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Can You Amend a Non-Provisional Patent Application?

Filing a non-provisional patent application with the United States Patent and Trademark Office (USPTO) is often a crucial step for companies seeking to protect their valuable innovations. But what happens if, after filing, the company wants to make changes or add new information to the U.S. patent application? Can a non-provisional patent application be amended after it has been filed?

The answer is complicated. While certain, limited elements of a non-provisional patent application can be amended, there are essential restrictions and considerations to keep in mind.

Restrictions to Amendments After Filing a Non-Provisional Patent Application

After a non-provisional patent application is filed, the USPTO will begin examining the application to determine if the claims of the application are novel and non-obvious—two hurdles that must be overcome to earn patent protection. During this examination process, the patent examiner may issue an Office Action rejecting some or all of the claims in the application. In response, the applicant may amend the claims, provide arguments as to why the rejection is improper, or both.

However, any amendments to claims must be supported by the original disclosure in the application. The applicant cannot add new matter, and the amendments are limited to clarifying or narrowing the existing subject matter.

Additionally, if an applicant wants to add new features or embodiments they did not include in the original patent application into either the specification or the claims, it is unlikely the applicant could amend the application to include the new features during prosecution, as this would unfairly allow the applicant to change or expand their application after the initial filing date. Instead, they would need to file a separate patent application.

This separate patent application could be an entirely new standalone filing, starting as a provisional application or a non-provisional application. Another option is to file a continuation-in-part application (CIP). A CIP claims priority to the earlier application, and the portions of the CIP that are carried over from the original application would maintain the benefit of the original priority date, while any new matter would only get the benefit of the CIP filing date.

What to Consider Before Amending a Non-Provisional Application

Companies need to strategically decide whether to amend an application or claims; file a new, separate patent application; or file a CIP when seeking to add or change information.

For example, if filing a new standalone patent application, it is important to consider that previous disclosures made, such as those in the earlier application, or intervening publications could be considered prior art against this new application. Therefore, the new application and its claims must contain sufficient differentiating features to be novel and non-obvious on its own. However, if a patent is ultimately granted, the term of the patent will be 20 years from the filing date of the application.

While filing a CIP allows applicants to add new matter to a prior application, the new matter will not benefit from the earlier priority date, potentially affecting the scope of protection. Furthermore, a CIP has a shorter patent term since it is calculated from the priority date of the original application, not the filing date of the CIP.

For these reasons, it is prudent for companies to invest time upfront, prior to filing a non-provisional application, to think through the various embodiments and alternatives for their invention that they may want to cover. If it is likely that significant brainstorming and development could occur within a year, it is often advantageous to file a provisional patent application first. Conducting a thorough patent search can also help identify relevant prior art and allow a patent attorney to draft the initial application in a way that increases the likelihood of success before the USPTO and patent offices around the globe.

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