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If a I'm filling a broad patent claim, should I file as a separate patent a specific embodiment I'm more interested in? The reasons for this are that the specific embodiment is easier to defend, and has far higher chances of being approved.

I don't want to lose out on any advantages accruing due to a broader patent, but it will obviously be more challenging. So how does it work, if it does, when I file a embodiment and broader patent similarly?

  • I have the same situation so I just created a narrow claim to cover specific embodiment. If they reject broad claims I still have them covered in the description. – Pol99 May 19 '15 at 23:59
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    @Pol99 another interesting point to discuss here is that does an specific embodiment moves faster through the patent office as compared to broader one? So if embodiment makes me more immediate commercial purpose - wont it be better? – saxena May 22 '15 at 5:46
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"[T]he specific embodiment is easier to defend and has far higher chances of being approved." These are the main reasons why registered patent attorneys and agents include in just about every patent application a number of narrower (dependent) claims, which incorporate by reference and layer additional elements or further limitations onto the broadest (independent) claims. In the US Patent Office, the basic utility patent filling fee entitles you to file up to three independent claims and up to twenty claims total. An increasing additional fee applies to independent claims in excess of three or total claims in excess of twenty. In addition, as noted in a previous answer, you will have the opportunity to modify the claims during the examination (also called "prosecution") of your application, by amending, canceling, and/or adding new claims to the listing. To provide support for such amendments, it is also important to submit a detailed and thorough description of a wide range of embodiments of the invention at the outset, as you will not be allowed to claim embodiments that you did not adequately describe in the original application.

This answer is not intended to be legal advice in your particular case or to form an attorney-client relationship, and I highly recommend that you consult a patent attorney or agent.

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During the approval process changes to the claims are possible or even encouraged between the applicant and the examiner. During that stage 1 or 2 broad claims would cover your broader scope and the following narrow claims cover your more intricate details. I do not think more than one patent filing would be necessary. Your claims on first submission are not cast in stone.

It is an interesting question and I am looking forward to answers by others.

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