3

Say for instance you have filed a provisional specification covering a first embodiment 1. You then start preparing for the subsequent non-provisional utility patent specification. During the drafting of the non-provisional specification you think of two further embodiments (embodiment 2 and embodiment 3)that are related to the invention. You are not sure whether they are new inventions or just further embodiments. You decide to include the 2 new embodiments 2 and 3 in the non-provisional specification and you draft claims the cover the embodiment 1 and the new embodiments 2 and 3.Your thinking is if the examiner decides they are new inventions you limit the claims in the non-provisional application to embodiment 1 and file two new separate non-provisional applications for embodiments 2 and 3 and then claim priority from the original non-provisional application now covering only embodiment 1 for embodiments 2 and 3. If the examiner decide they are only 2 embodiments then that may be the end of it. However you are not sure the examiner is correct. Examiners decisions are frequently overturned by the courts. Should you then not to be safe in any way limit the original specification to embodiment 1 and subsequent file two separate independent patent applications for embodiments 2 and 3?

  • 1
    I would file the utility (non provisional) with a full description and if needed (because the examiner) file a continuation to the 1st - this will provide you a priority date - remember that your patent is published after a year and half so someone might catch it and "take it from you" by filing first. – Moti Aug 13 '15 at 2:17
3

However you are not sure the examiner is correct. Examiners decisions are frequently overturned by the courts.

Yes, Examiners can be wrong, but failure of an Examiner to issue a restriction requirement where one was appropriate doesn't sound like something that can be used to invalidate an issued patent (I haven't researched this in depth but I would be very surprised if that were the case).

On the flip side, if you're on the receiving end of an undeserved restriction requirement, you're probably not going to be able to do anything other than simply bucking up and filing additional applications.

Should you then [in order to] be safe [...] limit the original specification to embodiment 1 and subsequent file two separate independent patent applications for embodiments 2 and 3?

No, there is no good reason for doing so. In fact, doing things this way can reduce your claim scope if you have a generic invention that covers all of the embodiments -- it's better to include multiple embodiments in one application if you have a generic invention.

Your Answer

By clicking "Post Your Answer", you acknowledge that you have read our updated terms of service, privacy policy and cookie policy, and that your continued use of the website is subject to these policies.

Not the answer you're looking for? Browse other questions tagged or ask your own question.