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[Patentstudent]

Please, allow me to pick your brains.

Suppose I have an invention for a new cough syrup that I want to patent. While developing the cough syrup I also invented a bottle that can be used to dose the syrup in a more accurate and clean way than a conventional bottle.
What should I do? Should I include the bottle in a dependent claim of my syrup patent or should I leave it completely out of that patent and draft a separate patent for the bottle as such in which one of the claims will involve the use of the bottle for dosing cough syrups?

Thank you for your advice. 

[Wiscagent]

Without knowing the details of the case, my first inclination would be to draft a comprehensive specification including claims that cover i) the formulation; ii) the bottle; and iii) the combination of the bottle and the formulation.  That way you initially just pay one set of application fees, and it give you the flexibility to pursue any or all of (i), (ii), and (iii). 

Also, there would be no issue of one application being prior art that can be used against another; and fewer potential questions about disclosing the best mode of the invention.

Presumably the examiner will restrict out the claims, but that would not be for another year or two.  In a year or two you should have a better understanding of the business value of each potential patent, and maybe a better understanding of the prior art.  So you can avoid some up-front expenses, and still have flexibility when the restriction comes.

[Patentstudent]

Wiscagent, thank you for your advice.
Won't I run the risk of non-unity of invention if I claim both the formulation and the bottle not in combination?

[Wiscagent]

Yes you will

run the risk of non-unity of invention if I claim both the formulation and the bottle not in combination?

 But if that happens, you will be required to select which of the claim sets to prosecute.  You can pick one or all of the claim groups.  If you choose to just follow through on one group of claims, you can just abandon the others.  If you choose to follow through on more than one group of claims you would file a new application for each additional group, claiming priority to the original application.

So there is very little "risk" involved.  By submitting an application with all the claims, you are delaying the decision by about a year or two.  There is some risk in that if patent A, based on the original application, was granted on a first date but patent B, based on a continuing application, was granted two years later, then you would delay patent protection for the claims in patent B two years.  In contrast, if you separately filed applications A and B on the same, they probably would grant on closer dates.

By the way, there are different, but closely related concepts:  the PCT requirement for "unity of invention"; and the US requirement that each patent claim only one "independent and distinct invention".   For the purpose of this discussion, the distinction is probably not important.

[Patentstudent]

Thank you very much.

[ManOfManyBadIdeas]

I have a follow up to this question. What about PCT and national stage patent considerations?
Do these have to follow the same guidelines as the parent US application? Would splitting parent
US application require splitting PCT and nationals, or do they prosecute independently
from each other only having common priority date?

[Wiscagent]

If you file a PCT application, then file a US national stage application based on the PCT application; the US examiner will follow the PCT Unity of Invention rules. 

I believe that most countries have rules more the PCT than the US.

From a practical perspective, the main difference between the US restrictions & PCT unity of invention rules is that the PCT is more likely to include a method of making or using a gadget in the same claim group as the gadget itself.  (At least that's my impression; I don't know if others would agree.)

[ManOfManyBadIdeas]

What I meant is the common scenario of filing a US application, followed by a PCT application,
and then a number of national stage applications in several countries. If one is to combine
of the subject matter into one US application, there is a chance of having to split the
application later down the road. To summarize your post on benefits of single US
application:

advantages:
1) smaller initial application fee
2) opportunity to refine some parts of the application if it is split (? not sure
about this one, how does one do that and still maintain same priority date ?)
3) chance to abandon parts of an application before costs of prosecuting
further increase.
4) reduced chance of interference between patents if subject matter is somewhat
related, cannot be completely separated (that begs the question if such an
application would incur a restriction requirement, but anyways)

a wash:
1) attorney fees for the initial application(s) are probably the same, given that the
amount of material is roughly the same. Since I am not a lawyer I am not sure
how this works out.

disadvantages:
1) possibly higher attorney prosecution fees, as the prosecution becomes more
complicated with splitting applications
2) delay in protection on some of the matter
3) possibly still higher initial USPTO fees due to possibly higher number of claims

My question is whether this breakdown stays the same if one considers PCT application
and a number of national stage applications? Does splitting an application in the US means that PCT
and/or national stage applications would have to be split? Is it more/less expensive to
prosecute split application or the equivalent number of independent ones in PCT and
national stage apps in countries other than US? Is there additional cost/complexity/advantages
associated with prosecuting a series of applications that are split differently in
different jurisdictions?

[patentsusa]

2) opportunity to refine some parts of the application if it is split (? not sure
about this one, how does one do that and still maintain same priority date ?)

a wash:
1) attorney fees for the initial application(s) are probably the same, given that the
amount of material is roughly the same. Since I am not a lawyer I am not sure
how this works out.

My question is whether this breakdown stays the same if one considers PCT application
and a number of national stage applications? Does splitting an application in the US means that PCT
and/or national stage applications would have to be split? Is it more/less expensive to
prosecute split application or the equivalent number of independent ones in PCT and
national stage apps in countries other than US? Is there additional cost/complexity/advantages
associated with prosecuting a series of applications that are split differently in
different jurisdictions?

Opportunity to refine?  No, you would lose the filing date if you add new matter.

In house counsel would expect attorney fees to be less initially for a combined application since many projects are assigned out on a fixed-fee basis.

A restriction requirement in the U.S. would not necessarily result in a split in the PCT because the PCT examination uses a different standard (Unity of Invention).

I'd say same price to prosecute split applications versus multiple separate applications.  Some slight administrative complexity if applications are split differently in different countries but it isn't that hard to set up a spreadsheet showing which claims are included in which files for different countries.

[bartmans]

In most countries/regions where you get a non-unity objections you can wait with filing a divisional application until the parent application is about the grant (i.e. similar to the USA). However, recently in Europe it has been ruled that after the European Examiner has deemed lack of unity in the European procedure, you will only have a maximum of two years for filing a divisional.

Regards.