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Author Topic: Best place to put improvements  (Read 2147 times)

fb

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Best place to put improvements
« on: 10-03-11 at 07:43 am »

If an NPA is being drafted now for a core invention plus a few embodiments, and if many many more improved embodiments have since been created, should the new embodiments be placed in the NPA last-minute? Or should they be filed separately?

The goal is to anticipate and bar other inventors from doing their own improvements, which they will do instantly once they see the core invention.
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JimIvey

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Re: Best place to put improvements
« Reply #1 on: 10-03-11 at 10:27 am »

Well, to the extent the improvements are preferred implementations of the base idea, you HAVE to include them as best mode.  Though, there is some question as to whether best mode is still required under the AIA.  Until I've studied the issue further, I'm not changing my recommendations re best mode.

Best mode issues aside, I'm not sure it matters all the much. 

Regards.
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James D. Ivey
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Re: Best place to put improvements
« Reply #2 on: 10-04-11 at 11:04 am »

Not preferred, just alternative.

This being the case, if 10 other embodiments now exist on paper, putting them into the current app will expand the spec. But, putting only some of those 10 into the current app, and some of them into a new separate app, allows some of them to be kept secret for many years if they are non-published and non-foreign. Then, when time/money/need allow, the separate new app can be CIP'd/published/CON'd.
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NJ Patent1

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Re: Best place to put improvements
« Reply #3 on: 02-16-14 at 12:19 am »

Hmmmm.  Not preferred. Just abandoned, surpressed, or concealed "alternative" embodiments of "the invention".   Absent details you obviously can't provide here, sounds like "walking brain fharts" to me.  Didn't you capture "the invention" alredy?  OK stuff happens.  Send draft claims then later, after client OK, snd draft  app to client, they come back with "well, couldn't we do this or that too?" Totally  blowing well-concieved claim strategy out of water.  We've all been there and done that.  As it is was said on the improptu drag strips in 60s: "run what ya brung" (i.e. man up).  Tough to hit a moving target.  IMO file claims to "the invention", then as many apps with Jepson claims as client will pay for.  I don't file a lot of Jepsons.  But I don't diss them either (promises by another here to screw me in court notwithstanding - I occasionally file Jepson claims.  Bring it on dude!).  OK seriously, I repeat; didn't you captutre "the invention" in the original app?  Just file a bunch of CIPs - after the retainer checks clear.   
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JimIvey

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Re: Best place to put improvements
« Reply #4 on: 02-17-14 at 01:32 pm »

While the language to which NJP1 alludes is from 102(g) which is no longer with us, I agree with the sentiment that it's never a good idea to play "hide the ball" in a patent application.  There are many ways in which leaving out stuff you know about can hurt you.  Best mode, the written description requirement, and 112p6 are a few examples.

One good patent is much more valuable than two with enforceability problems.  Just put all you know about into one application.

Regards.
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James D. Ivey
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Friends don't let friends file provisional patent applications.
 



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