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I've filed an application that covers a certain subject matter.

Since filing for that patent, I've developed a need to extend the specification to include further embodiments as well as an extension of the subject matter, but with a base of the first application.

In this case, should I:

  • Apply for a divisional application for the second patent with a parent application of the first one, or
  • File a brand new application?

Or is there any way I can handle this and get protection for both aspects of the invention?

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It depends on your Jurisdiction where you have filled patent application. in most of the cases Divisional application is done when question on unity of invention is raised during examination. As name suggest it is corresponds to dividing existing patent application and may have restriction requirement for additional matter.

  1. If you are asking for US application please file continuation in part application with additional matter.
  2. If you are asking for Indian application please file Patent of addition.

you could try fresh patent application filing if novelty, inventive step can be maintained on your claims.

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It depends on the nature of additions which you want to make to your invention. If the new additions accounts to a substantially new invention which does not take basis from original application then you file but you lose your priority in that case. If the new addition takes the priority from the parent application which is more likely the case from your words, you have two options:

  1. File a Divisional: The divisional application are generally filed when there are two inventions in the parent disclosure. Usually, Divisional applications are the result of a restriction requirement made by an examiner in an Office action. It is filed with the same disclosure as the parent application but with claims directed to different subject matter compared to the parent application.

  2. File a CIP: The CIP application adds new subject matter to the parent application with claims directed to the new subject matter. This allows inventors to include “enhancements” to the original design that were developed after the parent application was filed.

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