Philadelphia, PA asked in Intellectual Property and Patents (Intellectual Property) for Pennsylvania

Q: What is the likelihood of a patent holder being granted a second patent for a variation of his first patent?

If someone else filed for that second patent, I would argue that given my patent, that the second patent is obvious but it really isn't that obvious and I want to be the one to file before someone else does. An analogous example: Think of the old power line communications technology where using a house's electrical wiring, a specialized light switch sends signals to modules plugged into wall sockets that have lamps plugged into them, instructing the modules to provide or remove power. That's patent #1. Now since that's my patent (in this example), I realize that I can go one step further using the same technology but rather than a module plugged into a wall socket accepting commands, a device (e.g., printer, toaster, dishwasher) would accept commands and I would license the technology to the manufacturers, and have several commands rather than just "on and "off". So if #2 is obvious, will the PTO be more "understanding" of my argument to distinguish since I own the original patent?

2 Lawyer Answers
Peter D. Mlynek
Peter D. Mlynek
Answered
  • Patents Lawyer
  • Moorestown, NJ
  • Licensed in Pennsylvania

A: This happens all the time.

Patent 1 is for an invention, patent 2 is an improvement to that invention. You can file an application to patent 2 as a CIP of the first application, or you can add a TD in the second filing, etc. Talk to your patent attorney more about this.

Good luck!

Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: You asked -- So if #2 is obvious, will the PTO be more "understanding" of my argument to distinguish (my second patent application) since I own the original patent?

In general, the USPTO treats your actions (sales, public uses, and public disclosures) the same as the the actions of others with respect to being prior art to the second patent application. In fact, it is normal that for your second patent application, your earlier product or published applications are the prime items used by the PTO. They search for all earlier patents by each inventor as a matter of routine when looking at a new patent.

The one exception is that your publications (including the published application or issued patent) do not count against the second patent application IF and only IF your second patent application is filed within a year of the publication. If you file after a year, then your earlier publication counts against you with no deference on account to your ownership.

So -- if you have not sold the item described in patent 1 and have not made any public uses of that device (including trade shows and company presentations as Shark Tank like events), then you need to file a second patent application within a year of your earliest publication (which may be your first patent application or may be something you posted on your web site).

NOTE -- the first answer referenced a CIP which would not apply in your fact pattern unless you had kept a continuation pending before your first patent issued. If your first patent issued without a pending continuation then that patent family is closed and you cannot file a CIP.

NOTE -- the Bell patent for the telephone was issued a long time ago and people still file improvements to that product so it is possible that your improvements may surpass the test for being non-obvious.

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Kevin E Flynn

Peter D. Mlynek agrees with this answer

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