Patent Amendments

By Lia Kopin-Green
/
August 9, 2022

What are Patent Amendments?

In intellectual property law, amendments are known as additions or changes to an existing patent or patent application. Patent amendments are allowed by the United States Patent and Trademark Office (USPTO) provided that no new matter is included in the amendment request. In other words, United States law will not accept patent amendments that reflect new improvements to the invention or creation. Instead, in these cases, you will be forced to file a separate patent for any additional inventions or improvements. For this reason, patent amendments typically apply to the patent application itself. In order to clarify details about the invention, specifications are sometimes added or subject matter is removed from the application. 

Key Takeaways

  • Patent amendments are modifications to existing patents or patent applications
  • United States law allows for patent amendments that do not introduce any new matter to the existing patent. Separate patent applications would need to be filed for any significant changes or modifications.
  • You will likely be required to make certain amendments if your patent application was rejected.

Patent Claim Amendments

A patent claim is a key part of a patent application that defines the boundaries of protection for an invention. Simply put, the claim includes the exact features of the invention or creation that are sought to be protected by the patent. You may wish to make certain changes to your patent claim after your application has already been submitted. However, keep in mind that this is a very slippery slope. First of all, it should be noted that your claim will likely be rejected if you choose to add additional coverage about new subject matter. Moreover, you will also need to ensure your claim includes the correct amount of features, since adding too many or too few features can result in a rejection of the claim. Another example of a claim amendment involves modifying certain drawings or diagrams that were originally included in the application. 

Although claim amendments are generally rare, sometimes they are necessary if the applicant realizes they did not accurately describe their invention’s claims. You may choose to seek the advice of an experienced intellectual property lawyer who can help you accurately describe your creation's features while staying within the correct USPTO limits.

Amendments to Names

Oftentimes, more than one individual or corporation may work together on the same invention. In order for the patent to be valid, all of the relevant entities’ information must be listed on the patent application. If an infringement issue arises in the future, it will be easier to enforce patent rights if all the necessary names are included in the patent application. 

You can add or change names of patent owners by submitting a request to the USPTO. They may ask for proof of ownership before officially adding any new names to a patent application.

Bottom Line

US patent amendments can be tricky, since it can be hard to determine whether the amendment is necessary and if it meets the conditions for possible amendments. Despite the simplicity and cost efficiency of amending claims, they are not always an option, depending on your circumstances. To learn more about patent amendments and how to achieve them, contact an intellectual property attorney at Attorney At Law.

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