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So, assume I have an iOS application with two components. Let us call those C1 and C2. C1 takes input from the user and does some calculations then stores it for C2 to do more calculations and display the results. I discussing a hypothetical example because I cannot discuss the invention. How would both of the components fit in a patent application. Both C1 and C2 are unique and non-obvious. C1 outputs data for C2 input. So, C2 is reliant on C1. C1 and C2 will be two aspects of the invention. Though, will C1 and C2 be regarded as a single method or two methods in this invention. Also, what if I want to protect both C1 and C2. Should I write C1 in independent claim 1 and C2 in independent claim 2.

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You forgot a question:

"Can I protect both inventions in one patent?"

The answer to this question will answer a big chunk fo the rest too. The concept in question is called unity of invention. It exists in the PCT and the US and Europe and most other countries and it more or less says Two independent claims may only be granted in one patent if the underlying invention is the same. Normally this leads to the problem that the underlying invention has to be claimed.

In your case that means that C1 and C2 as a combination would be the underlying invention. So one of your independent claims should be C1 + C2. If you don't have that claim, chances are the examiner will say you are missing unity of invention and you'll have to decide to go for either C1 or C2 and file another patent application for the other one claiming priority (continuation, divisional, ...).

So the question isn't exactly

will C1 and C2 be regarded as a single method or two methods in this invention

as this can only be answered for the exact case and the correct answer will be determined (and defined) by the examiner. But if they are not, you will not get a patent containing both.

Also, what if I want to protect both C1 and C2. Should I write C1 in independent claim 1 and C2 in independent claim 2.

As is obvious from my explanations above, both should be contained in one claim to make sure the unity of invention is accepted. But of course you want to protect C1 and C2 independently. As long as the examiner thinks it is one invention, there is no problem with claiming C1 and C2 in separate independent claims too.

This leads you to having at least 3 independent claims, C1 + C2, C1 and C2. Leaving out the first might result in having to file another application, leaving out the second or third will result in narrowed protection. If you claim only C1 + C2, everyone is free to implement only C1 or C2.

For a discussion on how many separate but united inventions an application can have see Combining two claims for two inventions in one patent .

  • Ok, assume that C1 is simply a new way to input data to a cell phone like watching the screen do some visuals and effects and corresponding to those. Then the result is used in C2 to actually display whats intended from the invention. Without C1, C2 would be totally useless. Is this still regarded as two separate inventions? Also, what if I decide that C1 is not important and the most important aspect is C2. How do I say that in terms of aspects and claims? – Rick James Feb 28 '17 at 12:48
  • I'm not saying they must be two separate invention, it really depends on how strongly they are connected. If C2 is totally useless without C1 it is probably no separate invention, but if a different C1 would do the trick .. Can't tell you. But it doesn't matter, just claim all of them, that's really the best way ;-). It's easy as that, because even if they are regarded as separate invention, you may then decide which to pursue and if you want to pursue both you can file a divisional application (basically the same application again but with different claims) pursuing the other. – DonQuiKong Feb 28 '17 at 12:54
  • C2 is totally dependent on C1. Though, C2 and C2 could be performed on the same iOS app or two different applications. What I am concerned about is C2 because that is the one I do not want people to make and without C2 anyone making C1 will have to get a license from me to use C2. What if I decided to delay doing the claims until they are done by a lawyer on the non-provisional patent. What is the least I could write in terms of aspects and the word method. Should I use method to describe the entire system or methods to describe C1 and C2 methods? – Rick James Feb 28 '17 at 13:16
  • That sounds like a different questions. Describe the whole system in as many ways as possible as a method, an apparatus and as asoftware and make the description fit every possible claim for all of those. Or just get an attonrey now, your questions are not specifically answereable without knowledge about the exact invention and the prior art. There are pro's and con's for all ways of doing it – DonQuiKong Feb 28 '17 at 13:22
  • I added a reference to another question that might be relevant to the answer. – DonQuiKong Mar 1 '17 at 10:12
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If each of C1 and C2 can stand alone (even if you don't see the value in it), they should be claimed as separate independent claims. This is because each is a separate invention.

One way to consider this would be whether C1 or C2 could be replaced with something else without it destroying the overall invention. That is, could you envision an alternative to C1 which would provide the input that C2 needs? If so, C2 probably is a separate invention (and vice versa). If you include both these in the same non-provisional application, you may receive a restriction requirement (termed a lack of unity objection in every non-US jurisdiction) when you do this (as explained by DonQuiKong), but that's remediable by paying fees.

Conversely, if each cannot stand alone, they should be claimed in combination only. This is because each of C1 and C2 alone would lack utility.

An example

In a comment, you mentioned:

C1 is simply a new way to input data to a cell phone like watching the screen do some visuals and effects and corresponding to those. Then the result is used in C2 to actually display whats intended from the invention.

C1 stands alone (it is a method of input). C2 stands alone (it is a method of display, which ostensibly could receive data in any way). There might be a nice synergy by combining the two, but they aren't essential. In this case, they should be claimed as separate independent claims.

  • Thanks a lot, Maca. I wish I could mark both answers but that is not possible. – Rick James Mar 4 '17 at 14:32

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