Obtaining Additional Claim Scope In A Related Patent Application

By: Mark Malek

In my last post I discussed the different parts of a patent application.  You may recall that one of the parts, the most important part, was the claims.  The claims outline the scope of protection that is being sought in the patent application.  After the patent application successfully passes through examination process, the claims will be allowed.  In some instances, the claims that were originally filed may have been amended to overcome some sort of prior art, or maybe to just put the application in condition for allowance.

In many cases, there is additional claim scope that you may want to try to capture based on the original disclosure.  There are several ways of doing this.  Below are three examples of the different ways that additional claim scope can be attained from the original filing.

Example #1 – The first example is a continuation application.  After filing an initial application, it may come to you attention that there was some information disclosed in the specification that was not claimed, and that it would be beneficial to file claims directed to that information.  There are many ways to do so.  For example, if the original application is still pending, one may consider simply adding new claims.  A cleaner way to do it, however, may be to file a continuation application.  A continuation application may be beneficial as it maintains the very same filing date as the original application, even though it was filed afterwards, and it is a good way to claim the information that was originally disclosed in the specification that may not necessarily have been claimed in the first application.

Example #2 – The second example is a divisional application.  This arises when a patent Examiner issues a “restriction requirement.”  In such a requirement, the Examiner has indicated that the originally filed patent application contains claims that are directed to more than one invention.  In other words, analysis of the claims would take the Examiner more than one search.  Therefore, the Examiner issues a restriction requirement, which requires the Applicant to select one invention, i.e., the Examiner requires that the claims directed to only one of the inventions be selected for prosecution, and that the remaining claims be cancelled.  In such a case, the claims that were cancelled can be re-filed in a new application, called a divisional application, which will obtain the benefit of the original filing date.

Example #3 – The third example is a continuation-in-part application.  In such an application, the inventor has improved the invention that was disclosed in the originally filed patent application.  Therefore, new claims are written that are directed to the improvement, and the specification is enhanced to describe the improved invention.  In that case, as the name continuation-in-part suggests, you get part of the filing date.  Anything new in that application that was not disclosed in the originally filed application gets the new disclosure.

If you need assistance in analyzing your patent application to determine if you should seek additional protection, feel free to contact me. You can also follow me on Twitter, LinkedIn and Facebook for even more information.