Can You Change a Patent App?
When it comes to changing to a patent, the cardinal rule is that you cannot add new subject matter once a patent application is filed. Patent applications, once filed, are essentially set in stone because the rules require that patent filings contain a full description of the invention. So what can you change in a patent application once it’s filed? Let’s dive into what changes might be acceptable after a patent application is filed.
Need to change or add to your patent? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore your options.
What Changes You Can Make in a Patent
Here are some ways you can amend a patent application after it’s filed.
Deleting Figures
Generally, you will be able to delete patent drawings. This is perhaps more common in design patent applications than in utility patent applications.
Clarifying What Was Originally Disclosed
This can get a bit tricky, but sometimes you might be able to clarify certain originally filed content. For example, suppose a drawing shows a certain structure. You might be able to amend the specification to add a sentence or phrase to clarify what was illustrated.
Amending Claims
Claim amendments are very common. As long as the features are adequately supported by the written description and drawings, you should be able to amend your claims to include such features. Of course, getting the examiner to allow your claims is another issue.
What Changes Cannot Be Made in a Patent
Once a utility nonprovisional patent application is filed, the following changes would be generally impermissible.
Adding New Subject Matter to a Nonprovisional
You will not be able to add new content to a nonprovisional patent application. Furthermore, changes to any parts of the invention as disclosed would be impermissible except to clarify what was originally shown.
What you can do is file a child application known as a continuation-in-part, or CIP. Filing a CIP means that you may have multiple patent applications co-pending.
Changing Drawings
Attempts to change the illustrations will most likely be rejected by the USPTO. For example, changing a certain portion of a figure will likely be denied.
Adding to Written Specification
Except for clarifying amendments discussed above, additions to the written specification will most likely be rejected. Again, consider filing a CIP if you wish to add to the written specification.
From Provisional to Nonprovisional: What Changes You Can Make?
When filing a nonprovisional application that claims priority to a provisional patent application, the nonprovisional need not contain a verbatim disclosure of the provisional. Recognize there are two different issues here: what is permissible versus what will get the benefit of the earlier filing date.
A nonprovisional patent application may contain content that is new and different from what is contained in the provisional. The issue, however, is whether those changes in your nonprovisional will get the benefit of the earlier filing date of the provisional.
For example, you can add new matter to a nonprovisional that is unsupported by the provisional. However, such new matter will not get the earlier priority date of the provisional.
What You Can Change In A Design Patent Application
Very little can be changed in a design patent application.
Design Patent Drawing Changes
Depending upon the examiner, you might be able to change certain broken lines into solid lines. Some design examiners will also allow for particular solid lines to be changed to broken lines in order to resolve an indefinite objection under Section 112.
Design Patent Specification Changes
Only minor edits to the specification are allowed. For example, design examiners may want to add a sentence regarding broken lines or environmental structure shown in the drawings.
Deletion of Embodiment When Multiple Embodiments Shown
You may be able to delete an entire embodiment, including the relevant portion of the specification and associated drawings. However, keep in mind the consequences of deleting a design patent embodiment without filing a continuation application.
How to Avoid Getting Stuck With Your Original Patent
if you sense the need to change or add anything to your patent, the most practical thing you can do is file a child application while your parent application is still pending. While the new matter will not get the benefit of your earlier priority date, the new content will at least be submitted.
Pending means that the parent patent application has not yet been granted or abandoned. If your parent application has been allowed, then make sure to file the child application before the parent patent issues.
Need to Change Your Patent Filing?
Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore your options for changing or adding to your patent filing.
