0

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?

  • 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
  • 1
    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
  • 1
    This question and answer from yesterday is relevant: patents.stackexchange.com/questions/20663/… – Eric Shain Jul 23 '19 at 14:38
3

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.

|improve this answer|||||

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.