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Author Topic: Divisional application and US doctrine of "devolved to the public"  (Read 340 times)

drMidday

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Hello all,

I am an Europeean patent attorney and I am going to file a US appllication (claiming EPO priority) having four independent claims directed to:

1) "A"

2) "B";

3) kit comprising "A+B"

4) system comprising "A + C "

According to my US associate, after filing the above application the USPTO might require to restrict the patent application to one of the inventions above. Appllicant is interested to "A" which is the component most profitable, "B " per se is useless without "A", so the most effective (economical) option would be to prosecute "A" only.

However, the associate warned me that prosecuting only "A" could be risky as a third party could use 3) and 4) as these would considered "devolved (dedicated) to the public" if no divisional is filed for them. This quite upsets me as that means that a patent for "A" would be uselles against a product which incorporates "A" and "B" (or "C").  In my opinion, only "B" should be considered devolved to the public and a patent for "A" would still protect against any product incorporating "A" such 3) and 4).

Is my associate right? I did not find any legal basis in the MPEP supporting my associate (overzealous?) theory. Some suggestions?

Thanks

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bluerogue

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However, the associate warned me that prosecuting only "A" could be risky as a third party could use 3) and 4) as these would considered "devolved (dedicated) to the public" if no divisional is filed for them. This quite upsets me as that means that a patent for "A" would be uselles against a product which incorporates "A" and "B" (or "C").  In my opinion, only "B" should be considered devolved to the public and a patent for "A" would still protect against any product incorporating "A" such 3) and 4).

Is my associate right? I did not find any legal basis in the MPEP supporting my associate (overzealous?) theory. Some suggestions?

Offhand, I'd say no.  A patent covering A (with comprising) would cover A and B/C. 

Dedicated to the public language is more directed toward areas not covered in the claims.  Say you invented and disclosed widgets A, B, C.  You only get a patent for A (no child apps).  Widgets B and C are now dedicated to the public.  Such a patent would still cover A+B or A+C or A+BC, but would not cover B or C alone.

Edit: Put another way, by claiming A, you have claimed A+B, A+C, A+..., A+Z.
« Last Edit: 10-12-17 at 11:29 am by bluerogue »
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

Robert K S

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Right.  It would be invention 2 ("B") that would be devolved to the public if a divisional were never filed on those claims.
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

wildkrazyguy

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Get a new associate. If you dont make a gross error in claiming "A", then you cover A+B and A+C.

In any case, this is easily resolvable by filing independent claim directed to "A," and dependent claims that add in  "A+B" and "A+C".

Claim 1: (independent): "A"
Claim 2: A kit comprising the apparatus of claim 1, the kit further comprising B.
Claim 3: A kit comprising the apparatus of claim 1, the kit further comprising C.

This gets you A, A+B, and A+C, and could not be restricted.
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Tobmapsatonmi

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P.S. to drMidday - I know it's more common in UK to refer to "devolved" to the public, but if you want to do google searching for additional information on the doctrine in the US, use "dedicated to the public" and "patent" in your search.

Edit to add, agree with the comments and strategy set out above. 
« Last Edit: 10-12-17 at 01:27 pm by Tobmapsatonmi »
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mersenne

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This gets you A, A+B, and A+C, and could not be restricted.

It would be wonderful if the PTO didn't restrict things like that, but they do.  (In the simplest cases, they might not, but when the going gets interesting, you're as likely as not to get a restriction requirement.  And I'm not aware of any process to deal with that, that's fast, reliable and inexpensive enough to justify trying it.  My inventors usually just elect the most important thing and move on.)
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Mersenne Law
Patents, Trademarks & Copyrights for Small Biz & Startups
California, Oregon & USPTO

dbmax

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In my nonprofessional experience in the US, Claims 3 and 4 would typically be submitted in a dependent form. (One might choose to also submit an independent claim to A+B if, for example, one wants to incorporate broader language to describe A than is in Claim 1.)

Depending on the subject matter, the USPTO art unit, and the examiner, dependent Claims 3 and 4 MIGHT be restricted, but only until the generic Claim 1 is found allowable. 

Once the elected generic Claim 1 has been allowed, claims dependent on Claim 1 will be rejoined and examined. (Claims 3 and 4) Look for info on how to respond to an election of species requirement (generally called a "restriction requirement") without abandoning claims to unelected species.

I'm curious about the 4 independent claims in an EPO application.

db
« Last Edit: 10-12-17 at 10:54 pm by dbmax »
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