Can You Change a Patent Application After Filing?

December 27, 2022
- Patent Drafting & Illustrations
- Patent Prosecution

Introduction

The answer to this question is not that simple. Whether you can change a patent application after filing depends upon the subject matter and the changes that you are going to introduce in your patent application. To better understand, we will first discuss why there is a need to change a patent application after filing.

Why there is a need to change a patent application after filing

When an applicant or inventor filed a patent application for their invention. New ideas might strike to inventor after patent filing and now the inventor may want to introduce this new idea in its filed patent application or the inventor introduces new features in its product prototype whose patent is already filed and now wants to include these new features in its already filed patent as well. Fortunately, the patent office allows amendments to the filed patent application under some conditions and restrictions that we will discuss in the next section.

Rules and conditions for the amendments in a patent application after filing

There are mainly two areas where the applicant wants to make changes in the already filled patent application.

The first is the name of the inventor or owner of the patent application.
The second is the description, drawings, and claims of the patent application.

1. Rules and conditions for amendments in the name of the inventor or owner of the patent application:
Most of the time the applicant makes mistakes when submitting the name of the inventor or owner for the patent application. Especially, when multiple inventors or owners are involved. This can cause legal issues in the future because according to the patent office law, the applicants are required to disclose all the inventors for a patent to be valid.
Luckily, the inventor or owner of the patent application can sort out this error even after the patent application is already filed. The inventor or owner can submit a Recordation Cover Sheet to the patent office. The patent office will process the Recordation Cover Sheet and update the respective patent application.
2. Rules and conditions for amendments in the description, drawings, and claims of patent application:
Let’s come to the scenario where the inventor wants to make changes or add new features in the description, drawings, and claims of the patent application that is already filed in the patent office.
For changes and amendments in the description of the patent application (already filed), the inventor or applicant can resolve any grammar mistake and error in the paragraph number, Also, the applicant can add or delete words, sentences, and the paragraph under the condition that these newly added texts in the description of an already filed patent application must not disclose any new subject matter. In other words, the applicant can add or delete the text of the description only to support and to well explain the claims and drawings of the patent application.
Similarly, for changes in the claims of the patent application (already filed), the applicant can only add or delete subject matter that can be defined by the description or drawings of the patent application (already filed). This means, the scope of the new application claim after adding or deleting the subject matter must be within the scope of the subject matter that is disclosed in the original patent application description, drawings, or claims.
For changes in the drawings of the patent application, the applicant is only allowed to make corrections in the drawing labeling. The applicant can introduce only those new drawings that can be defined by the original patent application description or claims. The applicant is not allowed to add any new feature or component in any drawing of the patent application (already filed).
From the above rules and conditions, it is quite clear that the patent office allows making changes in the inventor or owner name of the patent application even after filing. Also, the applicant can make minor changes to the patent application (that has already been filed). However, the patent office does not allow the addition of new subject matter in the patent application after filing.
But there are some methods and processes that applicants can use to add new subject matter to the existing patent application after filing. We described these methods and processes in the next section.

Methods and processes to change a patent application after filing

The applicant can add new subject matter to its existing patent application after filing by using two methods and processes.

Continuation in part (CIP)
A Provisional and non-provisional application

1. Continuation in part (CIP):
The applicant can add new subject matter by filing a continuation in part application or CIP. The CIP allows the applicant to add new subject matter or new invention features with parent application specifications. The applicant can claim based on the new subject matter added in the continuation in part application. However, it is important to mention that newly added subject matter and new claims in CIP are entitled to the filing date of the CIP application whereas the existing subject matter and claims of the parent application disclosed in the CIP are entitled to the parent’s priority date.
2. Provisional and non-provisional application: |
The applicant can file a provisional application in the subject matter of the invention is disclosed. After that in the upcoming 12 months, the applicant can file a non-provisional application and claim the subject matter that was disclosed in the previous provisional application. The non-provisional application and claims will be entitled to the filing date of the previously filed provisional application.
However, if the applicant wants to claim a new subject matter that was not disclosed in the previously filed provisional application, then the applicant must disclose it in the non-provisional application. After that, the applicant can claim the newly added subject matter in the non-provisional application. It is quite important to note that the subject matter and claims based on the provisional application are entitled to the provisional application filing date. However, the newly added subject matter and claims of the non-provisional application that were not disclosed in the previous provisional application are entitled to the non-provisional application filing date.

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