How long does it take to get a patent?

There are a number of factors that effect the time until you receiving a patent as explained below.

Patentability Searching:
First, if you choose to have a patentability search performed by our office, that generally takes 1 to 3 weeks to complete, depending on the volume of search results and the workload at the time.

Patent Application Drafting:
If we receive all the information about your invention before we start drafting your invention, on average it will take between two to four weeks to draft the application for your review. If shorter time frames are needed, we will strive to achieve a timeline that works with your schedule. In a past expedited circumstance, we were able to file an application within 2-4 days after receiving all the required information about the invention. The time frame within which we could draft a patent application depends on our present workload, the complexity of the invention, and the amount and type of information provided by the client before drafting begins, as well as the number of changes provided by the client after drafting begins. After the patent application is filed you will have “patent pending” status in the United States.

After Patent Application Filing
After filing, the length of time to patent grant depends on whether you begin with a provisional or a non-provisional patent application in the United States. If you begin with a non-provisional patent application, the U.S. Patent and Trademark Office (USPTO) will place your application in a queue to be examined by a Patent Examiner when the USPTO receives your complete non-provisional patent application.

The present (2019) average wait time until the USPTO provides us with the results of the Patent Examiner’s first substantive review and examination (average pendency to first office action) of the patent application is about 16 months. The average time it takes to obtain a patent from the patent office at this time is about 24.1 months or about 2 years. [See the current wait time statistics at the USPTO website [here] (best viewed with Internet Explorer or Chome)].

The actual amount of time it will take for your patent application to be examined, and if found allowable, to issue into a patent will vary. Some technical areas have a longer or shorter wait time because the USPTO groups patent applications based on the invention’s technology and assign patents to technology groups (known as art units) of examiners at the USPTO for examination. If one art unit has more patent applications in the queue than another art unit, then patent applications assigned to the art unit with relatively more patent application will wait longer for examination and ultimate issuance.

If you decide to file a provisional patent application, the patent office will not put your provisional patent application in a queue to be examined. Instead, a non-provisional patent application must be filed within one year of the filing date of the provisional application, in order to claim the benefit of the provisional application filing date. In the case that you file a provisional and then file a provisional on the one year anniversary date of the filing of the provisional, one additional year will be added to the times listed above. This is true because you have waited that 1 year to have the non-provisional application placed in a queue to be examined.

Prioritized Examination
The USPTO offers a prioritized examination (also known as Track One) for utility and plant patent applications for a limited number of patent application per year. To be considered for the prioritized examination, the applicant must pay additional fee to USPTO. Under the prioritized examination procedure the USPTO assigns a priority status to your application. The USPTO aims to get to a final disposition (allowance or final rejection) of your patent application within 12 months of the prioritized status being granted.

Patent Pending
While your patent application is pending (after the patent application is filed but before the patent is granted) you will have patent pending status. You are not required to wait until you obtain a patent to start exploiting (making, marking, selling, licensing, etc.) your invention. You can begin doing so after the patent application is filed, as long as the patent application fully describes and covers all the elements of your invention that you intend to disclose and use publicly.

Eric Waltmire Presenting on IP for Dupage’s REV3 Innovation Center

Rev3On March 11, 2014 at 6:30pm, REV3 Innovation Center of Dupage is hosting me for a presentation on Strategies for Protecting Intellectual Property: Innovation and Branding. Intellectual property plays a role in adding value to most businesses, whether through invention, branding, or the use of other creative works.

My presentation will help business owners, entrepreneurs, and inventors understand how patents and trademarks can be used to protect innovation and business branding. It will provide strategies for protecting intellectual property rights under various scenarios and funding circumstances. Sign up here to attend.

Particularly the presentation will cover the following.

Patents and Invention Protection:

  • What is patentable
  • Patent Searching
  • The U.S. Patent Application Process
  • When to maintain secrecy and when to publicize
  • Seeking Foreign Patent Protection
  • When not to seek a patent
  • When and how to rely on trade secret protection

Trademarks and Brand Protection:

  • Value of trademarks
  • Types of marks
  • Strategies for choosing legally strong marks
  • Proper trademark use
  • Strategies for relying on branding in the absence of patent protection

In addition, the presentation will discuss steps that are needed to obtain and maintain ownership over the intellectual property created by your company, its employees, and its contractors.

