A single invention (for example – an automated cleaning robot) may have many different innovations (let’s call them ‘components’) making up the entire invention. Inventors often struggle to decide if separate patent application filings are necessary for each innovation. To assist you in deciding, answer the following questions.
1. Could the Components be used independently of the entire invention for a different invention?
If your innovative component can be used across many different platforms, then it is best to focus a single patent application on the component itself. In addition, a patent application on the invention as whole itself may be filed, incorporating by reference the patent application on the component.
In contrast, if your innovative cannot be used across many different platforms, then it’s best to file a patent application on the invention as a whole and detail the innovative component therein.
2. Is there novelty within the Component itself?
Of course, you would feel that your innovative component is ‘novel’ – but would it pass patent examination without the context of the invention as a whole? In order to pass patent examination, the component itself would need to be deemed by the examiner as: Useful, Novel, and Non-Obvious or Inventive.
If the component, independent of the invention as a whole, has a use on its own – it would meet the ‘useful’ requirement. If the component is the first of its kind (or an improved derivative of existing components), then it would meet the ‘novel’ requirement. If the component is more than just a combination of other existing components, then it would meet the ‘non-obvious’ and ‘inventive’ requirements.
For more information visit Part 3 of this series.
If you are interested in more detail related to your situation it is best to speak with an attorney.
Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.
Source: Smartup Legal