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Author Topic: The patent set  (Read 1153 times)

andromat

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The patent set
« on: 04-09-09 at 07:55 am »

Are there set (no pun intended) requirements governing the range of variations an invention, in the form of related articles of manufacture, is allowed to have in a single patent application? Could anyone clue me in please or at least point to the resource(s) where such regulations can be found? If there are none, what happens to the patent application if some of those variations do not eventually, for whatever reason(s), pass the patentability test, while other do? Also, can an inventor, especially when going through the provisional application route, later drop some of those variations, found to be unfeasible, for example, from the regular patent application, while still be able to pursue others without any penalties or reduction in rights to the invention itself?

In a related question, following the school of thought that the provisional application is not a patent application at all, but rather a reference point, a registration with the government establishing the conception or, rather, the reduction to practice date, would it be possible to pre-register in such a way only somewhat, by the common underlying philosophy or structurally similar, for instance, related devices with different functional features each representing alternative approach to solving the same, essentially, problem in a single provisional application. Also, would it be possible to file two or more regular patent applications for the inventions establishing their roots in a single provisional application such as in the example above. Thanks a lot!
« Last Edit: 04-09-09 at 12:42 pm by andromat »
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CriterionD

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Re: The patent set
« Reply #1 on: 04-10-09 at 01:07 pm »

Technically each non-provisional patent app must cover only one invention (if it is to issue) - note that this is not exact terminology I don't believe.  That's a little misleading without a clarification as to exactly what the USPTO considers an invention, and what it considers a patent as covering.  I would consider many patents as, technically, describing and claiming, multiple inventions.  I believe the guidelines used are something to the extent of any set of multiple inventions must be related i.e. share a certain degree of similarity.  An attorney should be able to guide you properly armed with the specifics of your needs.

In any event, even if a non-provisional app does contain multiple unrelated inventions, you still have the option of filing "divisionals," and "continuations," and such claiming priority to it. 

Provisional apps are the same way (except they never issue, anyway).  Of course, because the filing fee for a single provisional app is relatively cheap, and most of the investment in a properly prepared provisional app - financially and/or effort-wise - derives from drafting, combining two unrelated inventions into one provisional app does not necessarily result in significant cost savings.

Quote
If there are none, what happens to the patent application if some of those variations do not eventually, for whatever reason(s), pass the patentability test, while other do?

The notion that many products are patented, is actually, arguably misleading.  Often the protection afforded by a patent is limited to specific features and/or aspects of a "patented product."  The protection afforded by a patent derives from the claims which issue.  Each claim could be considered an invention by itself.  Commonly, some claims may be disallowed, and others must be amended before they are allowed, and others will issue.  One claim being disallowed will not kill the whole application (unless the whole application contains only that claim). 

Of course, knowing that whether or not a claimed "invention" will be allowed has to do with whether it is considered novel and "non-obvious" relative to the prior art, it is ideal to be familiar with the prior art and have a good idea of the protection which may be available to you before your claims are drafted.

andromat

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Re: The patent set
« Reply #2 on: 05-03-09 at 08:30 am »

Although I seem to have resolved my own issue by dropping what I came to consider less feasible versions of the invention and moving along with just one of them, I still keep coming back to reading more into your answers, as it looks like some very complicated concepts have been touched here. :)

Thank you very much for your reply, CriterionD!
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Kisha Flo

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Re: The patent set
« Reply #3 on: 05-18-09 at 07:12 pm »

Where in India one can find buyers and sellers for Electrical and Electronics Patent Pending ideas?...
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