Why not merging multiple patents to save money?

Question

Why not merging multiple patents to save money?

I often find single company, single inventor submitted multiple patents at the same time. We all know that, to apply for a patent companies need to spend money. Now, at the first place why multiple patents of the same companies are not merged together to save money as there are no limits of claims for a patent (correct me if I am wrong). If multiple patents claims can be merged together without loosing information than it surely can reduce loads of patenting cost. Moreover, there is no disadvantageous point in legal perspective as claims are being merged without loosing information (from the state when they were separated).

How do the authority distinguish between two inventions or two claims? lets say, we have two inventions. 1. method of improving smartwatches battery, 2. method of improving smartwatches memory. Now if I merge both methods and presents in a way like 3. method of improving smartwatch ... on what ground the authority will reject? Where is the boundary?

Answer 1

In the U.S. a restriction requirement can be issued by an examiner who feels a claim set covers more than one invention. One criteria they can use is to assert “ undue search burden” and identify claims as falling into two different class/subclass groupings. The applicant can make arguments in rebuttal and sometimes you win. It is not completely arbitrary but can be hard to win. If you do not win then some claims need to be canceled in that application. In your example you start with “improving a stopwatch cost”. That is just the preamble to a claim - it is followed “by comprising the watch with a smaller memory” or “by comparing the watch with an XYZ battery. The common preambles do not hide the actual meat of the claims are different . If you claim “an improved stopwatch having an ABC memory and an XYZ battery” then you get one patent that can be gotten around by either single improvement. If it was OR not AND, then prior art of either surfacing dooms the claim as a whole.

In the rest of the world the criteria is a little clearer. They use the concept “unity of invention”. It requires that the core inventive principle of each claim is the same. In the U.S. it is usually improper to boil a claim down to an inventive principle.

Answer 2

Because the patent authorities will only allow one invention per patent. If they believe they is two or more they reject the application.