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[Xdim]

Hello Everyone,

I have a question regarding whether to file a combo-patent that has claims of a system and all its sub-systems, or to patent each sub-system separately.

For discussion purpose here I use an example of, say, a lawn mower - assuming that I had invented a new lawn mower which has
1. a new way for transmission,
2. a new blade mechanism,
3. a new steering mechanism.

Assuming there are obvious application advantages to combine the 3 new ways together to make this new mower, and assuming each of the 3 systems could indeed be used on some other machines/systems independently as a new and more advantagous way of do things.

What should be my aproach in patent application? I am thinking I could do a "combo" patent to claim the lawn mower and each one of its 3 sub-systems. But could someone legally use one of the sub-systems (say the blade system) in other machines but not my mower? Could someone even patent the other machine which is different from mine but has my blade system in it?

Would it be more costly to file one patent for each sub-system than to file a "big" combo?

I appreciate your input. Thanks.

Xdim

[Bill Richards]

Whew!
I think by "combo-patent", and based upon what you've written, you're referring to an application that has claims to more than one invention.  (And, it all depends upon the claims.)  To put it mildly, patent offices, US or foreign, do not like such applications.  In fact, before an application is substantively examined, the examiner will review it for multiple inventions.  They are quite adept at this, too.  Given what you've presented, the Office would probably require you to restrict your application to one of the multiple inventions they enumerate.  You can certainly argue this "Restriction Requirement", but it's an uphill battle.  So now, instead of having your several groups of claims examined (for which, by the way, you've probably paid excess claims fees), you'll have to choose one.  To add insult to injury, the excess claims fees are non-refundable.  Then, to add further insult to injury, when you decide to pursue the claims that were restricted out, you'll have to pay the other filing fees anyway.  Why not just prepare multiple claim sets, even with the same broad disclosure if you'd like, and file them at the same time?  At least that way, you might avoid some excess claims fees and your applications will be examined sooner.
This is not to say you couldn't have some claims that cover everything in one claim, but if you want to protect the sub-parts, and it seems you do, they could be the subject of separate applications.
So, in the long run, it would probably be more expensive to prepare and prosecute one "combo" application that gets restricted into multiple applications than it would to start with a more realistic number of applications.  (More than one.)
You ask:  "But could someone legally use one of the sub-systems (say the blade system) in other machines but not my mower?"  It depends upon the claims; not the filed claims, but the allowed claims.  Without more, this question is unanswerable.
You also ask:  "Could someone even patent the other machine which is different from mine but has my blade system in it?"  Patents are given to whoever is the first to invent a new, non-obvious, and useful (in this case) apparatus.  If someone merely copies your invention, he is not an inventor and certainly not the first.

[SideLine]

This situation reminds me of the only convincing real use that I've ever seen for the "Summary of the Invention" portion of a patent application.

There are multiple inventions ... I count at least four, namely a mower, a transmission, a blade mechanism, a steering mechanism. Sure we could fluff this into more inventions ... namely methods for each of mowing, moving, cutting, and steering ... but four inventions is plenty for this discussion.

What's this got to do with the summary of the invention portion of a patent application?

But first, why do we even draft these summaries?
I generally don't get a good answer to that question.
Everyone seems to agree that there is the possibility of subjecting claim interpretation to unwanted problems. Evidently, we nonetheless do it out of historical momentum. Our bosses boss did it, our boss did it, now we do it.

So what is it we do? Well, we revise the claims toward the English language and we call it a summary.

SUMMARY OF THE INVENTION
A first aspect of the invention relates to the first independent claim. This first aspect optionally entails some part of a dependent claim that depends on the first independent claim.
A second aspect of the invention relates to the second independent claim, and optionally includes some part of a dependent claim that depends on the second independent claim.

It seems like a game. I do it all the time ... because ... let me think ... oh yeah, my bosses boss did it, my boss did it, and now I do it. It's completely intellectualy superfluous to the claims present in the application ... so it adds nothing to the application, but I do it anyway.

But I know one attorney who actually uses the summary portion to accomplish something. Here is his strategy applied to the situation at hand.

