Revising a Patent After Getting Legal Protection
If you have successfully obtained patent protection for an invention, you may feel that the process is over. This is often true, but sometimes an inventor will need to revise the patent later. The good news is that they generally will not need to file an entirely new application and restart the review process. There are two main types of amendments: amendments to the names of inventors and amendments to the claims of the patent. Amendments to the names of inventors typically result from mistakes when the application was filed, while amendments to the claims may result from changes to the invention after it received patent protection.
Amendments to Names
When several people or entities work together on an invention, a patent may not bear the names of the correct owners. For a patent to be valid, however, it needs to bear the names of all of its owners. You will need all of the names to enforce your patent rights in any infringement action that becomes necessary in the future.
You can alter the names of the patent owners by sending a Recordation Cover Sheet to the Assignment Recordation Branch of the U.S. Patent and Trademark Office (USPTO). The process is the same regardless of whether the patent is under examination or already has been granted. Once the Assignment Recordation Branch changes the names on the patent, they will send you a confirmation. You can submit the Recordation Cover Sheet online by using the Electronic Patent Assignment System.
In addition to your request to change the names on the patent, you will need to submit copies of the patent and any other documents that show its ownership. Sometimes the USPTO will request additional information to confirm ownership before making the change.
Amendments to Claims
You can change the claims of a patent without filing a new application unless you are making a new claim. If you are making a new claim, you will need to file a new patent application. Federal regulations governing the USPTO provide specific rules for amending patent claims. A common example of an amendment involves providing revised drawings to the USPTO. Changing the written claims also may be essential to protect your patent rights against infringement or in any court proceedings related to the patent.
An inventor can consult 37 C.F.R. 1.121 to review a full list of the components of an application that they can amend. They will need to file the amendment by motion. To make sure that they are following the applicable rules, the inventor may want to contact the general clerk’s office.
These types of amendments to patents are relatively rare. They most often arise when an inventor finds out that they did not describe their claims with optimal accuracy. Sometimes they may consult an attorney for advice on how to describe the claims more precisely while staying within the limits of the rules. An attorney also can advise them on how to craft an amendment in a way that does not create a new claim that would require filing a new application.
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