We figured the claims aren't well written in the first patent and with experience with the same patent drafter we want to file a patent again of the same invention within the year time frame of the publication date of the first one. Are we allowed to do this?
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You can edit claims.– Eric S ♦Nov 18, 2019 at 2:16
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@EricShain Only in the scope of the original disclosure. Which is normally written to fit the claims. So not really– user18033Nov 19, 2019 at 7:37
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@DonQuiKong The OP specifically states they only want to edit the claims.– Eric S ♦Nov 19, 2019 at 13:23
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@DonQuiKong More to the point, since the application has published wouldn't it represent prior art if abandoned and a new application filed? Thus, their only option would be to amend the claims.– Eric S ♦Nov 19, 2019 at 14:35
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@EricShain they can claim priority to it, even if it had published it wouldn't be prior art then. Editing the claims usually comprises editing the description if the claims are bad, the description will be too. If not, you're right– user18033Nov 21, 2019 at 16:46
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3 Answers
There is no need to abandon the US patent. You should ask your lawyer or patent agent about how to amend the claims.
First option: If the first application is alive, you just amend it. No need to file another application. Second option: Even if the first application has already been abandoned, you can still rely on the so-called "priority right". (see http://www.patenttrademarkblog.com/priority-date/)
And the simple answer to your question is "Yes". The abandoned application destroys your later application regardless of being filed within a year or by the same inventor. (Grace period cannot help in such an occasion)
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I suspected this but wasn't sure since in the US you have 1 year from publication of an invention to file an application. This would be an even stronger answer if you could cite legal code or other supporting evidence.– Eric S ♦Nov 21, 2019 at 17:51