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Can I Add to My Invention? Continuation Patent Application

What if you come up with ‘new subject matter’ for your invention after you’ve already filed a non-provisional?  No problem – the USPTO accounts for this and allows what is known as “continuation-in-part” (CIP) applications.  CIP applications allow you to expand the scope of your patent application while it’s still pending, without losing the patent priority date you have established for the subject matter of the original or “parent” patent application.  Typically, unless you’re adding a lot of new subject matter in the CIP, they are not as expensive as an originally filed patent application.

Take, for example, that you have two pending provisional applications.  One of the  If you are looking to save money, you can file just a single non-provisonal application that claims priority to both of those pending provisionals.  However, the ‘subject matter’ you enter into examination (known as “claiming”) should only be of one of the provisional applications.  By claiming priority to both the provisionals, you have the entire duration of the examination period (sometimes, up to 3-5 years) to enter into examination (or “claim”) the subject of the second provisional application.  This is a good way to extend the tendency of your applications until you enter development.

For example, as the Business Method patent will not likely change, I would recommend you start a non-provsional filing on the business method. Then, you will have an additional two years to enter the System Patent into examination.  This will give you plenty of time to develop, test, update, implement the system before the non-provisional filing for the system.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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