Format of Continuation-In-Part Specification and Claims

Question

Referring to this question:
Adding useful and unobvious functionality to existing patent
Alice has thus decided to proceed with filing a Continuation-In-Part application. Would it suffice a simple drafting format, whereby, after referring to the parent patent, only the new functionality is described ? without needing to repeat the full content of the parent patent? Such as for example:

CROSS-REFERENCE TO RELATED PATENTS
This U.S. patent application is a Continuation-In-Part of U.S. Patent XYZ which was granted on ....

FIELD OF THE INVENTION
The present disclosure relates to a blood pressure measurement method and apparatus, whereby the diagnostic functionality consisting of .......... is added to the Parent Patent XYZ by monitoring the signal W (shown at least in Fig. m and Fig. n of patent XYZ). The advantages obtained are ......... etc. etc.

To then formulate the claims as explicitly dependent from those in patent XYZ. Such as for example:

CLAIMS
1. The method of Claim 1 of the parent patent XYZ, further comprising the step of .... etc. etc.
2. An apparatus configured to implement the method as claimed in claim 1 of this application, wherein .... etc. etc.

It would appear to me that such an approach would make it easier for everybody to identify and isolate the delta novelty with respect to the parent patent. However, I know there must be some formalities to be respected. Unfortunately, I have not been able to locate, on the USPTO website, published examples for what would be considered acceptable formats for Continuation-In-Part Specification and Claims. I did read few published Continuation-In-Part applications, but all seem to fully rewrite Specification and Claims, mostly fully rewording the Claims, and thus requiring, at least to my unexpert eyes (I am not an examiner), quite some effort to isolate the improvement part.

By the way, would Claim 1 above be considered a dependent claim (being dependent on Claim 1 of the Parent Patent)? and would Claim 2 thus be considered a multi-dependent claim (depending on Claim 1, in turn depending on Claim 1 of the Parent Patent)? I am thinking about how to correctly calculate filing fees ...

Answer 1

By way of preface, I note that this answer only really applies to the US. No other country has continuations-in-part, and most countries don't allow incorporation by reference.

I would suggest that your proposed strategy would not really be ideal, from a commercial point of view.

In US practice, a drafter typically wants to "hide" the invention, by talking only of embodiments and aspects. This is because if you state that the invention does X, then this can be a basis for implying extra limitations in the claim (or ending up with invalid claims). This style of drafting does indeed make it difficult for a reader to pin-point what the invention is. But this is a benefit to the applicant, who has some room to change course depending on how matters develop. Indeed, this is one reason to rewrite the description: to further obscure matters.

You are proposing completely the opposite of this. That is, you are proposing to set out exactly what the invention is and what the advantages are. I agree that this will result in a very clear view of what your invention is. But while your aim to make life easy for your competitors and the examiner is laudable in a social sense, it is basically negligence in a commercial sense. Certainly it would, to my mind, come close to malpractice for an attorney.

This is because a US patent typically has to achieve all of its aims. If it turns out one of the advantages you provide is not actually achieved, this could in principle result in an unenforceable patent. In addition, because you are stating exactly what the invention is, you have no room to move if relevant prior art comes up, or your commercial position changes. And there would be a very strong chance that a court would add in additional features into your claim if you do get into litigation.

In other words, you would likely have a weak, narrow patent, if it got granted at all.

Incidentally, I feel confident that your claim format would be objected to as being improper. I don't imagine there's a specific MPEP passage relating to it, because I would doubt anyone has tried it. But I can see no chance that it would get through examination, simply because it's unusual. Examiners like novelty to be restrained to the invention; novel formalities are just asking for trouble.