Do You Need Multiple Patents for a Single, Multi-Use Invention?
If your invention has multiple innovations or components, you may be wondering whether to file separate patent applications for each innovation or file one application for the entire invention. This decision can impact your intellectual property and licensing flexibility. In this article, we explore the factors to consider when deciding whether to file multiple patents for a single, multi-use invention. We also discuss the advantages of filing provisional patent applications and how to keep some components of your invention confidential.
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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 the decision making process, answer the following questions.
1. Does the single invention have different uses?
Generally, a patent application should only claim a single use of an invention. The first and foremost reason: If you are claiming multiple uses of the same invention in a single patent application, the Examiner, at his or her discretion, may force you to select a single use and file separate patent applications for each other use.
The second reason is related to the licensing of your patented invention. It’s important to retain flexibility when licensing your invention. You may desire to license a first use of your invention to, for example, a medical device company while licensing a second use of your invention to, for example, a software company. By having separate patent applications, each claiming a different use, you have the flexibility to control your licensing schemes rather than granting all of the uses to a single entity.
2. Does the single invention perform different functions?
As with the ‘use’ analysis above, a patent application should only claim a single function of an invention. The first and foremost reason: If you are claiming multiple functions for the same invention in a single patent application, the Examiner, at his or her discretion, may force you to select a single function and file separate patent applications for each other function.
The second reason is related to the licensing of your patented invention. It’s important to retain flexibility when licensing your invention. You may desire to license a first use of your invention to, for example, a medical device company while licensing a second use of your invention to, for example, a software company. By having separate patent applications, each claiming a different use, you have the flexibility to control your licensing schemes rather than granting all of the uses to a single entity.
3. 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.
4. 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.
Provisional Patent Applications – A Consideration for Multiple Patents for a Single, Multi-Use Invention
You’ve decided that the best approach to protect your invention is by filing patents separately for all the different functions/uses and components. This approach, if affordable, provides numerous benefits (e.g., licensing benefits). Starting the filings out as provisional applications while the invention, as a whole, is still undergoing development or ‘proof-of-concept’ can be an affordable means to protecting the various aspects of your invention. If done properly, protections for needless public disclosures may be provided.
Do you want to keep some components a secret?
The subject matter of a provisional patent application is never disclosed to the public. This affords the inventor an opportunity to continue to improve the subject matter without sharing the disclosure to the public in its ‘patent-pending’ phase. It also prevents the subject matter from entering the public domain in case the inventor decides not to pursue a non-provisional patent on the subject matter.
Recommended Approach:
Break your idea up into components (if possible) and file them as provisional applications first. A full patent application (non-provisional) can claim priority to more than one provisional application. However, as soon as you claim priority to a provisional application, the provisional application becomes public record. If you want to keep different segments of your ideas from being disclosed, file them in separate provisional applications.
In this way, when you follow with a non-provisional, you can pick and choose which components are “ready” to become public record, and which ones can remain undisclosed protected ideas. Otherwise, if you put every aspect of your invention into a single provisional application, then the non-provisional that follows will render all of the components available to the public.Seeking assistance with your patent application? Learn more about our patent services or schedule your free initial consultation.
Yuri L. Eliezer, Esq.
Patent Attorney
Managing Partner