REV 3 Innovation Center
REV3 Innovation Center is an incubator and future co-working space in DuPage County. REV3 is focused on helping people and companies manufacture products, software, and technology to drive the third industrial revolution. One aim of REV3 is to provide facilities to allow companies to prototype, build, and assemble small and moderate scale product volumes.

If you are interested in getting involved with REV3, please contact me.

The presentation will be held at the Illinois Institute of Technology (IIT) – Rice Campus at 201 E. Loop Rd., Wheaton, IL 60189.

Please sign up to attend here:

How Do I Reduce Patent Costs?

PatentCostsReduceBelow are some steps that you can take to help reduce the cost for us to prepare a patent application on your behalf. These steps are not required as we can draft an application based on your requirements and information. However, by following the guidelines below you can assist in reducing patent preparation costs. See our separate article for general information about how much a patent costs.

Provide a Detailed Description of the Idea at the Start
It is important that you provide the most detailed written description of your idea. The written description should include drawings. The drawings can be hand-sketched. The written description should make reference to individual parts of the invention shown in the drawings. The drawings should have parts labeled by number. The written description should make reference to the parts by name and number.

Generally, short summaries or brochures do not provide sufficient details about the invention and how it works. If we have to request many details about the invention from the inventor, this adds time to the process and drives up the cost of preparing an application. Another scenario where we generally need to put forth a lot of effort to obtain details about the invention is when the inventor only orally describes the invention and we need to draft the application from the oral description.  When the inventors presents a clear and detailed description of the details of invention, its various functions, and the benefits of the invention as compared other inventions in the field, we are able to most efficiently prepare an patent application on the invention.

Start with a Complete Invention
When an inventor keeps inventing during the time when we are drafting the application, the cost of preparing the application can rise substantially. Description of the new features must be added. Sometimes various parts of the patent application need to be rearranged to account for the new developments. Often times drawings will have to be changed or new drawings created to include the new details not provided in the beginning. Adding details after the application drafting is underway generally takes more time, and generates more costs, than if the details had been provided at the beginning.

Provide a First Draft
We can often provide an example patent application that is in the field of the inventor’s invention. A template can also be provided for the inventor to start from to assist in developing a detailed description of the invention. If the inventor drafts a first draft based on a template provided, cost can be reduced. We can then take this first draft as a base and draft a patent application that meets our standards having all the appropriate language and detail.

The cost to prepare a patent application depends on many factors, however the above guidelines can help reduce the cost for us to prepare a patent application for you.

What is an Invention?

For our purposes, we will focus on patentable inventions. Abstract ideas cannot be patented but many ideas are implemented in a manner (an invention) that falls within what is patent eligible subject matter. There are four general requirements for an invention to be patentable (as a utility patent): (1) it must comprise patent eligible subject matter, (2) it must be new, (3) it must be useful, and (4) it must be non-obvious. Each requirement for a utility patent will be address below. Then the requirements for design patents and plant patents will be discussed.

Patent-Eligible Subject Matter
The subject matter of the invention must fall within one of the patentable subject matter areas set forth by Congress. Patentable inventions include the following: a process/method, machine, manufacture, or composition of matter, or any new and useful improvement thereof. The courts have stated that Congress had intended patentable subject matter to be very broad and may include anything under the sun that is made by man.

The invention must be new (e.g. novel). Patents are only granted on new inventions. Patents are designed to encourage inventing and the disclosure of inventions. Therefore if your invention has already been disclosed to the public in certain predefined ways, then you may be prohibited from obtaining a patent over your invention. A patent novelty search is designed to provide you with some information on whether your idea is new and therefore patentable.

However, an invention may be considered new even if the invention includes parts that are old and known. Many (if not most) inventions are an improvement on an old invention. Even the combination of old parts in a new way can be patentable. Similarly a new method of using a known device my be patentable.

A patentable invention must have a use or utility. This is the most easy element to satisfy. Unless the invention is only useful as landfill, the invention most likely is useful for something.

The invention must be non-obvious in view of the prior art (prior inventions and publications, among other things). The non-obviousness requirement is intended to ensure that the invention is sufficiently different or new to warrant patent protection. The non-obviousness requirement is not necessarily synonymous with the common understanding of the word “obvious.” The non-obviousness element is very circumstance dependent. Very small changes may be considered non-obvious. You should be sure to check with an patent attorney before concluding that your invention is obvious.

