Depending on your company’s intellectual property strategy, there are many Patent Application possibilities.
The Question
Our R&D engineers recently invented improvements for our Company’s Product One. We have sold Product One for more than a year. The US Patent for Product One was granted six months ago. Can the Company file a US Patent Application for Product Two that includes two structures not part of Product One?
The Answer
It depends on the situation and 35 United States Code 120.
Examples and Possibilities
Patent Application Possibilities – First Example
- Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
- Our Company filed a US Nonprovisional Patent Application disclosing and claiming Product One on June 15, 2020.
- The USPTO granted our US Patent for Product One on February 9, 2021.
In August 2021, your Company can file a Patent Application for Product Two in the USPTO. However, the USPTO will be able to use the US Patent for Product One to argue against the patentability of Product Two. Unless there are novel and nonobvious structural differences between Product Two and Product One, the USPTO will not grant a Patent for Product Two.
Patent Application Possibilities – Second Example
- Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
- Our Company filed a US Nonprovisional Patent Application disclosing and claiming Product One on June 15, 2020.
- In August 2021, the US Nonprovisional Patent Application for Product One is still pending in the USPTO.
Because the Product One US Nonprovisional Patent Application is still pending, your Company can file a US Continuation-in-Part Nonprovisional Application for Product Two, claiming priority to pending US Nonprovisional Patent Application for Product One. The USPTO cannot effectively use the structures of the Product One Patent Application to reject identical structures in the Product Two Patent Application.
Patent Application Possibilities – Third Example
- Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
- Our Company filed a Patent Cooperation Treaty Patent (PCT) Application disclosing and claiming Product One on June 15, 2020.
- Our Company filed a US National Stage Nonprovisional Application claiming priority to PCT Application for Product One on August 15, 2020.
- The USPTO granted our US National Stage Patent for Product One on April 13, 2021.
Pursuant to Title 35 of United States Code and Patent Cooperation Treaty, your Company has until December 2021, to file a US Continuation-in-Part Nonprovisional Application for Product Two claiming priority to PCT Application for Product One.
The USPTO cannot effectively use the structures of the PCT Application for Product One or the April 13, 2021 US Patent for Product One to reject identical structures in the Product Two Patent Application.
35 United States Code 120 Benefit of earlier filing date in the United States
35 U.S.C. 120, in part, reads:
An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.
For those companies that have a profitable (or potentially profitable) product that is patentable, it is wise to keep a Patent Application pending. The marketplace decides whether the first generation, the second generation or a subsequent generation product is the most profitable.
Need Help With Securing Your Product Patent?
Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios. If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.
Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.
If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.