I have an allowed patent application and am working on a continuation. There is material in the specification that I think supports a further development of the original invention, so I'm drafting claims, but I wonder: if there is a genuine new invention which is encapsulated and described in the claims, but the examiner doesn't think the original specification provides enough support for the idea, what happens?

  • There is a converse: if I file a new application, given that the original filing is more than a year old, there is a risk that it could be used as prior art against the new invention... – Keir Finlow-Bates Oct 14 at 16:06
  • So, isn't that what a continuation-in-part is for? (I'm not from the US, I don't know for sure). Even though that concept doesn't work anywhere else. Other than that, if you try and it doesn't work you're screwed either way imho. So try both or ask an attorney with experience to check which has better chances (I know that's not cheap). But maybe it could be done rather cheap if trying both ... well, just brainstorming here for someone who wants to write an answer. Anyways, US only or other jurisdictions too? – DonQuiKong Oct 14 at 17:26
  • US only. I could do a continuation in part (haven't done them before, so might be interesting). But I'm not sure what I would add. – Keir Finlow-Bates Oct 14 at 17:47
  • The exact wording of the claims I'd guess. But this is seriously out of my field, I'm not even sure cip work as I think they do. – DonQuiKong Oct 14 at 17:58
up vote 0 down vote accepted

You will get a lack of enablement or lack of written description rejection under 35 USC 112. At that point you can argue or amend the claims or abandon the application.

  • Thanks George. So it's a bit of a gamble. Either I'll get a 112 rejection for the continuation, or I'll get a prior art 102 rejection for a new application. – Keir Finlow-Bates Oct 15 at 8:25

re But I'm not sure what I would add

The first thing I would do is make sure that the claims (at least in form of dependent claims) provide support and enabling for this "encapsulated idea". That way, if the examiner feels that you do not have support in the original specification, you do have such support in the claims themselves. You can then rename the "continuation" a "continuation in part".

I have had this happen to me - I filed a continuation with new claims, the Examiner said I did not deserve the priority, but he issued the case anyway.

There is the risk that the new idea be considered obvious (but not described). The idea behind a CIP is that the independent claim is clearly supported by the earlier specification; this reduces the risk, but does not make it go away. Clearly supported = uses literal language from the original filing.

Anyway, if the idea is "encapsulated" this suggests to me that the idea and its useful implementations are not well described in the original application, so that is what I would add in a CIP. During examination, I suspect some claims will get the earlier date, some will get a new date and some might be indeed obvious.

Having said all the above, I am generally against CIPs, as, usually they are filed more than one year after publication of the earlier application, which allows the earlier application to be used for obviousness. So if you have a new idea, start with a new filing and if the idea is described, use a plain continuation.

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