1

If there is a device -I know that it have never been existed before- that can be implemented by two different mechanisms, lets say one rotary and the other is a linear movement mechanism. And they are doing the same exact function with no differences.

Questions:

First, do theses two mechanisms considered to be different devices and I have to protect them with two separate patent application in order to claim priority for both mechanisms?

Secondly, if the device can be actuated mechanically-manual- or electrically, does the mechanical device considered to be a different invention than the electrical one? or they are the same and I have to mention in the patent application that the device can be actuated by two different actuation modes?

  • Without knowing the specifics of the mechanisms, I don’t think we can answer this question. Since you can’t divulge the specifics publicly, your best bet is to consult with a patent attorney or agent. – Eric Shain Jan 6 at 1:25
2

If there is a device -I know that it have never been existed before- that can be implemented by two different mechanisms, lets say one rotary and the other is a linear movement mechanism. And they are doing the same exact function with no differences.

As the device never existed, the device is considered Novel and potentially could be patentable.

First, do theses two mechanisms considered to be different devices and I have to protect them with two separate patent application in order to claim priority for both mechanisms?

As long as the device is one, the difference lies only with mechanism of operation it is an alternate embodiment of your device. If you wish to procure two different patents for the different mechanisms you can claim the priority from a single provisional application as long as all the alternate mechanisms are disclosed in the description.

Secondly, if the device can be actuated mechanically-manual- or electrically, does the mechanical device considered to be a different invention than the electrical one? or they are the same and I have to mention in the patent application that the device can be actuated by two different actuation modes?

The same above applies here as the actuation methods are different mode of operations and device is same it is considered as an alternate embodiment of your device.

The above answer is based on the assumption you are patenting the device, if you wish to claim mechanism there would be other factors come into play. For potential patentability evaluation consult a near by patent attorney.

  • A minor nit -- "Novelty" alone is insufficient for patentability. Non-obviousness is also required. Let's say the problem you were attempting to solve is lighting the inside of a sewerage pipe. And suppose -- for the sake of argument -- that no one ever bothered putting lights inside of sewer pipes because they smell bad. Just putting a light on the end of a stick that fits inside a pipe might be "Novel", but it's not "Non-obvious". – Julie in Austin Jan 9 at 23:29
2

The first thing to understand about patents, especially in "greenfield" areas - no previously existing products, devices, methods, etc. - is you want to make the patent as broad as possible, without being so overly broad that it's unpatentable. You've identified two methods? Good -- write claims which teach both of those methods.

You'll notice I used the word "teach", because that's what you're creating, a "how to make or do one of these things". You want to teach as much as you can, with as much specificity as you can.

So, let's say you've invented "A method and device for peeling potatoes using recycled disposable razor blades", and you can rotate the potato or you can linearly move the potato. How do you rotate it? How do you control the rotation? How many different ways of rotating a potato next to a recycled disposable razor blade can you think of?

Once you've done that -- rotating and linearly moving the potato -- think about rotating the blades or linearly moving the blades. What about other forms of recycled blades? What about utility knife blades? Disposable plastic forks?

On to your actual questions. Do you need to separate patents? No. Patents cost money to file and prosecute and as long as all you've disclosed is "A method and device for peeling potatoes" you're fine. Does it matter if the potato peeler can be operated both manual and electrically? Sort of -- if you're just cranking a crank on your potato peeler, it would be "obvious" that hand-power could be replaced with an electric motor, but you should still claim that the potato peeler can be operated with a hand crank or an electric motor.

Remember that your goal is to teach someone as many different ways to create, operate, implement, embody, etc. the potato peeler. In the US Patent Office you get your first 20 "claims" for the same price. Use all 20.

Best of luck -- patents are amazing things to have on your resume.

  • 1
    The examiner can make you split the patent into multiple patents if she believes there are multiple inventions. Otherwise a very nice answer. – Eric Shain Jan 9 at 19:39
  • Correct - the "thing" should be a single "thing" and the embodiments should all be closely very closely related. For example, the "other" embodiment might be "recycled box knife blades" but most definitely not "laser pointers you got from trade shows". It should be "obvious to one skilled in the art" that small cutting things are related, and that "rotary and reciprocal motion" are related. – Julie in Austin Jan 9 at 19:53

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.