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I have an omnibus specification and I want to split it into multiple patents at a later point. I'm little afraid that accidentally I'll double patent my work.

So I just need some clarification.

I have Patent A, B, C.

Patent A is the main patent. It contains step X and Y.

Patent B is a derivative patent that relies on Patent A functionality. The steps will look like W, X, Y, Z

Patent C also a derivative patent that relies on Patent A functionality. The steps will look like U, X, Y, Z

Since B and C claims contains Patent A claims, does this considered as double-patenting?

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  • What exactly is the point of having multiple patents with the same claims? – Eric Shain Jul 23 '19 at 13:56
  • @EricShain I'm not gonna have multiple patents with same claims. Each patent deals with different inventive concepts. But as I said, patent B and C relies on patent A. Patent A is the core inventive concept. Patent B and C are derivative inventive concepts. Each patent gonna use at least 100 pages. – Giri Jul 23 '19 at 14:01
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    I fear you are trying to write your own patents without help from a patent attorney. In my opinion, that’s not a recipe for success. – Eric Shain Jul 23 '19 at 14:04
  • @EricShain You are right. At this point, I can't able to afford patent attorney for all my patents. I hired a patent firm. But they said they can help me with only one inventive concept for the amount I have. For the rest I have to do it on my own. I know that is a very bad idea. But I have no other choice at this moment. I don't want to lose my priority date since a big company trying to rip off my many years of work. As they say, something is better than nothing. – Giri Jul 23 '19 at 14:11
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    This question and answer from yesterday is relevant: patents.stackexchange.com/questions/20663/… – Eric Shain Jul 23 '19 at 14:38
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In your example, you say "patents B and C contain patent A's claims". That is not the case in your example. They build upon the information taught in patent A.

The issue will be whether the claims in B and C are obvious variants from the teachings embodied in the claims of patent A. We can't tell that from "W, X, Y, Z". If adding step W at the start and adding Z to the end of the steps is not an obvious variant of X, Y there is no double patenting.

If an examiner asserts that there is a non-statutory double patenting issue, you can argue, amend, or sign a terminal disclaimer. In a terminal disclaimer you get the multiple patents but agree that when one expires they all expire and that they will always be commonly owned.

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