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Let's say that I am building a mobile app. There are two novel features of this app that set it apart from prior art.

However, these two features are inherently unrelated. But because they are for the same mobile app, I want to fit it in one patent application for cost efficiency.

Questions:

  1. Would lawyers typically agree to do that?
  2. Does the patent office allow for that?
  3. If this is allowable, what are the advantages and disadvantages?

1 Answer 1

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Does the patent office allow for that?

Generally, no. If you have independent features A and B, you will want to claim them independently in separate independent claims which will lead to a so-called "restriction requirement" whereby you will have to elect to pursue A and file a divisional for B or vice versa (or you can choose to just not pursue the non-elected invention). A divisional is another patent application with its own fees, so nothing gained there.

I believe it's almost always allowable to claim A and A+B in the same application but that would leave B alone unprotected. Or B and B+A with a similar caveat.

Would lawyers typically agree to do that?

If you are hiring a lawyer, you will be paying the lawyer in proportion to the number and complexity of the inventions that need to be described and claimed. It would be roughly the same effort for the lawyer whether it is split or monolithic.

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