WEB PATENT NEWS - April, 2004

by Robert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and innovating organizations.


I. PATENTING AN IMPROVED VERSION OF YOUR INVENTION - Learn how to patent your "even better" idea.

II. NEW SMALL BUSINESS SIZE STANDARDS PROPOSED - Find out how to tell whether your business will still qualify as a small business under proposed new rules.

III. HIGH-TECHNOLOGY ENTREPRENEURSHIP RESOURCES - Access a free web archive of video clips and other digital resources on the subject of high-tech entrepreneurship.


It is often the case that an inventor will think of a way to improve his/her invention after his/her initial patent application is filed. Because U.S. patent law prohibits adding "new matter" to a patent application by amendment, another patent application must be filed to protect the improved version of the invention (MPEP 706.03(m)). New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific elements, percentages or compounds not mentioned in a broader original disclosure, or the addition, modification or omission of a process step. How to decide what kind of patent application to file is the subject of this article.

If the initial patent application is a provisional U.S. patent application, and one year has not expired after the filing date of the provisional application, then either another provisional U.S. application or a regular U.S. patent application containing the new matter (and the original subject matter, too, if desired) can be filed. (An international patent application designating the U.S. filed under the Patent Cooperation Treat (PCT) is equivalent to a regular U.S. patent application in this regard). Any claim in a regular or international patent application has an effective filing date that is the same as the actual filing date of the first application (be it a provisional application or a parent regular or international application) that adequately supports the claim. Details on this approach and the amount of disclosure required to adequately support a claim are described in an article in my October 2001 newsletter.

If your initial regular U.S. patent application has been published or has issued, and if the improved version of your invention is patentable (novel and nonobvious) in the light of the prior art (which now contains your patent disclosure), you can file new provisional application followed within one year by the filing of a new regular application or you can file only a new regular patent application. This approach has the advantage of extending the term of protection of your improved invention in that the term of a patent that issues on such a new regular application will begin at the filing date of the new regular application.

If the disclosure of your original invention would otherwise render your improved invention unpatentable, you can still file another provisional or regular application if you do so within one year of the effective filing date of the original disclosure (which critical date can be as early as the filing date of the provisional application upon which the regular application depends for priority). If inventorship (by even one inventor) has changed and a rejection of your claims is made under 35 U.S.C. 102(e), it can be overcome by filing a declaration showing that the reference is the applicant's own work. This option is not available very often these days because the filing of provisional applications often push critical dates back beyond the one year "grace period."

If more than one year has past since the priority date and a regular or international patent application is still pending, the patentability of the improved invention can depend on the publication, inventorship and ownership status of the initial and new applications (MPEP 2136.01). In many such cases, such patentability problems can be overcome by the filing a continuation-in-part (CIP) patent application (MPEP 201.08). A CIP is an application filed during the lifetime (pendency) of an earlier-filed nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding new subject matter not disclosed in the earlier nonprovisional application. The CIP must share at least one inventor with the prior nonprovisional application and must specifically claim the benefit of the prior nonprovisional application under 35 U.S.C. 120 or 35 U.S.C. 365(c).

An advantage of filing a CIP is that your pending grandparent or parent, etc. patent application (if it has not been published more than a year before you file your CIP) cannot be relied upon by the USPTO to render your improved invention unpatentable. Disclosure that is not "new matter" in the CIP is deemed to have been filed on the same date as the parent application. CIP's can be "chained" together, with a child application relying on an unpublished parent application or an unpublished parent application and an unpublished grandparent application, a parent relying on an unpublished grandparent application, etc., as long as the chain is not broken. All the patents that issue from applications thus chained will expire on the same day (20 years after the filing date of the first regular or international application designating the U.S. in the chain).

While a CIP may contain all of the disclosure present in the parent application (and would if your plan is to subsequently abandon the parent application), it is often the case that different figures and working examples (that reflect the new subject matter) are substituted for the original versions of these parts of the application. The claims of the CIP may focus solely on the new subject matter, or they may overlap the subject matter of the parent application. It is important, however, that claims to the same invention that was claimed in the parent application not be included in the CIP, again unless your plan is to subsequently abandon the parent application (MPEP 804.01).

Care must be taken in managing the ownership and paying issue and maintenance fees of issued patents that are related. Because no two patents can issue containing claims to identical inventions, it is important that intentional abandonment of an issued patent not occur with the idea that the same claims can be contained to a subsequent patent (even one that issues from a CIP application). The "same invention" double patenting prohibition prevents this from happening (MPEP 804.01).

A common occurrence is that the claims in a CIP are deemed by the Examiner to involve double patenting in view of claims in the parent application. In these cases, a "nonstatutory-type" double patenting rejection of those claims in the CIP will occur. Just how such claims can be rejected is sufficiently complicated that a decision tree has been published by the USPTO (MPEP 804), which I will not even try to explain.

An important factor to consider, however, is whether the inventor(s) in both the parent application and the CIP were obligated to assign their inventions to the same assignee at the time the inventions were made. Situations involving lack of common ownership of parent and CIP inventions that can result in obviousness rejections are discussed in my April 2002 newsletter.

There are two ways to overcome a "same invention" rejection. One approach is to expressly abandon the parent application after the CIP has been filed (if the parent patent has not already issued). This approach is sometimes appropriate for cases in which a lot of effort has not gone into prosecution of the parent application (because you cannot be certain that the same Examiner will be assigned the CIP and you might have to fight to have claims to the original subject matter allowed again). Another approach is to cancel the claim(s) in the CIP to any invention claimed in the parent application. A disadvantage of this second approach is that two issue fees and two series of maintenance fees will have to be paid.