If your invention meets each of the above requirements, then the invention should be eligible for patenting, assuming all of the procedural requirements are met in filing and prosecuting a patent application.

Design Patents
The above requirements are for utility patents. The ornamental design of an article of manufacture may receive a design patent if it is new and original. Therefore like invention of a utility patent, the ornamental design can be protected if it is new and non-obvious. As design patent protection is narrow, even small changes in the ornamental design of an article may received design patent protection.

Plant Patents
Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

What is a Patent?

PatentA United States patent is a property right granted from the United States government giving the inventor the right to exclude(stop) others from making, using, offering for sale or selling the patented invention in the United States for a limited period of time (usually 20 years from the filing date).

A patent is a type of intellectual property. Other types of intellectual property include: copyrights that protect the expression of an idea, trademarks that protect product and service source identifiers (brands), trade secrets that protect information and other items that have business value and are not generally known.

A patent provides a time limited monopoly over the invention in exchange for disclosing to the public the details and manner of composition of the invention. The monopoly allows you to prevent others from benefiting from your inventive work without your permission. Therefore you may be able to charge more for your product or service that is protected by a patent, than would be possible if your product was not protected and competitors copied your product and competed with you.

This exchange of a monopoly for public disclosure, allows the science area of your invention to be advanced. During and after the time when your patent is in-force others can read about the details of your invention as described in your patent, which might spark other non-infringing ideas which will advance the art/science related to your invention. Therefore you benefit from the monopoly provided by the patent and the public benefits by understanding your invention which can advance related engineering and sciences.

Maintenance fees must be paid by the patent owner at certain intervals in order to keep the patent from expiring before the patent term ends.

A U.S. patent does not provide protection outside of the country. However a U.S. patent can be used to prevent the importation of infringing products in to the United States from abroad. Foreign patents are needed to receive protection in chosen foreign countries.

Patent Protecting Your Invention When Launching a Kickstarter Campaign

CF3The problem is that you need to publicize your invention on Kickstarter or Indiegogo or another crowdfunding platform to have money to make and launch your invention, but patent law encourages you to file a patent application before you make your invention public. If you are seeking money to develop and launch your invention, you might not have any money or you might not want to spend any money on a patent attorney before you know whether your product will be commercially successful. On the other hand, a number of Kickstarter campaigns claim the product is patent pending. Here’s how to best protect your ability to obtain a patent on your invention when launching a Kickstarter, or Indiegogo, or other similar crowdfunding campaign.

Crowdfunding Patent Cheat Sheet
For those that don’t want to read this whole article here’s the short answer:

Step 1: Patent Searching. Patents are only granted on new inventions. Just because you don’t see your proposed product on the market, doesn’t mean its new. Many products are described in old patent documents at the patent office, but are not on the market. Hire a patent attorney to do a patent search. If you can’t afford that, do your own patent search to see if your invention is already described in a prior patent or patent application. If doing it yourself, you can word search at the U.S. Patent Office website or you can search by patent class or you can search at Google Patents.

Step 2: Draft and File Provisional Patent Application. If the patent search is clear, hire a patent attorney to draft a patent application on your invention before you launch it on Kickstarter. If you can’t afford a patent attorney, draft and file your own provisional patent application after reading a book or two on patent drafting, like Patent It Yourself.

Step 3: Launch your Campaign. Hopefully it is successful. Carry out the project plan. Begin selling your product and making money.

Step 4: File a Non-Provisional Patent Application. If your product is successful and/or you want to continue seeking a patent, you must file a non-provisional patent application within one year of the filing of the provisional patent application. Use some of the money you made selling the product to hire a patent attorney to do this. DIY on this step is very difficult, harder than any of the of the prior steps. It’s unlikely (not impossible, but unlikely) that you’ll be able to write strong and broad patent claims that will provide you with any value in a resulting patent.

Late to the Party: If you already launched your campaign without filing a patent application, you likely can still file a patent application within one year of your first going public, selling, or offering for sale of the invention. But, you should not rely on the one year grace period if you can avoid it.

Here’s the detailed explanation.

Patent Searching: Is your Invention New?
The first step in the patent process is almost always performing a patent novelty search to see if your invention is new. The patent office only grants patents on inventions that are new.

But you are planning to launch a Kickstater campaign. Kickstarter is for creative projects. So, you don’t have to worry about whether your invention is new or not, right? Not so. You may have done market research that shows there is nothing like your invention on the market. But there are a lot of uncommercialized products described in patent documents that you won’t find on the market.

