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[fb]

Is it allowable/feasible/recommended to submit an app for a device (using all 20 claims), and then submit a second app for the methods of the same device? (Especially, if the second app is drafted by a different firm).

[Sabachka]

It seems to me that it is allowed. Technically, the apparatus and the process are distinct inventions.

The only reason I can think of to recommend filing two applications is that the client wants to say they have two patents instead of one (assuming the applications result in patents). The price is doubling of filing, issue, and maintenance fees.

[fb]

Well, that's a good reason.

But the actual reason is (being a non-attorney) that I don't know how well the first attorney's device draft is. So by having a second person (agent) draft the method, I would hope to cover any bases left by the first.

[khazzah]

Is it allowable/feasible/recommended to submit an app for a device (using all 20 claims), and then submit a second app for the methods of the same device? (Especially, if the second app is drafted by a different firm).

You say first and second "app", but I think your real question is if you can write two different specifications:one describes the device and supports claims to the device; the other describes the method performed by the device (or method of using the device?).

Yes, you can do this. The only pitfall I can think of offhand is if a) device and method have different inventorship and b) earlier filed one actually discloses both the method and the device. In such a case ,the earlier filed one could be used as a 102(e) against the other.

[khazzah]

Well, that's a good reason.

But the actual reason is (being a non-attorney) that I don't know how well the first attorney's device draft is. So by having a second person (agent) draft the method, I would hope to cover any bases left by the first.

That only works IF you assume the agent does a better job than the attorney. Otherwise, aren't you just doubling your uncertainty, ie, you don't know how well either draft is written?

[patentatt]

Yes, you can do this. The only pitfall I can think of offhand is if a) device and method have different inventorship and b) earlier filed one actually discloses both the method and the device. In such a case ,the earlier filed one could be used as a 102(e) against the other.

Not 102e if the inventor(s) are the same, as seems likely.

[fb]

Yes same inventor, so hopefully no 102.

True, I do not know how well either is done. So I fall back to the position of more = better. Unless, of course, there is some pitfall/backfire in doing this (besides the money).

[fb]

I talked to an agent about this, and he did not want to handle the method app for fear of stepping on toes, and also because "methods are mainly for use when a human interface is involved" (which the current invention does not have).

[khazzah]

"methods are mainly for use when a human interface is involved" (which the current invention does not have).

Disagree that methods have no place when no human interaction is involved. I routinely draft method claims for computer/electronics cases.

[fb]

Would the average attorney be offended if the methods were given to an agent to draft?

[klaviernista]

Would the average attorney be offended if the methods were given to an agent to draft?

Maybe, but who cares?  You are the client.  You dictate who gets the work.  If I were the attorney in question though, I might be concerned about my work product if a client started distributing clearly related cases to another firm.

[fb]

Well after talking to a few agents and attorneys, they mostly agreed that I should not use somebody different; instead I should have the current firm add-on methods.