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[andromat]

Hello there!

This is my first post. Nice to meet y’all!

I need to sort out a few theoretical questions and practical issues before I can, hopefully, start my own company manufacturing a line of products that I developed based on my inventions, as well as licensing those to other businesses. So please bear with me. I appreciate your input!

Here’s a question, for starters:

If, while developing a new product I discovered what appears to be a great novel concept that I can not find any references to (prior art?), and later managed to develop another product, very similar to the first one, since both are based on the same principle, but with entirely different range of applications, how, in your opinion, should I go about patenting my inventions? If proven to be truly novel, could the underlying concept itself be considered an invention and, if so, is it possible to patent it along with the two articles that I so far managed to develop? Can all three be combined in a single patent application? What if I already filed a provisional application for the first of the two articles?

[Wiscagent]

Most of your questions are very case-specific, and can not be answered in general. 

Your last question "What if I already filed a provisional application for the first of the two articles?" is a bit easier.  The worst that can happen with the provisional application is that you just allow it to go abandoned and do nothing with it.  Then so far as the patenting process is concerned, it never existed.  A better scenario is that a new regular patent application can use the provisional application to establish a priority date for at least some of the claims.

[vman11]

Very very generic questions, without you providing us with any details. I'm afraid you cannot get any valuable responses because people have no access to these inventions and don't know what they are composed of, how they are different from each other and what this underlying concept is. In patent law (and law in general) every word counts in changing the applicability of the scope of invention and deciding what the invention is. Your generic paragraph could have numerous  potential outcomes depending on the details, you need to go see a practitioner.

Basic rules of thumb:

1 patent for 1 invention.

If your second product is indeed another invention, then yes you would be eligible for a patent for both inventions.

One can only get patents on statutory subject matter. You would have to run this 'underlying concept' past an attorney so that he may determine whether it meets statutory requirement to qualify as an invention. Hint: One cannot get patents on abstract ideas, laws of nature, or methods/ steps which one can accomplish in one's own head.
  

[andromat]

Thank you very much, folks, it is definitely heartwarming to see your responses. Yes, indeed, I tried to make my questions as generic as possible. And, of course, I am not going to mess around with these inventions myself when it comes to filing the regular patent applications. Just wanted to gain some case-specific knowledge so that I could deal with the matter more confidently.

The problem with my obscurity is, as you probably understand, that I simply don’t know how much detail I can safely reveal about my inventions at this point. I’ve read some literature on patents, don’t get me wrong, not a complete novice, although a novice nevertheless, and so, as a result, I’ll try to remain on a cautious side for now.

I had to think hard before I could proceed. From your answers I deducted that the patents for the article A and for the article B should be filed separately. They have been, and so it appears that I’m on the right track so far. But it gets a bit trickier further. This is something I came up with to help you understand my situation better in order to answer my questions, if at all possible.

OK, so how different are the two of my devices? Well, a good analogy that I can think of would, probably, be a regular hand saw and a two handed saw, except that in my scenario the applications for the two of my products are completely different. Could the pair of saws in question, under any circumstances, be considered a single invention, anyway? Or are they two distinct inventions as well?

Here’s another analogy, maybe a better one. Let’s say that we are, I don’t know, still in the Stone Age, and I just invented a bowl – a useful utensil in a shape of half-sphere. I looked at it hard, realized that I was missing something, and came up with another half – resulting in a full sphere – a geometrical shape upon which I further developed a number of articles of manufacture - play balls, for example – a ping pong ball, a soccer ball, and a bowling ball. The question is then, am I required to patent each of the items that I designed so far, separately, or if I could somehow put my hold on the inventions – those that I have already made and those that I (or others, once my concept of a sphere was released to the public), still might come up in the future – by patenting the sphere itself (so that those others would need to license this invention from me in order to make their own advances?) After all, it is the geometrical shape that I discovered and on which all of the further practical implementations will be based on.

In other words, if that was exactly the same formula (well, with minor variations or alterations in certain cases) that allows all those inventions possible (with the first, distinct, invention, being simply a result of dividing the formula by 2), should it not be possible to patent the formula itself, instead of patenting all of its derivatives separately? Or, in ADDITION to patenting some of the most distinctive of those derivatives, like an invention A, for instance and the basic practical form – invention B?

My situation is a bit like this, I think, although not on the same grand scale of things, of course. In my case it is indeed, to go a bit into detail, a certain self–contained structure resulting from a manipulation of material of composition. It is highly configurable and allows producing numerous articles of manufacture with a wide range of practical applications, depending on the chosen size, shape (configuration), and the material of composition. Also, to get things more interesting, or to complicate them even further, depending on how you look at it, combining some of those articles together or with different kinds of articles will result in yet more new devices with different functions. For instance, as in example above, I could put some of those balls on a string and receive a necklace or something that I could use to massage my back with. Do you understand my dilemma a bit better now?

Thanks a lot to your attention, really appreciate it!

[vman11]

You are wise in choosing not to post specifics on an internet forum.

As a primer to your meet with a practitioner, some of the things that you can get a patent on are machine, method and manufacture. Patenting a 'geometrical shape' would not meet statutory requirements in my opinion. But, one can potentially go many routes here. You could file a patent application for a ball with many potential uses and draft claims to cover each potential use in the same application. Or you could file several patent applications each describing a slightly different, but novel physical manifestations of the basic ball in context to its use for each activity and get various patents.

Innovation is usually incremental, assuredly the million plus patent applications worldwide every year do not unearth or lay claim to something fundamentally new. They build on previous inventions. So, the change (you use the words 'minor change') must make the new combination novel and non obvious to a patent examiner. 

[andromat]

Thank you very much!

So, if I understood you correctly, items as seemingly different as a ping pong ball and a bowling ball, by having a shared overall shape, can, potentially, be patented under the same application?

But the geometrical shapes themselves, no matter how novel, wouldn’t, in your opinion, be a subject of protection under the patent laws? Must be a valid point, as nobody seems to be arguing with that. But, to dwell on the example a little longer, let’s say that this geometrical shape is a result of manipulating the material of composition in a certain way. And that, potentially, there could be several ways of achieving the same, or nearly identical, result. In this case, shouldn’t it be possible to patent this method of manipulating the material? Or, to describe it differently: a formula; a set of instructions; or a distinct feature, a structural mechanism, if you will, making such a shape possible. (Which, in the end, might turn out to be the only way of achieving the desired result – the geometric shape in question, if none of the alternatives are ever found.)

Another question, are there any potential benefits for the inventor in filing multiple, incremental, patent application for the same, essentially, invention? If there are any, I seem to be overlooking them completely.

[andromat]

Sorry for the language, guys! I know it sucks (grimace). Just trying to say as much as I can without saying too much and saying as little as possible at the same time. Besides not my native language as you might have guessed.

On the lighter note, the one use of the incremental patent application beneficial to my fellow inventors that I managed to think of so far would be making minor, application specific changes to the original invention and patenting the result with the purpose of licensing it exclusively to a third party, while still keeping a hold on the original invention itself. Enjoy!