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[fb]

Any opinions on the difficulty of broadening claims through a re-issue?

[khazzah]

Any opinions on the difficulty of broadening claims through a re-issue?

You need to be more specific about "difficulty". Are you asking about the recapture doctrine?

[bleedingpen]

Any opinions on the difficulty of broadening claims through a re-issue?

recapture is obviously a big problem.

Easiest and most cost-effective way to broaden claims later on is to keep a continuation open at all times.  

[patentatt]

Easiest and most cost-effective way to broaden claims later on is to keep a continuation open at all times.

Right.

Reissues are very problematic for multiple reasons.

[fb]

I mean with regards to "is it predictably done". Current counsel is really reducing scope of the first claim, and I was looking for a "way out" later if I can't talk him into expanding it now.

[bleedingpen]

I mean with regards to "is it predictably done". Current counsel is really reducing scope of the first claim, and I was looking for a "way out" later if I can't talk him into expanding it now.

No broadening reissues are not predictably done.  The legal hurdles you have to overcome are difficult.

[Dazed-n-confused]

Current counsel is really reducing scope of the first claim, and I was looking for a "way out" later if I can't talk him into expanding it now.

Well, first off, if you're the client and you believe he's making a clear mistake in narrowing the claim, tell him to find another way to respond to the OA.

Alternatively, many people will take the "bird in the hand" approach of making a narrowing amendment to get (hopefully) a patent granted now with some scope (even if maybe narrower than desired), then file a continuation application before that more narrowly-claimed patent grants and try to re-argue the broader claims in the contin.  This is what bleedingpen is saying above.

[fb]

Well it's still the first draft... not filed yet, but nearing so. It's one of those devices that can operate with or without a container; I wrote "without" a container, and he changed it to "with" for the first claim. This is why I was also asking about a second, separate app for method claims which might cover this. Most people told me to just pay more to add methods to the current app.

Yes I'm the client but I'm assuming that counsel was operating according to how he felt after learning that the device had not been built yet; It's one of those devices like yellow sticky-notes, where once you think of putting adhesive on the paper itself, you don't have to build it to to see if it works. Besides, if I build it, it will become publlc within minutes.

I like the bird-in-hand followed by CON approach. I need those extra years of prosecution to get market penetration in case the whole thing collapses with obviousness.

[NJ Patent1]

fb:  You may wish to consider that your attorney has a reason for doing what they are doing.  "Take the money and run" may not be such a bad idea; keeping a CON on file as others have suggested above.