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?
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Could you clarify where the fears come from?– Eric SCommented Apr 4, 2019 at 2:41
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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 McBainCommented Apr 4, 2019 at 10:57
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@JordanMcBain does the description provide working examples with Class D amplifier– RishiMCommented Apr 8, 2019 at 6:03
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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 McBainCommented Apr 8, 2019 at 11:14
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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.– user18033Commented Apr 9, 2019 at 20:22
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2 Answers
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.
answered Apr 8, 2019 at 20:39
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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. Commented Apr 8, 2019 at 20:59
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.
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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 ♦Commented Apr 8, 2019 at 19:56
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I found an interesting article that adds to the benefits/pitfalls of CIP's: napp.org/… Commented Apr 27, 2019 at 18:01