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Thank you for the warm welcome on Patent StackEchange. When citing a patent, because presently, I am writing it myself before a pro-bono student works on it. Does this simply mean you are (claiming) what is claimed in the cited patent as well as your own patent which is and will be submitted?

Or does it mean that you only receive your own claims, reference in your patent being submitted?

  • Simply put when citing another patent what is beneficial to the patent holder?
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    Are you citing one your own patents or someone else’s?
    – Eric S ♦
    May 15, 2021 at 22:17
  • @EricS Citing in my own patent, someone else's. Thank you so much for the response. Their patent I found out, is exactly my invention sadly. So, only approach I assume is to make it a percentage different or expand and cite it.
    – ABC
    May 15, 2021 at 22:22
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    Just making it different may not be enough to either 1) get a new patent or 2) avoid infringing on the current patent. To get a patent there needs to be an inventive step. Even if you refine the previous patent in such a way that you receive a patent, it doesn't provide immunity from infringement of the previous patent.
    – Eric S ♦
    May 16, 2021 at 20:08

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By citing another patent in your application, you are making the patent examiner aware of relevant prior art. In no way do you obtain a claim on the cited patent's claims. Indeed, you are going to have to explain why your invention is different and inventive from existing prior art. I'm not a patent attorney so the why's of when it is beneficial I'll leave to an actual patent lawyer or agent to explain. I would speculate that some might feel that if there is an obvious bit of prior art, you might as well cite it and proactively explain why your invention is novel in light of it.

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  • Great answer, I really appreciate this response.
    – ABC
    May 15, 2021 at 23:14
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The benefit to the applicant, if it is a U.S. application, is otherwise any patent you get might later be torn up for violating your duty of disclosure whatever you know about significant prior art.

If this is a U.S. application, you must cite it in an IDS document. Mentioning it in the body of the application is optional. There is a very important duty to inform the USPTO of anything you know of that would tend to show your claims as not new or obvious. It doesn't matter if it is a US patent, EPO patent, a published application that was rejected or a journal article - you must disclose.

Some patent attorneys would advise not to mention another patent in the body of your application. Specifically, not to go into details about what is different and definitely not to say what is wrong with it. Some judges have essentially narrowed claim in reading a granted patent due to things the inventor said in a background section.

When you get a rejection that cites some prior art is the time to differentiate from that prior art in your response.

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  • Mr. White, it is a European patent, as you did state U.S patents would not make a difference. This was very helpful as I did email the patent's attorney beforehand willing if they would sell it. This response is so helpful, thank you so much! I realize how much now it means to keep your mouth shut, and just follow your attorney's advice. Thank you for this answer. Any reference's a new person trying to file patent's that would not be complete gibberish you might recommend reading would be a great help to myself, if you have a reference.
    – ABC
    May 16, 2021 at 1:52
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    @ABC I do not know what you understand by "as you did state U.S patents would not make a difference". As prior art any patented or even published anywhere could be used against any patent application anywhere
    – George White ♦
    May 16, 2021 at 4:58
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    @ABC The point is that it doesn't matter at all where the patent is from. It is all prior art. And not just patents, anything that is publicly disclosed prior to your submission is potentially prior art.
    – Eric S ♦
    May 16, 2021 at 20:06

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