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I filed a patent application and now want to add a new feature. What are my options?
Amendment, a fresh application, a divisional or a patent of addition - which one is even possible depends on what you filed, its status, and whether the feature was already described.
You can usually include the feature in the complete specification - but it may not get the provisional's date.
Moderate complexity - several routes or missing facts
Please review this with an advocate, patent attorney or registered patent agent before you act. Do not rely on this answer alone.
Under section 11, a claim gets the provisional's priority date only if it is fairly based on matter disclosed in the provisional. Otherwise its date is the date the complete specification is filed.
- File the complete specification within twelve months of the provisional (section 9(1)).
- Claims to the new feature will usually be dated from the complete specification. Anything made public before that date - including your own paper, demo or launch - can be cited against those claims.
- If you filed two or more provisionals for cognate (closely related) inventions, the Controller may allow one complete specification for all of them, with the twelve months counted from the earliest (section 9(2)).
- If the feature is really a separate invention, a separate application may be cleaner.
- Keep the new feature confidential until it is filed.
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Educational guidance only - not legal advice. Do not rely on it. It cannot see your documents, your dates or the prior art, and those usually decide the answer. Laws, rules, forms, fees and deadlines change. Please review your situation with a qualified advocate, patent attorney or registered patent agent before you act or decide not to act.
Not sure whether this applies to your invention?
The honest answer usually needs someone to look at your actual disclosure, your timeline and the prior art. That is a conversation, not an article.