patent continuation



I filed a patent application a month ago. Now I found a simpler way of doing very similar thing to what I had described, basically eliminating one of the main 3 blocks of the invention. So I'm going to file another patent application claiming priority to the first one. My disclosure was characterized as a preferred embodiment with multiple alternatives for the various aspects of the invention. I wonder what's the best approach to introduce this added matter:

  • describe it as another alternative to one of the aspects of the invention. One of the blocks is optional, that will involve some small changes elsewhere to get similar results, not exactly the same.
  • describe it as a separate new embodiment of the invention. All is the same as the preferred embodiment with exception of the removed block, small changes elsewhere, and slightly different outcome.

Is there any advantage to one or another?

Also, I wonder, if what the invention does is similar but different, at what point would a that become a new invention?


Posted 2013-03-28T13:45:19.907

Reputation: 393

Can you please clarify if your jurisdiction is the USA? If so, can you clarify whether your first filing was a provisional patent application or a utility application? – PatKilg – 2013-03-28T16:02:03.070

I filed the patent application in the UK. I know that here during the first 12 months I can file another application and claim priority to the first one. Common information to both applications will retain the first filing date. I guess that it's similar to a continuation-in-part in the US. – martinako – 2013-03-29T14:06:55.063



Calling something a variation on an embodiment vs calling something a different embodiment is not likely to make a real difference. The important thing would be to get all of these different ways to do it with their slightly different outcomes on paper.

The issue of something being a different "invention", technically, will be how the examiner (I am assuming this is a US patent law question) sees it in a restriction requirement that they might issue. They could say that two embodiments were two species of an invention or could call them two inventions. In the rest of the world they have the "unity of invention" principle that they use to decide if two things belong together or not but for the US it is more arbitrary. However none of that is a first-order issue when you are drafting the application.

George White

Posted 2013-03-28T13:45:19.907

Reputation: 21 648

Ok, thanks, I think I'll just add the new embodiment as another variation – martinako – 2013-04-02T09:53:04.377

What about priority dates though? – matt – 2013-12-27T19:14:46.070