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We have filed a US patent application for use of our tech in/on/attached to a laptop. However, we now want to adapt this filing to claim the use of this technology built-into a laptop. A subtle change, but not something we have claimed in our original filing and we believe will become important in the future. Our attorney has advised us that:

"before filing internationally, we can adjust the specification and claims to account for this possibility. That would be the last chance to make that change, and would not change the USA case now pending, but could be recaptured from the PCT application in the USA should that be important."

What exactly is meant by 'recapturing from the PCT application in the USA?' - How long is this process? and does it leave us exposed in the US to others implementing our technology 'within' a laptop (rather than something which effectively plugs into one)?

Thanks in advance.

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I am not a US expert so I hope someone else will pop-in as well to add more info.

But in a nutshell, there is a linkage between the date you disclose something and the disclosure itself and it is called "priority date".

It seems that your attorney wants to ensure you get the maximum opportunities as possible and include this added feature to the PCT filling. I cannot be 100% positive from the info you are sharing, but I assume he will use the priority date of the US application for the original invention, but for the new changes your priority date will be the one of the actual PCT filling only. This is quite common practice, actually.

By recapturing, again I assume, he means that you will have the option of re-filling a US application, stemming this time from the PCT filling and not the original US one. You can thus ensure that you will be able to claim the changes as well (but for this US filling, you will have a different priority date).

I am sure a US-based user will be able to add more info. Why don't you add "priority date" to the labels?

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