Often I will get a new client with a bad pending software patent application for a valuable invention. The invention is usually successful commercially, and solves a real problem. However, because the original patent application did not adequately describe the invention, the application is stuck in examination and a patent is unlikely to be allowed unless the claims are so narrowed as to render the resulting patent useless.
There are two main causes of this problem. First, the original application may not have used the wrong language in describing the invention. Inventors usually describe their inventions in terms of how they implemented the invention. As a result, they may use common terms for the data structures and algorithms that are employed to code the invention. When these common terms are examined as part of the patent application, the patent examiner usually finds a few dissimilar inventions that together include all of the common terms of the application's invention, but that perform different functions. The Examiner then rejects the application as obvious, and rightly so, because the language of the application hasn't captured the unique, patentable aspects of the invention.
A second cause of an application for a great invention being stuck is that the original application has captured only one level of depth for the invention. Patent applications should include multiple levels of detail for the key inventive elements, ranging from a high architectural level to several lower levels that describe implementation options. However, if only the high level description is included in the application, the claims of the application may be rejected as obvious in light of dissimilar inventions with similar a high-level architecture.
These defects don't have to be fatal to the patent prospects of a great invention. The original omissions can be corrected by filing a continuation-in-part application. The continuation-in-part application claims priority to the original application that it is correcting. The original drawings and descriptions are included, and all original material has the same effective filing date as the original application.
The continuation-in-part also includes new drawings and descriptions with the details needed to distinguish the invention from the inventions cited by the examiner. This new material has an effective filing date of the filing date for the continuation-in-part. Although this filing date is later, the new continuation-in-part application can have the properly structured descriptions and the multiple levels of detail that will support moving the application forward to allowance. As a result, a broad, valuable patent for the invention can be obtained.
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