You can hire a patent attorney to perform a search or you can do it yourself. Patent searching takes time and study to get good at. However, as between doing no search and searching yourself, searching yourself is worth a try.

You can word search at the U.S. Patent Office website. However, presently only patents going back to 1976 are word-searchable at the patent office website. Patents older than 1976 are not word searchable at the patent office website. But all patents are searchable by patent class. You can also search through other search tools, such as Google Patents.

If the search results look good, you can move to the next step: preparing and filing a patent application.

Patent Application Stage
There are two questions at this stage: (1) do I hire a patent attorney or do I do it myself and (2) do I file a provisional or a non-provisional patent application?

Provisional v. Non-Provisional Patent Application
If you must draft and file a patent application yourself, then you should file the application as a provisional patent application (see this article on provisional vs. nonprovisional patent applications). This is true because the USPTO is less likely to object to your submission (because there are lesser requirements for provisional applications) and because you will want to have a patent attorney draft and file a non-provisional patent application on your invention within one year. If you can hire a patent attorney, then the decision whether to go provisional or nonprovisional may depend on some of these factors: (1) whether you anticipate further developing your product, (2) whether your need a patent sooner/faster (non-provisional) or are ok with delaying one year (provisional), and (3) whether you need your upfront cost to be as low as possible (provisional). Here’s how to decide between a provisional and a nonprovisional patent application.

Hire A Patent Attorney v. DIY Patent Drafting
It is recommended to hire a patent attorney. It is hard for someone to write a good patent application on their first try (see the problems that can arise in writing your own patent application).

However, you are seeking funding through Kickstarter, so there’s a chance that you don’t have any money to hire a patent attorney. Or maybe you could afford it, but you take a business risk and allocate such money to other portions of the project. If for whatever reason you decide to skip hiring a patent attorney, you should take a shot at drafting and filing your own provisional patent application, because it has a chance of being better than doing nothing.

There are two approaches to drafting your own patent application. The first is to take whatever technical description you already have written along with any drawings and file them as a provisional patent application along with the provisional application cover sheet. The patent office will not review the content of your provisional patent application and therefore will accept just about anything as a provisional patent application (e.g. scientific papers, marketing sheets, back of the napkin sketches). This first option to just file whatever you have already written is the easiest and fastest option but the worst in terms of your chances of the provisional application “holding up” and being worth anything later.

The better second option is spend some time studying the requirements and form of a proper patent application. You might seek out patent self help books for this purpose, such as Patent It Yourself. These books are not a substitute for hiring a patent attorney, but if you must do it yourself, these resources are a good start so you will have a better chance of writing an application that might be worth something. Again there’s no guarantee that the application you write will hold up, but its possibly better than doing nothing.

Launch Campaign
Now you can launch your campaign. Hopefully it is successful. Carry out the project plan. Begin selling your product and making money.

Non-Provisional Patent Application
After the provisional patent application is filed and your project is launched, if the project is successful and you want to continue to seek patent protection, you will need to have a non-provisional patent application written and filed before the one year anniversary of the filing date of the provisional application. For this you certainly want to hire a patent attorney. Hopefully sales of your product have generated revenue, some of which you can use to hire one.

On the other hand if the project doesn’t take off and you don’t want to continue in the patent process, then you can do nothing and let the provisional patent application expire.

I Launched Without Filing a Patent Application, What can I do?
If you already launched your Kickstarter campaign without first filing a patent application, you may still be able to file. While patent law after the America Invents Act still has a one year grace period for certain circumstances, you should not rely on the grace period if you can avoid it. However, if you’ve already gone public with your invention, you may still file a patent application within one year of first going public, selling, or offering the invention/product for sale.

The above guide provides the you with options, depending on the available resources, to patent protecting your invention when launching a crowdfunding campaign for products (and certain types of services).

Mercedes Successful Invalidating Driver Sleepiness Detection Patent

USPat6313749_Fig1The case of Ibormeith IP LLC v. Mercedes-Benz USA, LLC, Dkt. No. 2013-1007 (Fed. Cir. Oct. 22, 2013) is another case where means-plus-function claims were found invalid for lack of an adequate algorithm/structure disclosed in the description of the patent.

