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A patent application that I wrote issued as a patent in August 2013. I have not claimed a few features that were disclosed in the specification.

Is it possible to file a continuation / divisional patent application to claim the features that were left out?

What are my other options?

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3 Answers 3

To be a divisional or a continuation an application has to have overlapping pendency with the "parent" application. Pendency ends the day of issue so, unless you filed something while it was pending, there is no way to file a divisional or continuation. It might still be possible to re-file a new application and claim the subject matter that was left unclaimed. Your previous application can be used against a new application starting one year from its publication. If the first time the information in the old application saw the light of day was the day of issue then you have until August.

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You might want to consider pursuing a reissue application. See MPEP Chapter 1400 ==> http://www.uspto.gov/web/offices/pac/mpep/mpep-1400.html.

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Note that a continuation application has to be filed before the patenting or abandonment of or termination of proceedings on his or her earlier non provisional application, based on an earlier filed patent application, wherein there is no new disclosure. However, a additional set of features can be claimed.

However, a divisional application is filed on a scenario, if a patent application lacks unity of invention.Generally such application is filed upon issuance of restriction requirement or upon asked by the examiner stating that application lacks unity of invention.Even a divisional application has to be filed before the patenting or abandonment of or termination of proceedings on his or her earlier non provisional application, based on an earlier filed patent application.

Hence, one cannot file for continuation or divisional application to claim additional features because the parent application has been granted.

http://www.invntree.com/blogs/patent-protection-for-improvements-made-over-your-previously-filed-patent-application.

There is a another way out wherein the applicant may surrender the issued patent and refile the original application to correct the defect for example, if he fails to claim the full scope of the invention. However, he can file an application with broaden claims within 2 years from the date of the patent application being grant.Please note that no new matter can be disclosed in the application being re -filed.

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