3

Suppose I'm filing a patent about a new web based utility.

Can various aspects of it, such as presentation, database setup, processing method, etc. be grouped together as individual claims in the same patent? Assuming that the claims are individually valid, and bearing in mind that each of the above can also be their own independent patent application. I see many patents by larger companies focusing on just a single element, and not a broad grouping together of different things, hence the question.

The product in practice does not necessarily utilize each of the claims. And each claim can be used as part of a different setup too.

(The clarifying example below was added after the first answer): To clarify, For example, I'm patenting a new kind of car that I invented, and the claims include a new kind of wheels, and a new kind of steering system. Both these (wheels and steering system) might well be usable independently in other kinds of cars; but they were both invented by me as part of the process of inventing my new kind of car. And they are both used (although they don't have to be) in building my new kind of car.

This question on an invention with two components almost answers my question but in my case the components can possibly be used by themselves in a different setup.

2

Not really.

If you have two unrelated inventions, even if they might co-operate in a final functional product, you are likely to get a restriction requirement. If this occurs, and you cannot overcome it (which, in general, is pretty likely), you will need to elect one invention and file a divisional application for each non-elected invention.

The circumstances in which a restriction requirement may be raised are set out in MPEP § 803:

There are two criteria for a proper requirement for restriction between patentably distinct inventions:

(A) The inventions must be independent (see MPEP § 802.01, § 806.06, § 808.01) or distinct as claimed (see MPEP § 806.05 - § 806.05(j)); and

(B) There would be a serious burden on the examiner if restriction is not required (see MPEP § 803.02, § 808, and § 808.02).

A related, but different approach is used in most non-US jurisdictions. If there is no common inventive subject matter linking two independent claims, they lack unity of invention, and so are not allowable. This generally also results in a need to file a divisional.

  • Thank you for helping out on this. The inventions are not unrelated but part of a bigger invention, IMHO. But they can be used separately. To clarify, For example, I'm patenting a new kind of car that I invented, and the claims include a new kind of wheels, and a new kind of steering system. Both these (wheels and steering system) might well be usable independently in other kinds of cars; but they were both invented by me as part of the process of inventing my new kind of car. And they are both used (although they don't have to be) in building my new kind of car. – Yogesch May 9 '17 at 11:52
  • 1
    @Yogesch just try it, file a divisional if it doesn't work. But I agree with Maca, probably not. But an exact answer is impossible without knowing the exact specifications. An experienced patent attorney can maybe formulate it in a way that allows having some or all inventions in the same application while you yourself might not have the experience to formulate it that way and get a unity restriction. But that's all speculations, fact is, it depends on the inventions, the wording and the examiner. – DonQuiKong May 9 '17 at 13:46

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

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