Ibormeith sued Mercedes alleging that Mercedes vehicles having an Attention Assist feature infringed U.S. Patent No. 6,313,749. The ‘749 patent is titled, “Sleepiness Detection for Vehicle Driver or Machine Operator.” The ‘749 patent is directed to monitoring conditions affecting or behavior reflecting a vehicle driver’s sleepiness. Then issuing a warning to the driver before driving is unduly impaired.

Sleepiness Warning
The patent discloses monitoring that takes into account sleepiness factors including, as summarized by the court, “natural body-clock (circadian rhythm), the magnitude and number of corrective steering action the driver is taking, the cabin temperature, the monotony of the road, and how long the driver has been driving.” The factors are “individually weighed, according to contributory importance, and combined in a computational decision algorithm or model, to provide a warning indication of sleepiness.”

Means Claims Language
Claim 1 provided this means clause: “…computational means for weighting the operational model according to time of day in relation to the driver or operator circadian rhythm pattern(s) and for deriving, from the weighted model, driver or operator sleepiness condition and producing an output determined thereby…” Claim 9 provided this means clause: “…computational means for computing steering transitions and weighing that computation according to time of day, to provide a warning indication of driver sleepiness…”

Lack of Structure In Specification
The court recited the rule for means-plus-function clauses: “For a claim to be definite, a recited algorithm, or other type of structure for a section 112(f) claim limitation, need not be so particularized as to eliminate the need for any implementation choices by a skilled artisan; but it must be sufficiently defined to render the bounds of the claim—declared by section 112(f) to cover the particular structure and its equivalents—understandable by the implementer.”

However the Federal Circuit found that these means clauses if the ‘749 were not tied to a structure or defined with sufficient particularity in the specification. As a result the requirements of 35 USC 112, sixth paragraph were not complied with and the claims were held invalid.

The specification provided a formula in table 10 that provided “sleep propensity algorithm – definition “S mod = S circ + S zerox + S rms + S light + S temp + S sleep + S road + Strip.” However, Ibormeith’s expert provided that the algorithm was not based on a simple adding of already weighted inputs. This approach was likely taken to insure that the claims were interpreted broadly enough to cover Mercedes vehicles.

The court recognized that under Ibormeith’s interpretation a person of ordinary skill in the art would need to devise his or her own method for determining driver drowsiness based on the factors. The court concluded that “[a] description of an algorithm that places no limitations on how values are calculated, combined, or weighted is insufficient to make the bounds of the claim understandable.”

Drafting Tips: Provide at Least one Non-Means-Plus-Function Claim Set
This is another in a string of cases where the court has found that means-plus-function claims are invalid in technology related patents where the description fails to provide a sufficiently detailed explanation of the algorithm/structure corresponding to the means clause in the patent. It is better to avoid means-plus-function based claim limitations in at least one claim set, if any. Drafting at least one claim or claim set not including a 112(f) or 112, sixth paragraph claim avoids indefiniteness problems associated with means-plus-function claiming.

Protecting Unpatentable Inventions

Not every invention is patentable. Yet, inventors and companies may decide to proceed to market with an unpatentable products or services. This article will explore other intellectual property protection options that exist beyond patents.

Build a Brand
In many cases customers purchase a product or service because it is provided under a recognized brand name. This may be true regardless of whether the product or services is patented. Therefore you may decide to choose a strong trademark for the product or service. Then you can market that trademark so that customers associate that trademark with the type of product or service you are selling. The goal is to build a brand so that consumers will seek out that brand when purchasing your goods or services. In this way customers will choose your brand of product, even if there are competitors selling the same or similar products/services.

The brand can be built around a product/service name or around a company name or both. If the names used in your branding are unique (they should be), then you can seek to obtain a federal trademark registration which will provide additional benefits. The trademark rights built around your product or service will not prevent competitors from copying the product or service. Yet it will prevent them from using your trademark or a similar mark. The strategy of building a brand is designed to draw customers to your brand regardless of the competition.

It may be possible to protect your invention under copyright law. However, copyright protects the expression of an idea but not the idea itself. Therefore if you write software creating a new type of application, copyright protection will protect you from direct copying of the software. But it cannot prevent others from copying the idea and writing their own implementation of that idea. The copyright protection extends somewhat beyond identical copying, but the point is that copyright provides narrow protection of the expression of an idea as compared to patents.