First write claim sets for each of the four inventions. Go ahead and write three independent claims and twenty total claims for each of the four. Write a full patent application describing everything ... one big fat specification. Then write a summary in the traditional fashion above taking into account all written claims.  Yes, the summary will get long. That's right, the summary will include the mower, the transmission, the blade, and the steering with equal weights in respective well delineated paragraphs.

Then ... here's where it gets good ... file one patent application including only the claims for one of the inventions. For example, you might choose the mower. Prosecute the patent application and consider filing continuation applications on the transmission, blade, and steering. By writing the application having all intended claim sets in view, you've supported the claims of the continuation applications in your original specification. Just look at the summary ... the claim structures for all four inventions are right there. You get to defer paying the fees for three of the applications until prosecution has proceeded. This allows time to pass while art becomes available (patent applications will publish) that you can consider. Maybe some patent application publishes that discloses everything about your original transmission ... so don't file a continuation application with the transmission claims ... or file a CIP for the transmission and add more material about developments accomplished since the one application was filed.

I don't see the above strategy widely applied.
I do see big patent applications filed with, for example, device claims, method claims, computer program product claims, method of making the device claims, etc. I'm referring to an application having a big specification, a summary of all anticipated claims, and ALL OF THE ANTICIPATED CLAIMS. This requires full payment of the fees for excess claims and loss of those fees upon restriction that is easily anticipated.

I've always wanted to discuss this summary strategy with others but supervisors typically aren't familiar with drafting a summary that includes anything beyond the claims in the original filing. After all, his boss didn't do it.

Any thoughts?

[Isaac]

But first, why do we even draft these summaries?
I generally don't get a good answer to that question.
Everyone seems to agree that there is the possibility of subjecting claim interpretation to unwanted problems. Evidently, we nonetheless do it out of historical momentum. Our bosses boss did it, our boss did it, now we do it.

1) I believe the EPO requires a summary.
2) Your boss won't let the application leave the office without one.

So what is it we do? Well, we revise the claims toward the English language and we call it a summary.

SUMMARY OF THE INVENTION
A first aspect of the invention relates to the first independent claim. This first aspect optionally entails some part of a dependent claim that depends on the first independent claim.
A second aspect of the invention relates to the second independent claim, and optionally includes some part of a dependent claim that depends on the second independent claim.

It seems like a game. I do it all the time ... because ... let me think ... oh yeah, my bosses boss did it, my boss did it, and now I do it. It's completely intellectualy superfluous to the claims present in the application ... so it adds nothing to the application, but I do it anyway.

I leave off the dependent claim stuff.   But how many people update the summary when they amend the claims?

But I know one attorney who actually uses the summary portion to accomplish something. Here is his strategy applied to the situation at hand.

First write claim sets for each of the four inventions. Go ahead and write three independent claims and twenty total claims for each of the four. Write a full patent application describing everything ... one big fat specification. Then write a summary in the traditional fashion above taking into account all written claims.  Yes, the summary will get long. That's right, the summary will include the mower, the transmission, the blade, and the steering with equal weights in respective well delineated paragraphs.

You're losing me.   I generally expect the detailed description section to support the claims.   Why are you bulking up the summary to be a substitute detailed description?  Besides that, some claims are not self supporting, meaning that a summary that is merely a massaged claim is not sufficient support.

[JimIvey]

Our bosses boss did it, our boss did it, now we do it.

So what is it we do? Well, we revise the claims toward the English language and we call it a summary.

You've had some bad bosses.  That is not the way you should write your summary.  I wouldn't let one of my applications go out the door with crud like that in it.

I look at the summary as merely the appilcant's rebuttal to the deficincies in the state of the art as outlined in the background section.  But I would certainly not identify this or that as an aspect of the invention.  And, I would certainly not use terms of art of claims in the summary, like "comprising", "plurality", "said", etc.

I say simply "In accordance with the present invention, ..." and then summarize the disclosed answer to the deficiencies of the prior art and explain how this or that feature of the disclosed technology overcomes this or that deficiency.

I'd say that the background and the summary are the two places where a patent practitioner has the opportunity to really shine as an author and to showcase any literary talent the patent practitioner might have.  And, of course, you must bear in mind the legal consequences of every word as you engage in some otherwise free-form writing.  However, it certainly helps to have some idea as to what those consequences might be.

