Patent It Yourself - PDF Archive

406 | Patent it YOURSELF
2. You can file rough xerographic copies as informal
drawings and file formal drawings later, as explained
in Chapter 10.
3. If you’ve made CAD drawings, print out new copies.
To supply drawings for a replacement divisional case (the
parent case will be abandoned), you have four choices: the
three above choices (1, 2, and 3) for the parallel divisional
case. Also, you can request (use a separate letter) that the
drawings be transferred from the parent case, which is
being abandoned, to the divisional case.
If you want to delete any inventors when you file a
division, you may do so by including a simple request on a
separate form. All inventors named on the prior application
should sign.
If you want to file the divisional electronically, prepare
your specification, drawings, and signed declaration as
described above, fill out an ADS online, convert them all
to PDF, and file from the PTO’s Electronic Business site
using similar procedures as used when filing a regular
application. In the ADS, in the “Domestic Benefit/National
Stage Information” portion, under “Prior Application’s
Status” select “Pending”; for “Continuity Type” select
“Division of”; and fill in the Prior Application’s Ser. Nr. and
Filing date.
CAUTION
Double Patent Warning. You’re not permitted to
obtain two patents on the same invention. If you do, it’s called
“double patenting,” (DP), a situation in which both patents may
be held invalid. However, if in your parent case the examiner
required you to restrict the application to one of several
inventions, there’s a special statute (35 USC 121) that helps
you. This statute states that if you file your divisional(s) on the
nonelected invention(s) after a requirement for restriction,
you can do so with total immunity from DP. However, if the
examiner didn’t require you to restrict, and you’re filing your
divisional “voluntarily,” you must be sure that it’s to a clearly
different invention than that claimed in the parent case.
Otherwise, both patents can be held invalid for DP.
Once again, I recommend that you consult with a patent
attorney in the event you (or the PTO) decide that a divisional
application is indicated.
CAUTION
20-Year Term Warning. The 20-year term warning
for continuation applications in Section B also applies to
divisional applications.
E. Continuation-in-Part and
Independent Applications
As defined in MPEP 201.08, “a continuation-in-part”
(CIP) is an application filed during the lifetime of an
earlier application by the same applicant, repeating some
substantial portion or all of the earlier application and
adding matter not disclosed in the earlier application. CIP
applications are not common; they’re used whenever you
wish to cover an improvement of your basic invention, for
example, if you’ve discovered a new material or a better
design. (Remember, you can’t add these to a pending
application because of the proscription on “new matter”
discussed in Chapter 13 and mandated by Rule 121(f).)
I discuss the various CIP situations, below.
Generally, the parent application should be allowed to
go abandoned when a CIP is filed. However, if you do want
the parent application to issue, you must be sure that the
claims of the CIP application are patentably different—that
is, they define subject matter which is unobvious over that
of the parent application. Otherwise the CIP and parent
application patent can both be held invalid for double
patenting, unless you file a terminal disclaimer. (See
Section I, below.)
The advantage of a CIP application over a separate
applica tion is that the CIP is entitled to the filing date of
the parent application for all subject matter common to
both applications. However, if any claims of the CIP cover
subject matter unique to the CIP, such claims are entitled to
the filing date of the CIP only.
If your “improvement” of your Basic Application is
different enough to be unobvious over the basic invention,
you can file an entirely separate, independent application,
rather than a CIP. However, it’s usually better to use a CIP
application, since the common subject matter gets the filing
date of the parent application.
EXAMPLE 1: Suppose you’ve invented a bicycle gear
with a new shape. You’ve claimed this shape in a patent
application, which I’ll call the parent application. After
you file the parent application, your research shows you
that the gear works much more quietly if it’s made of a
certain vanadium alloy (VA). The VA isn’t patentable
over the invention of the parent case and your parent
case’s claims cover the gear no matter what material
it’s made of. However, since the VA works much better,
you’d like to add a few dependent claims specifically
to cover a gear made of the VA. In this way, if there’s
an infringer who copies your gear made of the VA,
you can show the judge that the infringer is infringing
your specific as well as your broad claims. Also, you