One everyday task in the life of a patent attorney is the writing of a patent application for a client’s new product or process. The application includes inter alia a description and drawings which disclose the details of the invention. When the writing up is finished the application is filed with the Patent Office for examination and hopefully grant.
Sometimes the client will create a new version(s) of the product after the application has been filed. If the new version falls within the scope of the application as filed then there is no problem. Details and benefits of the new version are sometimes useful during examination to help advance the application to grant.
But what if the new version falls outside the application? I have often found that clients automatically assume their existing application can be amended to include the new version. Unfortunately, that is not possible. It is a general rule in patent laws around the world (including Australia and New Zealand) that no new subject matter can be added to a patent application that has already been filed. This protects the interests of others. If the rule did not apply then a client could amend their existing application to insert the commercial activities of a competitor (said activities were commenced after filing of the application) with the aim being to sue the competitor for infringing the patent once granted. The rule prevents the client from improving the position they had when the application was filed.
So how does the client seek patent protection for the new version(s)? The only way is to file another patent application. This can be problematic depending on when the first application was filed.
The best scenario for the client is when the first application was filed less than 12 months ago. A second application can then be filed for the new version(s) and associated with the first application. In legal terms this is known as claiming priority to the first application.
If between 12 and 18 months has elapsed then a second application can still be filed but cannot be associated with the first application.
The worst situation is when the first application has already published. Publication normally occurs automatically 18 months after filing. The publication could be relied on by the Patent Office to support an allegation that the second application is obvious over the first application.
But all hope is not lost at least in Australia and the USA.
In Australia, where a first application has been filed and the client files a second application for an improvement in, or modification of, the invention in the first application, then a “patent of addition” may be granted for the improvement or modification (i.e. the new version).
In the USA the second application for the new version is known as a continuation-in-part application (CIP). A CIP application allows the client to supplement the first application with new matter to cover the new and improved version made after the first application was filed. A CIP application must be filed before the first application is granted.
Do not hesitate to contact Chris Addicott if you have questions or would like to discuss further.