From what little I see, I'd suggest that your bosses don't fully appreciate the significance of the summary.  They seem to be doing the minimum to get through the patent office but they're not building IP that can more easily make it's way through an infringement action in front of a jury.

Regards.

[SideLine]

Isaac Said:
"I generally expect the detailed description section to support the claims.   Why are you bulking up the summary to be a substitute detailed description?  Besides that, some claims are not self supporting, meaning that a summary that is merely a massaged claim is not sufficient support."

Yes, regarding the detailed description section to support the claims ... but which claims?
I learned that strategy working with a character who is rather enthusiastic toward weaving together application/patent portfolios. Of course, one must find the right work environment and/or clients to foot the bill. I saw him write four hundred claims toward a hinging mechanical support arm for holding up whatever. For example, one claim started at an abutment at one end and recited the elements on the way to the whatever. Another claim set started at the opposite end and worked toward the abutment. I couldn't see any real point in writing so many claims ... but, my post wasn't about writing needlessly numerous claims ... my post was about writing a summary for what likely will ultimately become a portfolio of applications.

It was a weird experience ... but ... the summary of that strategy actually adds intellectual content to the application. Such a summary reveals the structure of claim sets conceived beyond those present in the originally filed application. Most summaries ... certainly including those I write all the time ... add absolutely no intellectual content to the application ... and that seems to be how most people want it. But, as you say, my boss won't let the application leave the office without one.

How many people update the summary when they amend claims?
I've never seen it done.

I have seen work by one law firm that includes summaries that are ... well ... summaries. The summaries summarize the detailed descriptions without reference to the drawings and introduce a reader to the gist of the invention. I think that's what inventors are looking for when they try to read our summaries to understand the patent application. But with conventional summary drafting ... the summaries are just as baffling to lay persons as are the claims. But most agree ... bucking convention might bring some unwanted consequence.

You say the EPO requires a summary ... hmmm ... Ok. That's news to me. It sounds like you're suggesting that if you're writing a patent application that is to serve as a priority application in the EPO arena, then you'd better have a summary. I'll try to look into that. Any expounding on your part is welcome.

Cheers!

[Isaac]

Isaac Said:
"I generally expect the detailed description section to support the claims.   Why are you bulking up the summary to be a substitute detailed description?  Besides that, some claims are not self supporting, meaning that a summary that is merely a massaged claim is not sufficient support."

Yes, regarding the detailed description section to support the claims ... but which claims?

The same ones you are trying to support in the summary.   I feel like I'm missing something.

It was a weird experience ... but ... the summary of that strategy actually adds intellectual content to the application. Such a summary reveals the structure of claim sets conceived beyond those present in the originally filed application.

IMO the summary is unlikely to be helpful in a US patent and more likely to be used to limit your claims.   For that reason I don't see the point of putting a porfolio strategy into the summary.

I agree that summaries generally do not add any content to the application, but I believe that is intentional and is for a good reason.

I have seen work by one law firm that includes summaries that are ... well ... summaries. The summaries summarize the detailed descriptions without reference to the drawings and introduce a reader to the gist of the invention.

That's what I was taught to do at my last firm.

Anyway, I won't go quite so far as to suggest that you need to include a summary in a US application that will be used as a priority document.   I really hadn't meant to suggest any particular consequence of the EPO requirement.

[SideLine]

In case you're still missing something ... I'll try to expound on the strategy of writing long summaries including claim structures for planned continuing applications. It's not my strategy, by I see some merit in it.

First note my two observances:

1) Among patent pracitioners, there seems to be many more claiming strategies than describing strategies. I first came to this revelation when I started writing patent applications. Reviewers tended to like my detailed descriptions but tended to topple and revise my claims endlessly.

2) It is more concise to express breadth in the claims than in the detailed description.
In the detailed description, one can get so bogged down in mitigating words that the writing gets cumbersome. In order to disclose the best modes, we want to give details ... but then we have to say the details are mere examples exporting no limitations into the scope of the descriptions and relate merely to the illustrated embodiment that itself is just one example bla ... bla ... bla.
In a broad claim however, if we merely omit a descriptive word then, at least arguably, that word does not limit the scope of the claim.

