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[Lotus]

A question about what is protected in a patent.

What can be protected in a patent? If you describe uses and application in the description of the invention in the patent but then don't specifically include then in the claims of the patent, are those uses and applications have any measure of protection?  Can someone use your invention without your permission for a use you describe in the patent but do not specifically mention in the Claims?    Can someone else write a patent for uses and/or application identified in your invention description but not specifically repeated in your claims? 

This could just be poor patent writing.  If it is truly problematic, is it possible to modify/revise your existing patent to add claims that are clearly discussed in the rest of the patent filing? 

We have an issue where someone has filed a patent for an "invention" that is clearly discussed in our patent but not specifically in the claims -- and it is use/application that we are preparing to exploit.

Thanks for your thoughts and comments on this.

[JimIvey]

What can be protected in a patent?

Whatever is described by the claims.  While the application is pending, the claims can be amended to cover anything adequately described in the rest of the application.

If you describe uses and application in the description of the invention in the patent but then don't specifically include then in the claims of the patent, are those uses and applications have any measure of protection? 

No, except that some claims might be broad enough to cover unclaimed implementation details and all other variations. 

Can someone use your invention without your permission for a use you describe in the patent but do not specifically mention in the Claims?   

Yes, except that some claims might be broad enough to cover unclaimed implementation details and all other variations. 

Can someone else write a patent for uses and/or application identified in your invention description but not specifically repeated in your claims? 

Not if your patent or application qualifies as prior art for the other application.  If they got the idea from your patent, then they can't get a patent because they didn't invention the subject matter of their patent.

If your patent/application do not qualify as prior art and they independently invented the same subject matter, then there's a procedure for sorting out who gets what claims.

This could just be poor patent writing.  If it is truly problematic, is it possible to modify/revise your existing patent to add claims that are clearly discussed in the rest of the patent filing? 

There's a reissue application for correcting errors in an issued patent.  However, you can't file a reissue application to broaden claims of your patent more than 2 years past its issue date.  At least I think that's still the law.

Regards.

[khazzah]

This could just be poor patent writing.  If it is truly problematic, is it possible to modify/revise your existing patent to add claims that are clearly discussed in the rest of the patent filing? 

There's a reissue application for correcting errors in an issued patent.  However, you can't file a reissue application to broaden claims of your patent more than 2 years past its issue date. 

You're right about the 2-year broadening window. You used the term of art "broadening". Just to clarify ... capturing subject matter that wasn't covered in the issued patent would be considered "broadening", right?

I'm certain that this is an example of broadening:
Issued patent: device comprising A, B, and C;
Reissue: device comprising A and B;   // broadening because C removed

What about this:
Issued patent: device comprising A, B, and C;
Reissue: device comprising D, E, and F.

Does it matter whether features D, E, and F are related to, somewhat related to, or completely unrelated to A, B, and C?

For example, what if D, E, and F could each be considered narrower versions of A, B, and C, respectively? Not broadening, since I stipulated "narrower"? Even if the words used in A/B/C makes the old claim look completely different than D/E/F in the new claim -- so that it's hard to tell whether one feature is "broader" than another?

[bleedingpen]

The test for whether a reissue is broadening is whether any product could infringe the reissued patent without infringing the originally issued patent.  It is a pretty restrictive test.