Hi Susan, Just to be clear -

Continuation Applications
First, and perhaps the most straight-forward continuing application, is a continuation application. Continuation applications utilize the parent application’s disclosure and claim the benefit of the parent application. In order for a continuation application to be granted the filing date of the parent application it must: (1) be filed while the parent application is pending, (2) have at least one inventor in common with the parent application, and (3) have claims that are fully supported by the parent application’s disclosure. The term “pending” in requirement (1) above is the cause of great confusion and deserves special attention. The term “pending” does not mean that the “original” application must still be pending. It simply requires that any application in the parent application and continuation application relationship is still pending.

Continuation-In-Part (CIP) Applications
The third available continuing application, known as a CIP application, contains the parent application’s disclosure PLUS additional disclosure. Claims that are supported by the parent application’s disclosure may obtain an effective filing date of the parent application, however claims that are supported by the additional disclosure may not obtain the effective filing date.

http://www.invention-protection.com/ip/publicat...

Continuation Applications lets you add claims, but no new material to your patent where as a CIP lets you add material and claims, but the new claims won’t get your original filing date.

Your patent examiner already knows about your current application, claims and prior art. Asking him about adding additional claims seems fair. Asking him about new claims for possible new material that he has not seen or checked against prior art seems more difficult to get some good advice. I think you also might have to file a document with the PTO in order to get the examiner to talk with you personally because you are currently being represented by a legal counsel. Might just depend on the examiner. Best of luck.

Thanks for the info, Dond.

I spoke with the examiner by phone this afternoon. He said he wasn’t able to speak with me directly because I went through an attorney to file my patent. Oh well. It was worth a try.

My patent design includes two parts that attach to form a single structure. I’m basically trying to lay claim to a one part only design to better protect me in the event someone tries to knock-off my idea by eliminating or altering the second part.

The product is a common item. However, it’s made of a special material and also features a pre-textured surface that makes it conducive to accepting paint. I’m not sure if these characteristics can be regarded as a unique structure.

If the part you are now trying to claim in adequately described in your first patent it sounds like you could file a “continuation” application as opposed to a CIP application.

Most attorney’s will suggest you keep filing continuation after continuation (its more money for them). At this point it really comes down to a business decision, is it worth the extra money to get the extra degree of coverage? Ideally your allowed claims should cover you from people trying to copy your idea.

Dear Susan E.
I like your style…very assertive with your patent rights. In this case, your quest will be challenging for a number of reasons.
As you found, the examiner always follows the strict rule that the USPTO does not condone dual correspondence (with both the attorney/agent…and the client). You’d have to revoke the attorney’s power to have that talk. As far as the continuation or CIP aspect is concerned, it could be either on in your case. Here’s why.
If your application, the one now ready for grant, describes your unique product as requiring two parts, then a continuing application that asserts that (surpise) only one part is necessary — that alternative would be considered “new matter” appropriate for a CIP. If the original desciption is silent on the criticality of the 1 or 2-part choice, then a Continuation is the appropriate follow-up. By the way, a continuation application offers the advantage of going to the head of the queue for patent pending (on the examiner’s docket); the CIP sadly falls at the end of the queue.

In any case (and this comes from a former patent examiner), your examiner cannot offer a patentability decision on un-filed applications. Besides; (1) he may have searched only 2-part products when he first reviewed the prior art; (2) on a phone call…long after he allowed your first set of claims, he is highly unlikely to easily recall important details of your application given the massive amount of info that flows across his PC face in a single day, and he gets no work-credit for going over old records; (3) he may not be the examiner assigned to your continuing application. So, you see that simply telling you he cannot talk or otherwise correspond directly with the attorney’s client was the convenient (and true) answer for him..
Another challenge…besides those mentioned above…is that your window is very tight for making changes.
With the Notice of Allowance mailed, the application has moved on beyond the examiner’s jurisdiction…the wheels are turning quickly…the actual patent grant can happen in as few as 4 weeks or so after the issue fee has been paid – - depending on the backlog of the printing contractor. Your action must be taken immediatly to ensure that any CIP (or Cont.) is filed before the patent grant date, to ensure that your new application enjoys the same filing date as the original. I don’t think you should consider the do-it-yourself approach; it never pays.
For what it’s worth, your attorney’s charge for filing a new set of claims in a continuing application appears to me quite reasonable…especially under the rush circumstances.

Finally, prompted by BradF’s comment I’d like to point out that some agents and attorneys DO appropriately suggest filing a follow-on continuing application once the earlier application receives a notice of allowance. Not often, but we find this can be a particularly valuable prosecution strategy where the invention appears to bear the markings of a “good horse” – - destined to be hot in the marketplace. Keeping a continuing application on file offers a hedge against the ubiquitous “design-around” competitors who change a product just enough to get around the patent claims- – for example, coming out with a product that has only one part…where the patent requires two parts. Prospective licensees also happen to like having one on deck and one in the hangar.
I wish you great success w/your patent.
Don Kelly