Infringement : pneumatic vs. acoustic

[RIJID]

OK...I had another phone conversation with the other party. They are absolutely insisting that I am infringing - I am still not certain of this.

I hired another lawyer who is going to do about $3k worth of work looking at my invention and the other patent. Not a full blown analysis, but if there is something there that is useful I think he'll find it. It not a very complex patent, but it does have it's intricacies and for every answer two more questions arise...

And here is one for you that has to do with the attorney who wrote my patent:

In order to get my patent my attorney apparently gutted my claims. Quite frankly, I not sure what I have or do not have. I did notice that there are some claims that were to be included that were not. A CIP was filed, but it had nothing to do with the missing claims.

QUESTION: Can I add new claims in this continuation if those claims were not specifically cited in the CIP? If not, can I file another CIP?

I've asked the new attorney these questions - I know he has more info than you but I would like to compare answers - if you would be so kind.

Thanks in advance.

 

[divgradcurl]

I hired another lawyer who is going to do about $3k worth of work looking at my invention and the other patent. Not a full blown analysis, but if there is something there that is useful I think he'll find it. It not a very complex patent, but it does have it's intricacies and for every answer two more questions arise...

This is a good idea. A real analysis can let you know what your actual exposure may be, and help you to make a decision as to whether to fight or to settle, and for how much.

In order to get my patent my attorney apparently gutted my claims. Quite frankly, I not sure what I have or do not have. I did notice that there are some claims that were to be included that were not. A CIP was filed, but it had nothing to do with the missing claims.

QUESTION: Can I add new claims in this continuation if those claims were not specifically cited in the CIP? If not, can I file another CIP?

Is the CIP or continuation still pending? At what point is it? If your CIP is at (or near) allowance, amending the CIP to add new claims might not be the best idea -- it might be better simply to file a continuation or another CIP with the missing claims.

Of course, that assumes that the claims were cancelled without prejudice in the earlier application, or were simply never added to the original application.

As long as you have a continuation or CIP that hasn't issued yet, you can still file another continuation or CIP (unless the courts allow the USPTO's recent rules to go back in force, in which case you might be limited in how many continuations or CIP's you can file).

 

[RIJID]

I cannot begin to explain to you have valuable your answers have been to me.

You have my sincere and humble thanks.