Patent

[Allan12]

What is the name of your state (only U.S. law)? California

How specific and consistent do the claims need to be with the entire specifications I made an error (if it's an error I don't know) I described in the specifications only one material my invention can be made of but in the claims I broadened the material to any other materials suitable for this invention can be used tetc.

like for example your "invention is a broom and in the specifications I wrote a broom made of wood and plastic and only in the claims section I describe the broom made of any other materials suitable for sweeping"

I don't know if this makes sense it's really hard to describe my issue without disclosing my invention

 

[Allan12]

What is the name of your state (only U.S. law)? California

How specific and consistent do the claims need to be with the entire specifications I made an error (if it's an error I don't know) I described in the specifications only one material my invention can be made of but in the claims I broadened the material to any other materials suitable for this invention can be used tetc.

like for example your "invention is a broom and in the specifications I wrote a broom made of wood and plastic and only in the claims section I describe the broom made of any other materials suitable for sweeping"

I don't know if this makes sense it's really hard to describe my issue without disclosing my invention

Because I hear the claims has to be consistent with the entire specification and in the Specifications I only described one material and in the claims I described different materials it can be made with is this an error or am I fine?

 

[quincy]

What is the name of your state (only U.S. law)? California

How specific and consistent do the claims need to be with the entire specifications I made an error (if it's an error I don't know) I described in the specifications only one material my invention can be made of but in the claims I broadened the material to any other materials suitable for this invention can be used tetc.

like for example your "invention is a broom and in the specifications I wrote a broom made of wood and plastic and only in the claims section I describe the broom made of any other materials suitable for sweeping"

I don't know if this makes sense it's really hard to describe my issue without disclosing my invention

You should have added these latest patent questions to your other thread: https://forum.freeadvice.com/patents-104/pct-accelerated-637332.html

Your specification needs to provide information enough and be specific enough so that someone can read it and be able to build your invention. The specification needs to be written, as per section 112, "in such full, clear, concise, and exact terms as to enable any person skilled in the art ... to make and use" the invention.

The claims must be consistent with the specification description but the claims can be broader (or narrower) in scope. The terms and phrases used in the claims, however, must find clear support in the specification's description.

Your specification appears to have unintentionally limited the scope of your invention. You want your claims to set the scope of your invention.

Because you can always amend your claims during prosecution but the specification generally cannot be amended, you might find you want to tweak your specification.

If you have not already submitted your application - and from your earlier thread it appears you haven't - I recommend you have a patent attorney or a patent agent personally review and assist you with your application.

Good luck.

 

[Allan12]

Patent pending

I already submitted my patent application and waiting for examination to be more specific is in my Specifications I wrote that my invention is made of high density foam I wrote it clear and concise but the problem is is that it can be made of other materials too which I did not mention in the Specifications only in the claims I mentioned and wonder if this is ok that it's just broadening what other materials it can be made of I'm hoping to solve this issue here so I don't have to spend 500 plus dollars on a patent lawyer

 

[quincy]

I already submitted my patent application and waiting for examination to be more specific is in my Specifications I wrote that my invention is made of high density foam I wrote it clear and concise but the problem is is that it can be made of other materials too which I did not mention in the Specifications only in the claims I mentioned and wonder if this is ok that it's just broadening what other materials it can be made of I'm hoping to solve this issue here so I don't have to spend 500 plus dollars on a patent lawyer

I fear you may have limited the scope of your patent to the materials mentioned in your specification.

As I said earlier, you can amend your claims during prosecution but you generally cannot amend your specification.

You will want the advice and direction of a patent agent or attorney in your area. A personal review of the application you submitted is necessary. Patent agents are less costly. If you have a law school near you, you might find a benevolent IP law professor willing to look over your application.

Good luck.

 

[Allan12]

Problem with examiner

Yes but is this a big issue will my patent be rejected because I limited the materials to only 1 in the Specifications and only in the claims section I mention other materials that it can be made in thinking if just abondoning the patent and resubmitting a new one or if I can add a child application CIP patent?

 

[Allan12]

Yes but is this a big issue will my patent be rejected because I limited the materials to only 1 in the Specifications and only in the claims section I mention other materials that it can be made of is it that the section where you would broaden your terms that's why I only put it in the claims section I'm thinking if just abondoning the patent and resubmitting a new one or if I can add a child application CIP patent?

 

[Allan12]

Yes but is this a big issue will my patent be rejected because I limited the materials to only 1 in the Specifications and only in the claims section I mention other materials that it can be made of isn't claims the section where you would broaden your terms that's why I only put it in the claims section and did not mention it in the Specifications I'm thinking if just abondoning the patent and resubmitting a new one or if I can add a child application CIP patent?

Sorry for the multiple responses of the same reply I don't know how to re edit the replays and delete them

 

[quincy]

Yes but is this a big issue will my patent be rejected because I limited the materials to only 1 in the Specifications and only in the claims section I mention other materials that it can be made in thinking if just abondoning the patent and resubmitting a new one or if I can add a child application CIP patent?

It really depends on how you wrote your specification describing your invention and how the claims are written.

The patent will not be rejected because it limits construction materials. Your claims might need to be amended to be consistent, however.

Again I recommend a personal review to determine how best to proceed. This personal review can help you determine if filing a continuation-in-part application (CIP) is an option worth considering.

 

[Allan12]

The problem was that my invention can be made of many many different materials to many to count and can be made of ones that I do not even know so in my Specifications I mentioned one main one and thought that in the claims to add all materials that it can be made off like "High density foam or any other material suitable for..." I really appreciate your responses there very helpful I hope to solve this thanks

 

[quincy]

The problem was that my invention can be made of many many different materials to many to count and can be made of ones that I do not even know so in my Specifications I mentioned one main one and thought that in the claims to add all materials that it can be made off like "High density foam or any other material suitable for..." I really appreciate your responses there very helpful I hope to solve this thanks

I understand your concern. If you did not unintentionally limit your invention to a single construction material, instead leaving different materials available for constructing your invention to the claims, the claims work to broaden the scope of your invention.

Again, I recommend you have a personal review. Your claims can always be amended so I do not see them as the problem your specification might be.

It is unfortunate that you did not have a review by a professional prior to submission ... but it is what it is.

 

[Allan12]

Thank you

Thanks again your answers have been very helpful

 

[Allan12]

Last thing

Do you know how long the examiner gives you to amend your claims?

 

[quincy]

Do you know how long the examiner gives you to amend your claims?

It can depend on the reason for the office action on the application. An applicant can file a response within 3 months of an office action on the application but the response (for example, amending the claims) can be extended for up to 6 months.

You would be smart to consult with a patent professional in your area.

 

[Allan12]

Thanks

Got it boss thanks for your help really needed it