Monday, October 6, 2014

Prior Art Question

Dear Rich: I am testament to the quality of Pressman's Book “Patent it Yourself.” I submitted my patent application in 2013 and received my first Office Action Nov 14, 2013.  I submited an Amendment to my Claims, prompting a Second Office Action on June 26, 2014. I spoke with my examiner and submited Amendment B to by Claims, according to the very favorable verbal discussion with examiner. I just recently received a notice that my application was published Sept. 11, 2014. I am now expecting that my claim is to be allowed at some point. Which finally brings me to my question: If I would like to patent my invention for another use but I had mentioned that use in my previous patent application that was just published, is it too late for me to submit another application for a different use of the same invention or can my remarks about that particular use in the earlier application constitute prior art now that I have changed my mind and would like to pursue this "other" use of my invention? We spoke to Patent It Yourself author David Pressman who believes that you should seek out a patent attorney and explain the full facts of your case. Pressman did note the following, however.
Disclosing the improvement. When an improvement is made to an invention, the applicant can cover it by (a) the existing application if the claims are broad enough and the improvement is disclosed in the specification, (b) a CIP (Continuation-in-Part application) if they have to add new matter to the specification to support the new claims, or (c) a continuation application if the improvement is already supported by the specification, or (d) an independent new application if they have to add new matter to the specification to support the claims. In case (d) the independent application’s claims should be patentable over anything that was published previously and any patent that was filed before the filing date of the independent application.