Combining two claims for two inventions in one patent

Question

I was informed by the patent agent that I work with that I can combine two related inventions in one patent if they function together and use similar features. He said that by combining the two I could possibly have patent rights for the combined inventions and for one or the other inventions by itself ( but not both individual inventions.) Is this true?

Answer 1

More or less yes, but there are some conditions to be fulfilled and this depends mostly on the jurisdiction you are referring to.

The general idea is that you are not allowed to put two inventions in one application, because this equals to paying for one and getting two. Can you imagine, if an applicant was allowed to claim e.g. a new suitcase and a new machine for automatic peeling of potatoes in one application? For this reason, there are some rules which define what is considered a different invention and what may be considered "as a whole". But they are different from country to country. In Europe, unity of the invention is described here: http://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_v.htm

Furthermore, it might be possible that the jurisdiction/patent office you are referring to has set a limit of independent claims per category (this aims, too in avoiding to pay less for more, patent offices don't like that!). So if you invented a new espresso machine which requires the use of (specific) new capsules and a special adaptation of a number of other mechanical features, all those new elements might not be possible to be claimed separately in one application (claim for the espresso machine, claim for the capsules, claim for 4-5 different mechanical parts).

This situation is explained, for EPO standards, here: http://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_3_2.htm

For the US, I am sure there are similar provisions, but I am not aware of the legal basis of them. This site explains a few key points: http://www.fishiplaw.com/~fishipla/chapter5a.html#deciding

Answer 2

Mostly that is true.

In the US, if a granted patent contains two separate inventions, there is no problem (35 USC § 121):

The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.

The problem arises during prosecution, as the USPTO may require the claims to be restricted to one of the inventions. The other invention can then be pursued in a divisional.

The USPTO addresses the situation you mention at MPEP § 806.05(d).

Two or more claimed subcombinations, disclosed as usable together in a single combination, and which can be shown to be separately usable, are usually restrictable when the subcombinations do not overlap in scope and are not obvious variants.

That is, given two inventions A and B, and claims:

1. Invention A.
2. Invention B.
3. Invention A+B.

The applicant may be required to restrict to either claims 1 and 3, or claims 2 and 3.