Patent Offices around the world will likely have different rules of practice. In other words, how you obtain your Patent can require different legal procedures and strategies.
Patent Office Characteristics
- The United States Patent and Trademark Office (USPTO) allows an Applicant to file an Original Patent Application, a Continuation Application, a Continuation-in-Part Application and/or a Divisional Application.
- The Canadian Intellectual Property Office (CIPO) allows an Applicant to file an Original Patent Application or Divisional Application.
- The European Patent Office (EPO) allows an Applicant to file an Original Patent Application or Divisional Application.
Types of Patent Applications
- A Divisional Application is a Patent Application that is “divided out” from an Original Patent Application.
- A Continuation Application is a Patent Application that claims priority to a prior pending Patent Application where the new Continuation Application is filed before the prior Pending Patent Application is patented. A Continuation Application is supported by the Specification and Drawings of the prior pending Patent Application.
- A Continuation-in-Part Application is a Patent Application that claims priority to a prior pending Patent Application where the new Continuation-in-Part Patent Application is filed before the prior Pending Patent Application is patented. A Continuation-in-Part Application includes “new matter” that was in included with the Specification and/or Drawings of the prior pending Patent Application.
- Divisional Patent Applications, Continuation Patent Application and Continuation-in-Part Patent Applications can be utilized by the owner to extend the scope of the Patent’s limited monopoly.
Our Louisville company filed original Patent Applications for the “gadget” in the USPTO, the CIPO, the EPO and other Patent Offices around the globe. After filing the Patent Applications, our engineering department invented our new and improved “gadget” that was similar to but slightly different than the original “gadget.” Management decided to file additional Patent Applications claiming the improved “gadget.”
Potential Patent Offices’ Strategies
United States – USPTO
In the United States, your company could file any of the above Patent Applications for the improved “gadget.”
According to 37 C.F.R. 1.53, “a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c) or 386(c).”
European Union – EPO
The only potential option in the EPO is to file a Divisional Patent Application. However, your improved “gadget” claims would only be allowed by the EPO if you can meet the conditions of EPO Rule 3.1.
EPO Rule 3.1 – Replacement or Removal of Features from a Claim
“The requirements of Art. 123(2) are only met if the replacement or removal of a feature lies within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing (or the date of priority according to Art. 89, from the whole of the application documents G 3/89, G 11/91 and G 2/10).
If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2):
(i) the replaced or removed feature was not explained as essential in the originally filed disclosure;
(ii) the skilled person would directly and unambiguously recognize that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve (in this context special care needs to be taken in cases where the technical problem is reformulated during the proceedings, see H-V, 2.4 and G-VII, 11); and
(iii) the skilled person would recognize that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention).”
Thus, in the EPO, it is unlikely than an Applicant can meet the strict conditions of Art. 123(2) for an allowable amendment to the claims of a European Divisional Patent Application.
Need Help With Your Patent Application?
If your company needs assistance with filing Patent Applications in United States and foreign jurisdictions, please contact Business Patent Law, PLLC.
If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and you have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.
Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, we are here to help.
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.