my original invention.

Thank you for your help in advance!

[JimIvey]

What kind of options do I have to protect my improved design before releasing it to the potential licensee?

CIP (Continuation In Part) application, part new and part old -- or a new application for the non-obvious improvement.  Many don't recommend CIP applications.  The situations in which they help seem to be few and small, if there are any at all.

Regards.

[Yak]

I have filed a patent application for an invention and am currently working on license agreement with a potential licensee.
Meanwhile, I came up with an improved design that would enhance the product.
However, this improvement is, in my opinion, beyond the specification of my original patent application, thus not covered...I want to release it to them as soon as possible since this resolves their concern on my original invention.

Does the potential licensee want to have input regarding this improvement if it was based on a concern they presented?  Many times improvements based on an originally licensed invention will be addressed within the license.

CIP (Continuation In Part) application, part new and part old -- or a new application for the non-obvious improvement.  Many don't recommend CIP applications.  The situations in which they help seem to be few and small, if there are any at all.

Jim, why do many practitioners not like/recommend CIPs? 

[bleedingpen]

Jim, why do many practitioners not like/recommend CIPs? 

They shorten patent term and in a very hypertechnical sense, you can't gain anything with a CIP. 

For example:

parent app discloses
a
b
c



you come up with improvement d and want to file a CIP on it. 

So you write claim in a CIP

apparatus comprising a, b, c, and d. 


Guess what, you didn't get any benefit to priority since the parent doesn't disclose d, but you just shortened your patent term.

[Yak]

Jim, why do many practitioners not like/recommend CIPs? 

Guess what, you didn't get any benefit to priority since the parent doesn't disclose d, but you just shortened your patent term.

That is so plain, I feel kind of stupid for even asking.  Makes perfect sense though.  Thanks. Are there any reasons why an applicant would want to use a CIP?

[bleedingpen]

Jim, why do many practitioners not like/recommend CIPs? 

Guess what, you didn't get any benefit to priority since the parent doesn't disclose d, but you just shortened your patent term.

That is so plain, I feel kind of stupid for even asking.  Makes perfect sense though.  Thanks. Are there any reasons why an applicant would want to use a CIP?

Sure, to clean up a fatal specification issue when 102 issues may preclude you from doing so otherwise.

Also, Examiners don't bother determining where you have support in your CIP claims, so you can many times get a patent application to slide right through with the presumption of validity, though it is probably invalid. 

[bleedingpen]

Also you can always mix parent supported claims with CIP only supported claims to muddy the water a bit.

[JimIvey]

Are there any reasons why an applicant would want to use a CIP?

Well, let's say you had some allowed claims and wanted to pursue claims that remain rejected or feel you can improve upon those claims and that you also have a nifty new improvement you'd like to cover.

You could file a continuation application and a new, separate application -- or you could file one CIP.  You might face a restriction requirement, but you could move forward on both with a single application.

Somewhere we teased out exactly which sections of 102 would apply differently in a CIP.  I think the main benefit is avoiding the parent application (as published or as issued) as a 102(b) reference for the old subject matter.  Off the top of my head, I'm not sure there's any difference in 103 analysis regarding the CIP vs. a continuation and a separate new application.

Regards.

[khazzah]

We discussed CIPs here:
http://www.intelproplaw.com/ip_forum/index.php/topic,16587.msg83424.html#msg83424
In particular, we discussed scenarios in which a CIP might make sense to avoid a parent application being used as prior art.

[Yak]

We discussed CIPs here:
http://www.intelproplaw.com/ip_forum/index.php/topic,16587.msg83424.html#msg83424
In particular, we discussed scenarios in which a CIP might make sense to avoid a parent application being used as prior art.

Thanks

[Paskran]

Wow, big discussion following my question.
Yes, it was based on a concern they, potential licensee, raised.
Is it illegal or unethical to withhold the information from them until I have protection for it?
We have not signed on any agreement yet.

[Yak]

We discussed CIPs here:
http://www.intelproplaw.com/ip_forum/index.php/topic,16587.msg83424.html#msg83424
In particular, we discussed scenarios in which a CIP might make sense to avoid a parent application being used as prior art.

Thanks

Shows what I know, I asked this question on that thread and did not realize it had been responded to. Thanks double.

[bleedingpen]

Wow, big discussion following my question.
Yes, it was based on a concern they, potential licensee, raised.
Is it illegal or unethical to withhold the information from them until I have protection for it?
We have not signed on any agreement yet.

There is a line of federal circuit cases that generally says if you assign/license one patent in a continuation string, you have patent exhaustion in all of the other patents in that continuation string (i.e., you basically just sold them too).