Clients often ask me if they can change their patent application after it has been filed with the Patent Office? Yes, but there are certain restrictions to be aware of.
The most common mechanism for changing a patent application is by amendment. However, there may be times when it is necessary, or desirable, to file a divisional application, a continuation application, or a continuation-in-part application. What is the difference between a divisional patent application, a continuation patent application, and a continuation-in-part patent application? There are subtle, but important differences.
A divisional patent application is typically filed when the Examiner issues a restriction requirement (saying that you have tried to claim more than one invention), and makes you withdraw the claims. You can file a divisional patent application including the withdrawn claims. A continuation patent application is typically filed when you want to file another application with claims which were described and enabled by the specification (and/or drawings), but not claimed.
Because no new matter is added in either the divisional or the continuation, these patent applications will have the same filing date as the parent application, provided the parent application (or a child application) is still pending. Therefore, it is important to discuss the possibility of filing divisional or continuation applications before your patent application issues or goes abandoned.
A continuation-in-part (CIP) may be filed to add new material to the specification, drawings, and/or claims. CIP applications are typically considered when the inventor makes a change or addition to his or her invention. Anything which was previously described in the parent application specification and drawings, receives the filing date of the parent application. But any new material receives the filing date of the CIP application. Therefore, the bar dates apply to any new material. That is, if the new material was publicly disclosed or publicly used, sold/offered for sale, or published, the CIP application must be filed within one year of such an event or the new material is considered to be in the public domain. Just as with the divisional and continuation patent applications, a CIP application also must be filed before issuance or abandonment of the parent application (or a child in the chain of applications if there is more than one patent application).
Changes with the new patent legislation which was enacted in 2011 may also affect your filing strategy. Therefore, it is important to discuss any changes or new aspects of your invention with your patent attorney as soon as possible to avoid losing important legal rights to your invention.
