Many times a company or individual will further develop a product / service / invention after a patent application is filed on the original invention. In that scenario the question arises whether the further development (new developments) can be added to the original patent application or otherwise be protected by the original patent application. Generally, new matter, not supported by the original application, cannot be added to a patent application after the application is filed. However, there are a number of ways to protect new developments after a patent applications filed on the original invention.
Covered by the Original Patent Application
The first step is to determine whether the new developments are covered by language in the originally filed patent application. Your patent attorney will generally attempt to draft a patent application that covers your idea and provides reasonably broad protection at the outset within the bounds of known prior art. Therefore your first application might be written in such a way as to cover the new development. If the original application was written broadly enough to cover the new developments a decision might be made that an additional patent application filing to cover the new development is not necessary.
It is sometimes a difficult decision whether to file a new application with the new development. It’s possible that the original patent application includes broad language that would cover the new development but the original application does not include specific details describing all the various components of the new development. In this scenario where the new developments are broadly covered but not specifically described, there is a risk that the broad language can not be used in a claim because of limiting prior art that requires more specific language not coving the new development.
If they novelty search was performed, the patent attorney may know well the boundaries of the prior art in order to assess whether or not the specific details of the new development are necessary in a patent application. However if a search was not performed it is oftentimes not known the prior art that the examiner will use, and therefore not known whether more narrow specific language would be necessary. In many cases, a new application can be pursued out of caution if the inventor/company determines there is a business case justifying the costs of a new application.
If it is determined that the original patent application does not cover the new development or that the new development has an importance such that additional details regarding the new development should be included in a patent application, then filing a new patent application should be considered. Often times such a new patent application will include much of the subject matter of the original application in addition to the new developments.
Subsequent Provisional Application
If the original patent application was a provisional patent application and the new development has come to light within one year of the filing date of the original patent application then there is an option to file the new development as a provisional patent application. It is possible that many provisional applications can be filed on new developments during one year beginning from the date of the first application filed.
On or before the one year anniversary of the filing date of the first provisional application, a non-provisional application can be filed with the subject matter of the first and one or more intervening provisional applications. In other words, all of the provisional application subject matter can be rolled into one non-provisional application as long as that one non-provisional application is filed within one year of the earliest filed provisional application. Alternatively, multiple non-provisional applications can be filed containing the subject matter of corresponding provisional applications.
Often times it is suggested to file a continuation-in-part (CIP) patent application so that the new subject matter can be included with the subject matter of the originally filed patent application while claiming priority to the original application. This can be done in the case that the originally filed patent application was a non-provisional application.
However many times filing a CIP application provides the inventor or owner with no additional benefits and shortens the patent term of the resulting patent, when compared to filing a new application that does not claim any priority to the original patent application.
CIP applications may be advisable when the application will include claims directed to both the original subject matter and separate claims directed to the original subject matter plus the new developments. Determining whether a CIP is appropriate is a complex issue that involves the determination of claim strategy and filing dates. Therefore you should work with your patent attorney to determine whether a CIP is the right strategy for you.
If the new development is new and patentable over the disclosure in the original patent application, then a new non-provisional application could be filed containing the new developments without claiming priority to the original application.
New matter not supported by the original disclosure in the original patent application generally cannot be added to that original patent application after the patent application is filed. However, as explained above there are numerous options for covering new developments that arise after a first patent application is filed on the original invention. You should consult with a patent attorney on whether the subject matter of your new development is covered by the original patent application filed, or whether filing a subsequent provisional, filing a continuation in part application, or filing a new non-provisional application is the appropriate path for your circumstance.