Patent and Invention Help Forum

Patent and Inventing Discussion => Patent Questions and Advice => Topic started by: j0rge on January 06, 2020, 07:41:58 AM

Title: Improvements to an old patent I have
Post by: j0rge on January 06, 2020, 07:41:58 AM
I am new in this forum!! Firstly, best whises for all of you and all the best for this new year.

I have some questions, I would appreciatte if you can help me.

I few years ago (4-5) I filled a patent application. It was granted in Spain, and I also made the US Patent, which I abandoned a few time later.

Now I have an improvement of that technology, I would change just a part of the element.
The invention was about a kind of hand tool with replacements or interchangeable elements, the invention has diferents parts (A + B + C + D). Where parts A+B+C are the hand toll and part D is the replacement.
So now, the improvement of the invention is to change D, I change it for 2 new parts E+F.
So old part D is substituted for new parts (E+F). Where E is quite similar to D changing some geometry. More exactly old part D has a thread and new part E do not has that thread (I eliminate the thread in the new improvement). And part F attached to part E.

Also this part E or the old part D. Can be a replacement for the whole invention.
So the main elements are A+B+C and the replacement or interchangeable elements are D (old and existing patent) and E+F (new patent with the improvements)

I have some doubts:
1) Would it be better if I fill a new patent for the whole system with the new improvement, (this would be similiar to the existing patent (granted and active in Spain), but we will add the new improvement)?
2) Would it be better to fill a new patent just for the replacement part?
3) Would it be better to fill both? Point 1) New patent for the whole system with the new improvement Option1 + Point 2 a new patent for the replacement part? I mean both patents, one for the system and other for the replacement.
4) Would it be better to make an addition to the existing and old patent I made a few years ago? I mean to make a patent of addition.

If the best strategy would be 1)
       - in background of invention, should I mention the old patent I made?
       - would my own patent (prior art) affect to the new patent I want to fill? I mean, Would it cause a problem?
       - what would happen if in the future (12 months after) I want to extend it to US or another country? The old patent I made is active and alive in Spain but not in other countries. Could I protect the new invention (new improvements) to other countries? If yes, I guess it only would protect the new improvement, old patent in the rest of the world would be consider as a public domain. But in this case, I guess it would protect the entire tool (tool+ replacement).

If the best strategy would be 2)
        - in background of invetion, should I mention the old patent I made?
        - I guess it limit the scope to just the replacement. I mean it would protect the replacements of interchangeable elements, but anyone could make the tool with this new replacement?

If the best strategy would be 4)
       - how could it affect to the existing patent? I mean it works as it was patented so firstly I could have to versions a) old system b) the same tool with the new improvements. Could I have both options if I make a patent of addition?
       - what about extending it to another countries? actually is public domain or abandoned. I suppose I can not revive that old patent. So if a make an addition could I protect to those countries?

If you have any questions, or something is not clear enough, please let me know it.

I hope you can help me with those doubts.

Thanks and Regards.
Title: Re: Improvements to an old patent I have
Post by: Brad on January 11, 2020, 08:34:31 AM
Sorry I do not have time right now to asnwer all of your questions but in general I would file the entire original patent again but add in your new elements and make sure your claims section of your new patent includes claims that focus on the new element.

Now, the problem is that making minor changes like removing or adding threading to a piece is usually considered routine and "obvious" in which case your old patent would become prior art and be used to reject your new patent.

These minor improvement patents are very difficult (but not impossible) to get approved.   They are usually very expensive as there are many rounds of back and forth with the patent examiner.