A "nonstatutory-type" (aka "judicially-created") double patenting rejection may be overcome by abandoning the parent application or by filing a terminal disclaimer in the CIP (MPEP 1490). A terminal disclaimer is a statement filed by an owner (in whole or in part) of a patent or a patent to be granted that is used to disclaim or dedicate a portion of the entire term of all the claims of a patent. A terminal disclaimer is required even though the term of a patent that issue from a CIP filed on or after June 8, 1995, is 20 years from the filing date of the parent application (MPEP 804.02).

One dangerous aspect of a terminal disclaimer is that the term of the CIP is limited to the term of the parent application, and only for so long as the two applications are commonly owned. Thus, if the patent owner ceases paying maintenance fees on the patent that issues from parent application (or on patent that issued the CIP) or if the ownership of the parent patent become different from the ownership of the CIP patent, the term of an entire CIP patent that is subject to a terminal disclaimer automatically expires. So, if a terminal disclaimer is used to overcome a rejection of a claim in a CIP, "red flags" must be set up in the assignment and maintenance fee payment logs (or computer-based reminder systems) for both patents to prevent inadvertent expiration of the CIP patent. On my FAQ page, I provide a list of companies that assist patent owners in this (and other assignment and maintenance fee) record-keeping tasks. (I do not provide such services because such records must be maintained for over a decade and I do not want to take on a responsibility that just caused a large, competent firm of patent attorneys to have to pay a client $30+ million in damages for missing a deadline, and as you can see from the above explanation, my life is complicated enough already). If you license your invention and a terminal disclaimer is filed in a CIP, you can save yourself grief by requiring the licensee to pay maintenance fees for both the parent and the CIP for as long as the licensee wants a license in the CIP.

Abandonment of a parent application does not effect the effective filing date of a continuing application, as long as the continuation rules are met at every link in the chain of applications: (1) the continuation must be filed during the pendency of the parent (e.g., before abandonment of the parent), (2) a common inventor must be present in both applications and (3) a claim for priority must be timely made in the continuing application. The rule is still: Any claim in a regular or international patent application has an effective filing date that is the same as the actual filing date of the first application (be it a provisional application or a parent regular or international application) that adequately supports the claim. A patent application adequately supports a claim if it contains written description, enablement and best mode information.

So, the effective filing date of a claim in a CIP that is first supported in a provisional application and that is filed before the abandonment of a parent that claims priority in the provisional is the filing date of the provisional. The effective filing date of a claim in a CIP that is first supported in the CIP is the filing date of the CIP.

Although the Bush Administration once proposed penalties for filing continuing applications, those proposals were very unpopular and were withdrawn. Thus, current (2004) USPTO fees for each parent utility patent application and each CIP are the same: small entity filing fee-$385, excess claim fee for each independent claim over three-$43, excess claim fee for each claim over a total of twenty-$9, issue fee-$665 and maintenance fees-$455 at 3.5 years, $1,045 at 7.5 years and $1,610 at 11.5 years after issue.

Professional services costs are about the same for the options of (1) filing a CIP and abandoning the parent and (2) filing and prosecuting a CIP and prosecuting the parent, if the new matter (specification and drawings) and new claims are kept separate from the subject matter of the original application, which is not changed. Weaving the new matter into the fabric of the original application is not necessary and can increase costs significantly. If an inventor believes he will be tempted to unnecessarily "tweak" his original disclosure and wants to save money, option (2) might be the best route to take.

Option (1) can involve lower professional services costs than option (2) if the Examiner requires that two separate battles be fought over the same issues in the prosecution of the two applications in option (2) (which should not occur). Option (1) can require higher excess claims fees than option (2) if more than three independent claims and twenty total claims are required (because each application is allowed three independent claims and twenty total claims for the basic filing fee). Option (1) will get much more expensive when Congress accepts the Bush Administration proposal to significantly increase excess claims fees and excess total sheets fees (over 100 sheets), probably some time this year (H.R. 1561 has already passed the House).

If option (1) is adopted before examination of the parent application begins, Examiners prefer option (1) because they get twice the counts for prosecuting a single application (and the number of counts they accumulate in a year can affect their bonuses and raises). So, if you want a happier Examiner and do not care that your filing fees will be higher, choose option (1). In my experience, the primary problem with option (2) is the "buyer's remorse" the patentee feels years later when multiple maintenance fee payments come due and he is still not a millionaire.

In many technical fields, it is true that more than one patent (a patent portfolio) is often necessary to adequately protect a new technology. It is also true that if you do not improve your invention, someone else will. Capitalism really does depend on this process of "creative destruction." For that reason, I hope this article helps you understand how to apply for a patent on the new versions of your invention.


The Small Business Administration (SBA) is proposing to change the rules that are used to determine which businesses can participate in Federal procurement and lending programs. Under the SBA proposal, the new size standards will range between 50 employees and 1,500 employees, depending on the industry or SBA program. Footnote 10 on page 35 of the proposal indicates that the size standard for the Small Business Innovation Research (SBIR) program will not change. The comment deadline is May 18, 2004.


My alma mater, Stanford University, has published on the web a free archive of high-technology entrepreneurship teaching resources, such as video clips, case studies, course outlines, and recommendations for ways to get involved in the community of entrepreneurship educators. Enjoy.


Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku'ula Rd.
P.O. Box 2709
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