Wednesday, 7 May 2014

6 Points on Amending a Priority Patent Application Before International Filing

This post is about the situation where a priority patent application is already on file and the inventors have generated data in the priority year.  The application can of course be amended to incorporate the new data before International filing.

1.  The new data needs to be reviewed to determine whether it simply supports the original inventive concept or whether it relates to a new inventive concept which might deserve a new priority filing of its own.  So, for example, one might think about whether the new data allows something to be claimed which is not within the scope of the claims of the priority document.

2.  Does the new data suggest an important new subconcept?  If so then thought should be given to amending the description and perhaps also the claims to refer specifically to the new subconcept. Thought should be given to how best the subconcept could be used to support patentability of the main existing inventive concept.  Introducing new claims to the subconcept will assist in defining the contribution made by the subconcept.

3.  Any new material that is added, and in particular new claims, should be done in view of all relevant disclosures that have happened in the priority year, from the inventors and from third parties.  Bear in mind that in some territories grace periods can be used to nullify the prior art effects of disclosures from the inventors.

4.  Consider whether inventorship for the priority application is different from inventorship for the International application in view of the new data.

5.  Be very mindful of retaining priority as much as possible for the subject matter in the International application.  It is normally best to not delete any material, and simply add the new disclosure.  Where for example new data shows a range can be extended from ‘10 to 20’ to ‘10 to 25’, don’t simply replace on by the other.  Retain the old range and introduce the new one, though this seems inelegant.

6.  Be careful of how you make corrections to the priority specification.  With DNA and protein sequences it may be best to retain the incorrect sequences and add the corrected ones.  You may end up in the situation of needing to base a claim on the incorrect sequences and defining an appropriate percentage homology may allow you to cover all useful sequences.

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