1

In the course of developing specifications for one patent application, one of the subordinate details envisioned and described among alternate embodiments seems to have potential to be split off into a separate application. It is shown in the drawings. If it is suggested as an embodiment detail of the first application but not explicitly included in claims, can it then be written up as a separate application? The first application has not yet been filed, except as provisional.

  • 1
    Related, but with a slightly different slant: Software invention with two components – Maca Jun 18 '17 at 3:50
  • 1
    I'll let the attorneys and agents answer definitely, but sure. Same inventors though. A good patent lawyer/agent should be looking out for these kinds of opportunities to maximize the patent coverage. – Eric Shain Jun 18 '17 at 17:04
3

Q. "Can it then be written up as a separate application?"

A. Yes. Each of the two regular applications should claim priority to the provisional application which you have already filed. To do that, the regular applications must both be filed within one year of the provisional filing date.

The inventors of the two regular applications are not necessarily the same. But, for each regular application at least one inventor must have been an inventor named in the provisional application. Naming the proper inventors in each regular application depends on who invented the inventions claimed in that application.

Example: A, B and C are inventors named in the provisional application. A and B are inventors in one regular application and C is the inventor in the other regular application because A and B invented what is claimed in the first application while C invented what is claimed in the second application.

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.