While generally making amendments or modifications to an existing patent application is not possible, there are three ways to change or modify your disclosed invention.
The three ways to amend or modify your invention are by filing:
- a continuation patent application,
- a continuation-in-part (CIP) patent application, or
- a divisional patent application.
However, these options must be availed before a patent is awarded or your application is abandoned. Each filing has its own pros and cons, depending on your situation and goals. Here is a quick overview of each option and how they compare to each other.
Continuation Patent Application
A continuation is a new patent application that has the same specification and drawings as your original application, but has different claims. You can use a continuation to seek a different or wider scope of patent protection for your invention, or to add new claims that are supported by your original description. You have to file a continuation before the parent application is granted or abandoned, and it is awarded the same filing date priority as your original application. This means that you can benefit from the earlier filing date of your original application for the purposes of novelty and obviousness.
However, you cannot add new information to the specification or drawings. The claims must be fully supported by the original disclosure.
Continuation-In-Part (CIP) Patent Application
Addressing the issue of new matter, a continuation-in-part (CIP) is a new patent application that has some overlap with your original application, but also adds new information. CIPs are generally used when new features or improvements are added to an existing invention, but were not part of the original disclosure. Like a continuation, a CIP should also be filed before the parent application is granted or abandoned to take advantage of the filing date. However, for the new information, the CIP will be awarded its own filing date and priority date. Moreover, if the CIP is filed more than one year after the publication of the parent application, the parent application disclosure may be used against claims utilizing the information provided in the CIP. This means depending on the timing of the filing of the CIP, you may face different prior art challenges.
Divisional Patent Application
A divisional is similar to a continuation application for all practical purposes. However, it is filed in response to a restriction requirement from the patent examiner. A restriction requirement is issued when the examiner finds that the parent application contains more than one distinct inventions. One may also pursue a divisional when other distinct inventions were disclosed, but not claimed in the parent application. Similar to a continuation, a divisional must be filed before the parent application is granted or abandoned, and must not include any new matter.
Conclusion
A patent application can be modified or amended before a parent is awarded or the application is abandoned. This can be achieved by filing continuation, continuation-in-part, or divisional applications. However, each has its pros and cons and must be considered after discussing it with your patent attorney.