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[annonymousposter]

Hello,

what is the downside to filing an application, arguing it and losing, after it is published, and filing again, a more detailed application.    In this context, I lost because I was not detailed enough.  Now I refile with proper detail.  Will my old application be held against me?  Any other problems?

[MrSnuggles]

Your main downside will be that unless you file a continuation and claim priority to your earlier filed application, you will not be able to maintain the earlier filing date.  However, from the sounds of it, the earlier filed application may not have been enabling, so maybe you couldn't actually get a priority date on claims in your later application.

Your old application could be held against you under 102(b) if it was published more than a year before you filed the 2nd application.  In that case, it may act as a complete bar.  More details would be required to determine this.

[TataBox]

Your main downside will be that unless you file a continuation and claim priority to your earlier filed application, you will not be able to maintain the earlier filing date.  However, from the sounds of it, the earlier filed application may not have been enabling, so maybe you couldn't actually get a priority date on claims in your later application.

Your old application could be held against you under 102(b) if it was published more than a year before you filed the 2nd application.  In that case, it may act as a complete bar.  More details would be required to determine this.

In this hypo, lets say the previous application is not enabling, and is now public.  This reference can then not be used as prior art, correct?


regards,

[JimIvey]

In this hypo, lets say the previous application is not enabling, and is now public.  This reference can then not be used as prior art, correct?

In theory, yes.  Prior art must be enabling to anticipate.

However, in practice, the standards for enablement of a pending application and prior art (even if it's a patent application) are different.  In short, the Patent Office likes to eat it's cake and still have it.

FWIW, inadequate specification is the toughest deficiency to overcome, in my opinion.  All fans of provisional applications should take note of that.

Regards.

[MrSnuggles]

A non-enabling reference can be used in a 103 rejection however, so it may still be a big roadblock.