So, a well written detailed description may not impress upon others the full potential of the patent protection you may ultimately seek. What'll we do?

IF one is fairly certain that several patent applications will be filed and filings costs are preferably deferred ... THEN the strategy I've presented places all of the anticipated claims into the first filed application without paying excess claims fees. Many broad aspects of the coverages sought are revealed without cumbersome language in the detailed description. No one can later say you used the early filed application to go on a fishing expedition to find your invention.

Have you never been called upon to use an earlier filed specification as a dictionary from which to later concoct inventions with flimsy support? No? Lucky you!
I've been so called upon. Hey, if all the technical words in the newly presented claims are found in the original specification then the new claims are supported and deserve the priority of the earliest filing date ... right? The summary strategy I've presented eliminates any argument that you have done any such thing.

Quite frankly, many claims are self-supporting. You don't think Examiners read the specifications of applications do you? When I was an examiner my neighbors called me a greenhorn when they saw me reading a specification.

Finally ... the IMPRESSION FACTOR:
Now let's assume there are other players in your technology. Maybe you want to sell them this patent application. Maybe you want to scare competitors. The multi-faceted summary demonstrates the full potential of a portfolio that can be unfurled from the originally filed application. You've paid the filing fees for one application and yet anyone savvy in patents can see that you plan bigger things.

Let's say your client brought you a published patent application. Let's say there is no concern that your client infringes the published claims.
Would you notice if the teachings of the detailed descriptions arguably support other claims toward the acitivities of your client?
What if a multi-faceted summary spells out further claim structures for you?
Might you notice that?
Might you now recognize the earliest filed application in what could become an expansive portfolio?

There it is. That's the best I can do. You'll see value in it or you won't.

Cheers!

[Xdim]

Thanks for the discussion.

I asked the original questions and expected analysis of various approaches in patenting for the case at hand from the point of view of
1. the effectiveness of the resulting patent(s) in protecting the invention, and
2. the cost effectiveness in acquiring protection.

SideLine, the strategy you outlined seems to touch both patent (legal) and cost effectiveness. Could you refer me to an existing patent (as an example) that had used such strategy? It could be very educational to me.

An natural extension of my original question --
Assuming indeed each of the sub-systems in the mower constitutes an invension by itself. Then is it right that I can not patent the mower without first patenting the transmission, blade and steering systems?

[SideLine]

I'm sorry, I don't think it would be prudent for me to identify the portfolio. It is currently pending. The first application was only recently examined. The continuations were only recently filed and published. I've only seen it done that once.

You can pursue patent protections for each of your subsystems separately, namely the transmission, the blade, and the steering. You can pursue patent protection for your mower. If any one of the subsystems is patentable, then your mower having that one subsystem is also likely patentable. You can proceed in any order.

You can file chains of related applications. There are endless strategies.
For example, file a first application and establish a priority date.
Then file a second application as a continuation of the first application at any time while the first application is pending.
Then file a third application as a continuation of the second application at any time while the second application is pending.
And so on ...
If the claims of the third application are supported in the second and first applications, then the third application deserves the benefit of the established priority date.

An example of WHAT NOT TO DO (if you want multiple patents):
File the first application describing all of the inventions.
Then see that first application published by the USPTO.
Then see that first application issue to patent or go abandoned.
Then try to file more applications a year after the first application is published.
IF YOU DO THAT, your first application MAY be used against you.
If you want to file later applications and get the benefit of the priority of the first filed application, a co-pending chain should be established. Each later application must be filed while one of the earlier applications is still pending.

So be careful. A patent for your mower that has your transmission, blade, and steering may not protect you from someone copying only your transmission. If you want to protect just your transmission, then file an application claiming just your transmission while your earliest filed application describing your transmission is still pending.

I hope that helps.

[iprindia75]

Hello xdim,
In India patent controller may ask you to file different patent application for each novelty that is called as divisional application in this case your filing date would be the same and even you can get the benefit for the all. anoither thing is you should file application for each novelty.
Not it be possible?

Thanks, but good topic.
:)