Related Patent Applications: Everything You Need to Know
Related patent applications are filed after the original application is made but before the patent is issued.3 min read
2. How Do You Get a Patent?
3. Who Grants Patents?
4. Do I Need a Patent Attorney?
5. Types of Related Patent Applications
Related patent applications are filed after the original application is made but before the patent is issued. An inventor might want to file a related patent for a technology that improves on the initial design. This allows him or her to avoid filing a new application.
What Is a Patent?
To understand the concept of a related patent, you must first understand patents in general. A patent is a legal document that grants an inventor exclusive rights to his or her invention for a period of time, usually 20 years. This protection only applies in the country or region that granted the patent. The definition of an invention, in this case, is a product or process that details a new way to do something or solve a technical problem. In exchange for this protection, the inventor must publicly disclose the invention.
How Do You Get a Patent?
To get a patent for your invention, you must meet certain requirements and conditions.
- Novelty: The invention must have new characteristics previously unknown to the field. The body of existing knowledge is called prior art.
- Non-obvious: The new creation must involve something that is inventive and unable to be deduced by a person with ordinary knowledge of the field.
- Industrial application: A particular industry must be able to use the invention in a way that goes beyond the theoretical.
- Patentable: Certain types of technology is not patentable in most jurisdictions. Some examples are scientific theories, mathematical methods, and discovery of naturally occurring substances.
- Sufficiently clear: The application must be clear and complete enough that a person with ordinary knowledge of the field can replicate it.
Who Grants Patents?
Patents are granted by a designated office in each country or by a regional office that handles the process for multiple countries. Some examples are the African Intellectual Property Organization (OAPI), the African Regional Intellectual Property Organization (ARIPO), and the Eurasian Patent Organization (EAPO).
In a regional system, the inventor applies for protection in one or more of the member entities served by that organization. Patent applications of all types are processed by a regional office are equal to those handled by a national office if all the requirements of the regional office are met. No system exists to grant a universal or international patent.
Do I Need a Patent Attorney?
While inventors can prepare their own applications, it's not advised. Patent law is complex, and documents are complicated. Getting help from a patent attorney or agent greatly improves your chances of successfully completing the process. In some countries, applicants who live outside that country are required by law to have the representation of an attorney or agent who is qualified in that country. That usually means the professional has a practice and/or resides within that country. National and regional patent offices can provide lists of qualified attorneys and agents.
Types of Related Patent Applications
Three types of related patent applications are available to inventors.
- Continuation-in-part (CIP) patent law allows inventors to add an improvement to an original application. The package includes the original invention and claims with a first-priority date and the new information, using the date of the CIP filing. A CIP must be filed before a patent is granted to the original.
- Divisional applications usually evolve from the original application. Examiners at the United States Patent and Trademark Office (USPTO) sometimes find that a single application includes more than one invention. In that case, the inventor has to determine which claim to focus on. He or she can choose to file a divisional application on the other claims.
- Continuation applications involve filing a new application based on an earlier one when there is no new disclosure but a different set of claims. This happens often when an inventor is having trouble getting the original claims approved and accepted by the examiner. Usually, the applicant only gets one chance to amend the original. After that, he or she must appeal to the Board of Patent Appeals and Interferences, which is a panel of three examiners. This process is difficult, and you want to avoid it if it all possible. This is the reason for the continuation process.
If you need help with filing a related patent application, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.