Can I Make Changes to My Patent Application After Submission?

Filing a patent application can feel like a major milestone, and it is. It’s the culmination of hours of innovation, drafting, and meticulous documentation. That said, you may wonder what happens if you notice a mistake after you’ve already submitted your patent, or your invention has evolved since submission. Continue reading and reach out to Lemler IP to learn more from a knowledgeable New Orleans, Louisiana patent lawyer. Here are some of the questions you may have:

What Types of Changes Can I Make to a Patent Application?

Once a patent application has been filed with the United States Patent and Trademark Office (USPTO), the ability to make changes becomes limited, but not impossible. The kinds of modifications you can make depend on the type of application you’ve submitted and where it is in the review process.

For instance, if you’ve filed a non-provisional application, you may be able to submit changes in response to a USPTO office action. These are typically amendments aimed at clarifying language, adjusting claims, or providing additional information requested by the examiner. However, there’s a crucial catch–you generally can’t introduce new matter. “New matter” refers to information that wasn’t included in the original application. If you try to add something that wasn’t there before, the USPTO will likely reject it.

On the other hand, if you need to include completely new information, you may need to file a continuation-in-part (CIP) application. This type of application allows you to incorporate new material while maintaining the benefit of the original filing date for the parts that remain unchanged. However, any new content will be assigned a new effective date, which can impact patent protection and enforceability.

When Is the Best Time to Make a Change?

Timing is key when it comes to amending a patent application. If your application hasn’t yet been examined by a patent examiner, you may still be able to correct errors or make certain updates through what’s known as a preliminary amendment. These are usually submitted shortly after the original application and before substantive examination begins.

Once the examination process starts, any amendments must be made in response to communications from the USPTO, usually through an office action response. These amendments must be carefully crafted to comply with USPTO rules and to preserve the strength of your application. Acting early gives you more flexibility, but it’s also important not to rush and risk submitting an incomplete or inaccurate application in the first place.

Do I Need a Lawyer to Help Me Make Changes?

While it’s possible to amend a patent application on your own, it’s not recommended, especially when dealing with complex intellectual property issues. Patent law is highly technical, and even small mistakes can lead to costly delays or outright rejection of your application. From drafting responses to office actions to determining whether a continuation-in-part application makes sense, a knowledgeable attorney in your corner can make all the difference.

If you require assistance with your patent, simply contact Lemler IP for an initial consultation today.