YANML: Patent Application Changes
February 8, 2016 10:05 AM Subscribe
Background: I have a provisional application and submitted a full application under the extended missing parts pilot program. i received a notice to file corrected application papers and a rejection of the year extension because I didn't have an ADS mentioning the provisional application.
This is sort of a follow-up to this question:
http://ask.metafilter.com/291390/YANAL-Patent-application-extended-missing-parts-denied
I think I need to add more information to my specification:
So I called the USPTO application number as suggested by a helpful mefite and I was able to get to someone fairly quickly and this is what I found out: I get to keep my priority filling date from the provisional application.Based on the instructions in the notice and the call, I get two months to send in the fees, fixed specification with double spacing, an abstract and the application data sheet mentioning the provisional date.
But... my application specification sent in for the extended missing parts program was simply a copy of the provisional application plus claims and a paragraph about the provisional application date. The provisional application itself was a specification with a summary, a detailed description of the invention and the figures. I see full patent applications having a lot more sections such as background, advantages, embodiments, conclusion etc.
I don't have these. I though I could add them later since I was filing under the extended missing parts pilot program , and this book which I think is woefully out of date said the extended missing parts application can be a copy of the provisional application.
The lady I spoke to at the USPTO said that adding more information to my application can be done with amendments, which seems like a very complicated and prone to error process.
These extra sections I see in other applications were not explicitly requested by the USPTO, so should I just add /change just what they requested and send it to them? Will they ask me to fix it later if they don't feel like enough information is provided or will they reject the application?
So I called the USPTO application number as suggested by a helpful mefite and I was able to get to someone fairly quickly and this is what I found out: I get to keep my priority filling date from the provisional application.Based on the instructions in the notice and the call, I get two months to send in the fees, fixed specification with double spacing, an abstract and the application data sheet mentioning the provisional date.
But... my application specification sent in for the extended missing parts program was simply a copy of the provisional application plus claims and a paragraph about the provisional application date. The provisional application itself was a specification with a summary, a detailed description of the invention and the figures. I see full patent applications having a lot more sections such as background, advantages, embodiments, conclusion etc.
I don't have these. I though I could add them later since I was filing under the extended missing parts pilot program , and this book which I think is woefully out of date said the extended missing parts application can be a copy of the provisional application.
The lady I spoke to at the USPTO said that adding more information to my application can be done with amendments, which seems like a very complicated and prone to error process.
These extra sections I see in other applications were not explicitly requested by the USPTO, so should I just add /change just what they requested and send it to them? Will they ask me to fix it later if they don't feel like enough information is provided or will they reject the application?
Call a patent lawyer. You know you need a lawyer to deal with this, come on. You cannot prosecute patents one weekly MeFi question at a time. Even if we were qualified (and some of us definitely are), we could not advise you at the level of precision you need. I agree with lmindful that you are seriously jeopardizing the viability of your patent going forward if you insist on your DIY approach. The patent pro bono program may work well for you if you are seriously not in a position to afford counsel, but generally speaking a patent is part of a commercial endeavor and if it is worth pursuing, it is worth paying for competent representation to make sure it is a solid asset.
If you need an estimate to determine whether you can afford a non-pro-bono attorney to work on your matter, call around to a couple smaller firms and ask if they an help with someone in your situation. The specific service you are looking for is called "patent prosecution." Any IP firm will recognize that term of art and be able to tell you if they do it. You can find small IP firms via referral services here (for NY state generally) or here (for various large urban areas in the state, including NYC).
posted by Joey Buttafoucault at 11:43 AM on February 8, 2016 [3 favorites]
If you need an estimate to determine whether you can afford a non-pro-bono attorney to work on your matter, call around to a couple smaller firms and ask if they an help with someone in your situation. The specific service you are looking for is called "patent prosecution." Any IP firm will recognize that term of art and be able to tell you if they do it. You can find small IP firms via referral services here (for NY state generally) or here (for various large urban areas in the state, including NYC).
posted by Joey Buttafoucault at 11:43 AM on February 8, 2016 [3 favorites]
Thirding what Imindful and Joey said above, particularly "... generally speaking a patent is part of a commercial endeavor and if it is worth pursuing, it is worth paying for competent representation to make sure it is a solid asset." I'm one of the patent attorneys from your question last week. Please feel free to memail me if you're looking for a NYC patent attorney.
posted by JimN2TAW at 12:13 PM on February 8, 2016
posted by JimN2TAW at 12:13 PM on February 8, 2016
Response by poster: Does anyone have an estimate of the costs of fixing this issue via a lawyer? Is it something on the order of 500 dollars, or can it be less, depending on the firm?
I am not sure how long the USPTO pro-bono application takes, but I don't have much time left until the deadline given by USPTO. Remember, I was hoping to get another year of patent pending status.
posted by spacefire at 2:32 PM on February 8, 2016
I am not sure how long the USPTO pro-bono application takes, but I don't have much time left until the deadline given by USPTO. Remember, I was hoping to get another year of patent pending status.
posted by spacefire at 2:32 PM on February 8, 2016
See, spacefire, you haven't really indicated what is wrong with your application as it is now. You mention the headings, but that's meaningless and unimportant. Without knowing what the problem is, no one here can give you an estimate.
Your comments such as "adding more information to my application can be done with amendments, which seems like a very complicated and prone to error process" and "Will they ask me to fix it later if they don't feel like enough information is provided or will they reject the application?" show that you really don't know much about the patent application process. Get help.
posted by JimN2TAW at 3:50 PM on February 8, 2016
Your comments such as "adding more information to my application can be done with amendments, which seems like a very complicated and prone to error process" and "Will they ask me to fix it later if they don't feel like enough information is provided or will they reject the application?" show that you really don't know much about the patent application process. Get help.
posted by JimN2TAW at 3:50 PM on February 8, 2016
This thread is closed to new comments.
You clearly need to speak with a patent lawyer about your application. Please check out the USPTO's patent pro bono program. Feel free to memail me if you want information on the NYC branch of this program.
posted by lmindful at 10:33 AM on February 8, 2016 [5 favorites]