The title is mostly self explanatory, but I have never been through the patent process before. I have a specific concept for a piece of software that fits the criteria of someone else being able to go out and create it with my description, and have done my own patent search. There are 2-3 patents that are similar enough that I can see an examiner questioning them, but I can confidently refute.

Is it possible to include an addendum referencing these patents with the initial application and explaining how clearly different those are from mine? I feel like this would save immense time vs. receiving non-final rejects, submitting amendments and reconsideration, etc.


1 Answer 1


You almost certainly need to submit the references in an Information Disclosure Statement (IDS). But I would refrain from characterizing anything whatsoever until you are forced to do so. That is, wait for the Examiner to force you to explain any differences, do not volunteer information.

  • What's the particular thought process behind this? I assume something like "see if he catches it first"?
    – Anonguy123
    Commented Oct 28, 2014 at 19:18
  • It isn't that per se. Look up prosecution history estoppel and prosecution history disclaimer. Statements you make during prosecution can later serve to limit the scope of the claims. Thus, it is best to avoid characterizing and/or describing your invention and the claims. Obviously, the specification will describe the invention and thereby limit the scope of the claims. But best practice is to avoid creating additional limitations with the arguments you make to the PTO. Commented Oct 28, 2014 at 20:19
  • I should add, estoppel is not completely on point here, as its application requires amendments to the claims. But disclaimer is certainly something to be concerned about. More generally, your arguments may not be correct, or you may later think about things in a different way and once you've characterized something in a certain way, you're likely stuck with that. It's all very grey unfortunately, and is so often the case with the law, it's probably better to say nothing unless and until it is required, and only then after careful consideration. Commented Oct 28, 2014 at 20:25
  • Thanks bob, really appreciate the thorough responses. Have a good one!
    – Anonguy123
    Commented Oct 30, 2014 at 16:40

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