Patent Question - Need help!
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From: Robert Baer on 29 Apr 2010 23:44 mpm wrote: > What's the best way forward? > > Our situation: We filed a US Utility Patent App (Jan 2009). > We now realize a couple of the Claims are much too narrow and we want > to broaden them. > > Can we just amend the Claims, or should we file a Continuation-in- > Part, or just a whole new patent? > We'd rather not lose the Jan 09 filing date, so a new patent would be > our last option. > > We do not intend to add any new matter to the application, just modify > the claims. > We have been very careful to construct the modified Claims so as not > to add any new material. > > Separately, we do have additional matter to add, but would do that via > a Continuation-in-Part application. > > Anyone here have any experience with modifying Claims Section only. > It's been assigned to an Art Group, but not to an examiner yet. > > Thanks !!!! If it is still in the mill as you indicated, then a query to the present examiner may be the way to go.
From: mpm on 30 Apr 2010 08:11 On Apr 29, 10:44 pm, Robert Baer <robertb...(a)localnet.com> wrote: > mpm wrote: > > What's the best way forward? > > > Our situation: We filed a US Utility Patent App (Jan 2009). > > We now realize a couple of the Claims are much too narrow and we want > > to broaden them. > > > Can we just amend the Claims, or should we file a Continuation-in- > > Part, or just a whole new patent? > > We'd rather not lose the Jan 09 filing date, so a new patent would be > > our last option. > > > We do not intend to add any new matter to the application, just modify > > the claims. > > We have been very careful to construct the modified Claims so as not > > to add any new material. > > > Separately, we do have additional matter to add, but would do that via > > a Continuation-in-Part application. > > > Anyone here have any experience with modifying Claims Section only. > > It's been assigned to an Art Group, but not to an examiner yet. > > > Thanks !!!! > > If it is still in the mill as you indicated, then a query to the > present examiner may be the way to go.- Hide quoted text - > > - Show quoted text - Well, it has yet to be assigned to an examiner (after sitting at the USPTO some 16 months!!!) The USPTO moves very slowly. We did call the USPTO Help Desk and they told us to send in the new claims, and to clearly indicate old vs. new, and cautioned against against adding any new matter, etc... I was just trying to make certain we got the correct advice. For all I know, the help desk is outsourced to India or something.... It's too important not to follow-up and get the "real deal" from folks who have been there. The consensus appears to be that Claims can be narrowed, or broadend, at any time, including up to one year AFTER the patent issues. That brings up another important question: When the App publishes in July (i.e, the 18-month automatic publication), what will they publish? The original Claims, or the amended Claims (or both?). We much perfer they publish the modified Claims (or both) for several reasons I won't get into much detail here. But generally, issues dealing with marketability and discouraging others from trying to take advantage of certain too-narrowed claims (even though the Specifications clearly detail the Art, so that any subsequent issuing patent could probably be easily invalidated.) -mpm
From: PeterD on 30 Apr 2010 08:52 On Thu, 29 Apr 2010 18:58:30 -0700 (PDT), mpm <mpmillard(a)aol.com> wrote: >What's the best way forward? > >Our situation: We filed a US Utility Patent App (Jan 2009). >We now realize a couple of the Claims are much too narrow and we want >to broaden them. > >Can we just amend the Claims, or should we file a Continuation-in- >Part, or just a whole new patent? >We'd rather not lose the Jan 09 filing date, so a new patent would be >our last option. > >We do not intend to add any new matter to the application, just modify >the claims. >We have been very careful to construct the modified Claims so as not >to add any new material. > >Separately, we do have additional matter to add, but would do that via >a Continuation-in-Part application. > >Anyone here have any experience with modifying Claims Section only. >It's been assigned to an Art Group, but not to an examiner yet. > >Thanks !!!! And what did you patent attorney say to do?
From: mpm on 30 Apr 2010 15:35 On Apr 30, 7:52 am, PeterD <pet...(a)hipson.net> wrote: > On Thu, 29 Apr 2010 18:58:30 -0700 (PDT), mpm <mpmill...(a)aol.com> > wrote: > > > > > > >What's the best way forward? > > >Our situation: We filed a US Utility Patent App (Jan 2009). > >We now realize a couple of the Claims are much too narrow and we want > >to broaden them. > > >Can we just amend the Claims, or should we file a Continuation-in- > >Part, or just a whole new patent? > >We'd rather not lose the Jan 09 filing date, so a new patent would be > >our last option. > > >We do not intend to add any new matter to the application, just modify > >the claims. > >We have been very careful to construct the modified Claims so as not > >to add any new material. > > >Separately, we do have additional matter to add, but would do that via > >a Continuation-in-Part application. > > >Anyone here have any experience with modifying Claims Section only. > >It's been assigned to an Art Group, but not to an examiner yet. > > >Thanks !!!! > > And what did you patent attorney say to do?- Hide quoted text - > > - Show quoted text - We don't yet have a patent attorney hired for this project.!! One of our (minor) partners is a former USPTO patent examiner. His advice was to file a new patent. We're not going to do that, since it jeopardizes our Jan 2009 original filing date. That leaves only a) modifying our existing Claims, which does present certain pitfalls, and/or b) filing a Continuation-in-Part application. This really isn't that complicted - responders here are making a mountain out of a mole hill. The only question I have, really, is whether anyone here has direct experience with modifying Claims while the Application is pending (meaning, an examiner hasn't even been assigned by the USPTO yet, even though the App has been sitting there for 16 months.) I want to know if we can just MODIFY the Claims - (by broadening 1 of the Independent Claims), and leave the rest of the entire application alone.
From: Don Lancaster on 24 May 2010 23:35 On 4/29/2010 6:58 PM, mpm wrote: > What's the best way forward? > > Our situation: We filed a US Utility Patent App (Jan 2009). > We now realize a couple of the Claims are much too narrow and we want > to broaden them. > > Can we just amend the Claims, or should we file a Continuation-in- > Part, or just a whole new patent? > We'd rather not lose the Jan 09 filing date, so a new patent would be > our last option. > > We do not intend to add any new matter to the application, just modify > the claims. > We have been very careful to construct the modified Claims so as not > to add any new material. > > Separately, we do have additional matter to add, but would do that via > a Continuation-in-Part application. > > Anyone here have any experience with modifying Claims Section only. > It's been assigned to an Art Group, but not to an examiner yet. > > Thanks !!!! The odds are utterly overwhelming that your patent is now and will remain worthless. Put the money into your state lottery instead. Your odds of success are vastly higher. <http://www.tinaja.com/patnt01.asp> -- Many thanks, Don Lancaster voice phone: (928)428-4073 Synergetics 3860 West First Street Box 809 Thatcher, AZ 85552 rss: http://www.tinaja.com/whtnu.xml email: don(a)tinaja.com Please visit my GURU's LAIR web site at http://www.tinaja.com
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