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.
You may also wish to see related articles Top
10 Tips on Getting Difficult Cases Through and Top
10 Points about Gene and Protein Sequences.
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