0

If I want to add details to a patent submitted to the uspto in order to add detail to overcome fears of the need for undue experimentation, will a flow up with a continuation in part mitigate the risk of need for undue experimentation?

  • Could you clarify where the fears come from? – Eric Shain Apr 4 at 2:41
  • I have an electrical engineering patent. In it I say to use an amplifier but I didn't provide any details as to what sort of amplifier to use. The context of the invention strongly suggests the use of a "Class D amplifier" and I think it is fairly obvious to one "practiced in the art." However, I would like to mitigate the risk that the patent isn't enabling and add that detail. One could analyze the nature of the risk; however, my preference is to simply avoid it by filling some sort of continuation. – Jordan McBain Apr 4 at 10:57
  • @JordanMcBain does the description provide working examples with Class D amplifier – RishiM Apr 8 at 6:03
  • No it does not. The broad claims never become so specific either. But my intent is to mitigate the risk with a cup if appropriate even if something in the existinf patent were to save the possible deficit – Jordan McBain Apr 8 at 11:14
  • Just my opinion: if the invention doesn't solely work with a specific, obscure, amplifier, it is enabled. The theoretical person skilled in the art isn't, well, dumb. The person skilled in the art doesn't do the thinking for you, unless you find a authoritative source saying it's common knowledge in the field, but if any common amplifier works, you're very probably fine. – DonQuiKong Apr 9 at 20:22
1

Yes - Whether a CIP or a straight continuation, you can add the new material BUT in both cases you effectively loose the original priority date. A way to have your cake and eat it too would be to pursue both applications. In that case would file the CIP after the allowance on the parent - but before the grant date. Examiners do not usually reject for lack of enablement.

With different claim wording you might be able to get both granted with a terminal disclaimer. I'm a patent agent, but not an attorney but an attorney might think you would then have one with better enablement and one with a better priority date. Issues of patent enforcement are outside my expertise.

  • Thank you. I think the "missing" details would be blatantly obvious to one practiced in the art but my risk management strategy has to include what a Yahoo judge might do. – Jordan McBain Apr 8 at 20:59
0

I spoke to a lawyer today and the answer was yes a CIP can resolve such issues. Who knows how much that advice is worth.

Thinking about it a bit more myself, this sort of makes sense since continuations and CIP's are typically used to overcome issues when examiners reject claims.

  • Whether a CIP or a straight continuation, you can add the new material BUT in both cases you effectively loose the original priority date. – George White Apr 8 at 19:56
  • I found an interesting article that adds to the benefits/pitfalls of CIP's: napp.org/… – Jordan McBain Apr 27 at 18:01

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.