Can You Replace a Patent Application?

When an inventor makes changes to their invention, they often times ask if they can “replace” or “amend” their existing patent application filed with the U.S. Patent Office to include the new subject matter.  Unfortunately, once a U.S. patent application is filed, the applicant is limited to making only minor changes and cannot add any new subject matter.  Hence, you cannot amend or replace a patent application to include new subject matter.

 

Option 1: File a Continuation-In-Part Application

If you have new subject matter that you want included in a previously filed provisional or non-provisional patent application, your best option is to file a continuation-in-part patent application that claims priority to your original patent application and that includes the additional subject matter.  A continuation-in-part application is different from a continuation application in that new subject matter is being added to the application.  Filing a continuation-in-part patent application allows you to retain your earlier filing date for the common subject matter between the two patent applications while also allowing you to add the new subject matter.  Keep in mind that the new subject matter added in the continuation-in-part patent application will not typically be able to claim priority to the earlier patent application and instead will be given the continuation-in-part’s filing date.  As always, talk to a patent attorney in situations like this to avoid making costly mistakes.

 

Option 2: File a Second Provisional

If you have new subject matter that you want included in a previously filed provisional patent application, you can file a second provisional patent application that includes the new subject matter.  It is generally recommended to simply add the new subject matter to your original provisional patent application and then file the second provisional patent application.  It is important to note that a provisional patent application cannot claim priority to a prior filed provisional or non-provisional patent application, so you will have to file your non-provisional patent application within the one-year deadline of the first provisional patent application (your non-provisional patent application will claim priority to both provisional patent applications).  As always, talk to a patent attorney in situations like this to avoid making costly mistakes.