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New set of claims and a division of my NPA into 2-3 NPAs.

New set of claims and a division of my NPA into 2-3 NPAs.
« on: April 30, 2019, 07:32:25 PM »

first thank you very much Brad for this very informative forum and your kind answers!

Please, let me ask my next question.

Almost one year ago I submitted 3 NPAs. in November 2018 all my patent applications were published (I can share publication numbers in PM). First action is intended for 12/2019.

Right now I figured out that one my NPA contains several inventions. Indeed this NPA have 6 independent and 48 total claims. I would like to divide claims into 2-3 NPAs with no changes in specification and figures. In addition, I figured out that some claims are written too broad.

I am intending to have <20 claims with less then 3 independent per each application, so that I can get a review from USPTO before the first action.

There is no changes in the patent/drawing, I have just another set of claims.

So, it is clear that I should make divisional.

Please, advice how to do with the claims. Is there any special procedure to

1. remove claims
2. substitute claims.

Thank you!
« Last Edit: May 01, 2019, 06:38:40 AM by manngraf »


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Re: New set of claims and a division of my NPA into 2-3 NPAs.
« Reply #1 on: May 01, 2019, 10:03:12 AM »
Have you already paid the USPTO for the extra claims?   If so, I would keep them all together to see if you can get "lucky" and have the examiner review all of them in your first application.   If the examiner thinks there are multiple inventions he/she will give you a restriction requirement forcing you to pick one invention for examination.    You then have the option to file a divisional application anytime while the first application is still pending.

If you did not care about spending the extra money now, you could cancel your old claim set and file the divisional applications now but personally I would not do this as it seems like a waste of money if you already paid for the extra claims in the first application.

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Re: New set of claims and a division of my NPA into 2-3 NPAs.
« Reply #2 on: May 01, 2019, 03:08:27 PM »
Dear Brad,

thank you very much for your kind answer!

The main reason to redraw the claims is to participate in the First Action Interview Pilot Program.

The second reason - I got first action from EPO and it seems that EPO examiner completely ignored my specification (60 pages) and drawing (30 pages), and just read claims. Since the claims were not perfect, I got negative answer that my invention is not unique, and examiner reviewed only 3 claims (including dependent) considered other claims as different invention(s).

Right now I am writing the answer to EPO with the next set of claims that restrict my application to one invention and worrying that USPTO can behave similarly.




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