Patent Question - Need help!
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From: mpm on 29 Apr 2010 21:58 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 !!!!
From: dagmargoodboat on 29 Apr 2010 22:02 On Apr 29, 8:58 pm, 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 !!!! Just amend the claims--it's not that big a deal at this stage. Your patent guy will know how. -- Cheers, James Arthur
From: mpm on 29 Apr 2010 22:14 On Apr 29, 9:02 pm, dagmargoodb...(a)yahoo.com wrote: > On Apr 29, 8:58 pm, 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 !!!! > > Just amend the claims--it's not that big a deal at this stage. Your > patent guy will know how. > > -- > Cheers, > James Arthur- Hide quoted text - > > - Show quoted text - On this one - we're the patent guys!! (unfortuntely) We have a private equity partner coming on board so maybe we can finally fund this venture properly instead of trying to do everything ourselves to save money. But until that happens..... we get to wear the patent attorney hat too (some might say in addition to our tin foil hats!) I figured we could just modify the Claims. As I recall on my other patents, what you get is the result of a negotiation with the Examiner anyway... But I paid an attorney on the last one, -- this project's slushfund is eaten up pretty good by technical & hardware concerns (leaving no scraps for lawyers). If we did nothing and just got the narrow claim patent - it wouldn't kill us, but we'd be leaving a lot of the table. We'd like to remedy that --- WITHOUT wrecking or endangering our Jan 2009 app or filing date!! Lesson learned - we should have brought equity capital on board sooner. Thanks. -mpm
From: dagmargoodboat on 29 Apr 2010 22:24 On Apr 29, 9:14 pm, mpm <mpmill...(a)aol.com> wrote: > On Apr 29, 9:02 pm, dagmargoodb...(a)yahoo.com wrote: > > > > > On Apr 29, 8:58 pm, 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 !!!! > > > Just amend the claims--it's not that big a deal at this stage. Your > > patent guy will know how. > > > -- > > Cheers, > > James Arthur- Hide quoted text - > > > - Show quoted text - > > On this one - we're the patent guys!! (unfortuntely) > We have a private equity partner coming on board so maybe we can > finally fund this venture properly instead of trying to do everything > ourselves to save money. > But until that happens..... we get to wear the patent attorney hat > too (some might say in addition to our tin foil hats!) > > I figured we could just modify the Claims. > As I recall on my other patents, what you get is the result of a > negotiation with the Examiner anyway... > But I paid an attorney on the last one, -- this project's slushfund is > eaten up pretty good by technical & hardware concerns (leaving no > scraps for lawyers). > > If we did nothing and just got the narrow claim patent - it wouldn't > kill us, but we'd be leaving a lot of the table. > We'd like to remedy that --- WITHOUT wrecking or endangering our Jan > 2009 app or filing date!! > Lesson learned - we should have brought equity capital on board > sooner. You _must_ file an amendment. It's not a big deal, but you have to follow the procedure. You may not add new matter, or claim anything not taught by the specification. -- Cheers, James Arthur
From: dagmargoodboat on 29 Apr 2010 22:49 On Apr 29, 9:14 pm, mpm <mpmill...(a)aol.com> wrote: > On this one - we're the patent guys!! (unfortuntely) Best investment you'll ever make-- http://www.nolo.com/products/patent-it-yourself-PAT.html Buy it, read it. -- Cheers, James Arthur
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