Trade Secret
When an invention cannot be patented, it might be protectable as a trade secret. Not all inventions are capable of being protected as a trade secret. A trade secret may generally be understood as something that has economic value, is not generally known, and is subject to efforts to maintain it as a secret. Therefore, if the invention is embodied in a product that is distributed to the purchasing public and whom can reverse engineer or discover the invention by inspecting the product, then it is unlikely that the invention can be protected by a trade secret. However, if the invention is capable of being maintained in secrecy, then trade secret protection might be relied on.

It is possible to draft a contract that requires the party receiving the invention to keep it confidential and not disclose it to others (similar to an NDA). This is more likely to occur with business to business transactions where the sale involves significant money or resources to execute or implement. The other party would need to agree to such a confidentiality term.

This does not work with consumer goods because the product often needs to be marketed broadly and public ally where the invention details may be disclosed.

There are a number of alternative approaches to protection when your invention is not patentable. While each alternative is not a complete substitute, the options above may provide some protection when proceeding with a product or service in the absence of a patent, depending on the circumstance.

Problems with Requiring an NDA Before Pitching Your Invention

At the outset of product / service development there is often a tension between the desire to keep the invention confidential and the desire to know whether there will be sufficient interest in the invention from customers or those who might make and sell it to customers. Therefore the issue arises as to how to protect an invention early in the product development, partnering, or sale process.

There are three ways of proceeding: (1) first file a patent application before any disclosures to third parties, (2) disclose to a third party only after obtaining a signed nondisclosure agreement (NDA), (3) disclose without an NDA or application filed and hope for the best. The first is the most preferred and the last approach is not recommended.

Difficulties with NDAs Before Sales Pitch
Disclosure of an idea to another party that is under a written obligation (e.g. NDA) to maintain that idea in secret, generally will not be considered a public disclosure that would negatively impact your patent rights. However, if you are attempting to approach a company to (1) convince them to make and sell your product and give you a royalty or (2) to sell a product you will make, it may be very difficult to get them to sign an NDA or other legal agreement before you tell them anything about your invention.

This is true because, unlike when you are approaching an engineering firm, here you are not offering to pay the other party any money. You are essentially saying, “I have a great product or service that will make you money, but before I tell you anything about it, I need you to sign this legal agreement.” This is a difficult selling approach.

If they sign that agreement and then find out that your product is very similar to something they are already working on this creates a problem because you may assert that when they come out with that product that they copied your invention. Or if they just don’t like the idea, they are still encumbered by the NDA for any further developments. It would seem that there’s little incentive for them to sign an NDA with you, especially if they receive many similar solicitations from other inventors or companies. Therefore, if your sales pitch starts by requiring the recipient to sign a legal agreement before further discussions, you may not have very many takers.

If you do get the other party to sign an NDA, you should know that NDA’s are not self enforcing. Therefore, if the other party breaches the NDA it will be necessary for you to spend money in the form of legal fees to enforce the agreement or to recover damages. As such, you should investigate the trustworthiness of the other party.

Patent Application Filed First
The first option, having a patent application filed first, is the safest approach. Patent law encourages early filing of patent applications. This assumes that the invention is develop sufficiently to support a patent application filing. See this article on whether your product needs further development before filing a patent application.

If your product needs further development and such development requires the assistance of outside engineers or product developers, then you should use a written nondisclosure agreement when engaging such outsiders to help develop the invention. Also, you should ensure that the terms of any engagement with such providers specifies that you will own any developments and inventions that they might create under the engagement. Outside engineers and product developers are generally more willing to sign an NDA, because you are usually paying them money in return for their services. Further, their business revolves around developing products and they should be used to signing such agreements.

Regarding marketing, if a patent application, preferably one drafted by a patent attorney, is filed that adequately covers your invention then from a patent perspective, you are no longer required to keep your idea secret. You may instead may go exploit your idea publicly. In fact, as it can take years to obtain a patent, inventions are usually commercialized and marketed after a patent application is filed but before a patent is granted.

It can be difficult to engage in a sales approach with another when your first request is to sign a legal agreement before providing information. Having a patent application filed before making a sales pitch is generally the best approach. Service providers, such as engineers and developers, are generally more likely to sign an NDA as they are being paid for their work and they may regularly assist in invention development.

Can I Add New Invention Developments to My Previously Filed Patent Application?

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.

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.

Continuation-In-Part Application
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.

Non-Provisional Application
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.