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Patent Question - Need help!

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 !!!!

Reply to
mpm
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Just amend the claims--it's not that big a deal at this stage. Your patent guy will know how.

-- Cheers, James Arthur

Reply to
dagmargoodboat

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

Reply to
mpm

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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

Reply to
dagmargoodboat

Best investment you'll ever make--

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Buy it, read it.

-- Cheers, James Arthur

Reply to
dagmargoodboat

Actually, I find a lot of the NOLO stuff is out of date, and occasionally just plain wrong. For instance, I have one here that says you can file the app on legal size paper -- Nope!! Your link is for a 2009 update - perhaps it is much better, but really, most of these texts all read the same after a while. And I've probably read 90% of them, including the NOLO Press stuff. The TOC on the link 13-E sounds worthwhile, if it gets into any detail....

I'm sure the real bitch will be showing the modified Claims inline; would be easier to strike and replace..

Reply to
mpm

If it is still in the mill as you indicated, then a query to the present examiner may be the way to go.

Reply to
Robert Baer

Pressman, the author, updates this book constantly.

You can do that, or recite the amendment as "cancel claims 1-to-n, append claims (n+1)-to-xxx."

James

Reply to
dagmargoodboat

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

Reply to
mpm

And what did you patent attorney say to do?

Reply to
PeterD

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.

Reply to
mpm

That mole hill can quickly become a mountain come defense time. Don't dick around with 2nd hand forum advice, get direct profesional advice specific to your claim, really.

Dave.

--
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Check out my Electronics Engineering Video Blog & Podcast:
http://www.eevblog.com
Reply to
David L. Jones

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log.com- Hide quoted text -

Thanks.

I wasn't really asking about anything other than the mechanics of how to go about revising the Claims. We are in the best position to defend the patent.

I have some experience with "professional advice" and often (unfortunately) it isn't worth it. That said, at the rate the Patent Office is going, we still have a couple years to think about it! It will be that long before they even get to it. And apparently, you can modify the App at any time -- provided you don't add new matter (which we haven't, and won't).

We're just going to resubmit the Claims, and get on with life.

Reply to
mpm

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.

--
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@tinaja.com

Please visit my GURU's LAIR web site at http://www.tinaja.com
Reply to
Don Lancaster

Spell it out...zero is better than almost zero.

Reply to
Robert Baer

one: (928)428-4073

text -

Respectfully, I have to disagree. When the app publishes in about 8 weeks, I'll gladly explain why.

FYI - If anyone gets to here - revising Claims is remarkably simple. Strikethrough your old claims text, proceed each deleted with [DELETED] Submit your new claims, proceed each with with [NEW] Important: Do not re-use claim numbers. For example, if your original app ended at claim #19, start your new ones at #20.

Send (1) copy of original app marked up showing all your [DELETED] and [NEW] claims, with those words preceeding the respective modifications. Send (1) clean copy, (not marked up) showing your new claims, keeping the new numbering of course.

Submit with a completed Transmittal cover, and you're done. No charge.!!

I don't know yet which version publishes, the Original or the Revised Claims, or both?

Reply to
mpm

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