• FreeAdvice has a new Terms of Service and Privacy Policy, effective May 25, 2018.
    By continuing to use this site, you are consenting to our Terms of Service and use of cookies.

One patent applications or two?

Accident - Bankruptcy - Criminal Law / DUI - Business - Consumer - Employment - Family - Immigration - Real Estate - Tax - Traffic - Wills   Please click a topic or scroll down for more.

S

Stuman

Guest
Hi. I am attempting to complete my own non-provisional patent for a web application/business method. There are two distinct features to this one method. Step A requires gathering information from a what I would call a client. Step B requires gathering information from that client's users, retrieving some info from Step A, and using them together to perform a specific function. In my mind it is one very closely related business method. But as a point of fact it is two separate web applications that each complement and require each other. Do I pass this off as one patent application (for instance, with two different flowcharts) or do I try and make two different applications? As a third possibility: is there anyway to convey something like that in one flow chart?
 


divgradcurl

Senior Member
There are two things to consider here. First, you say that B requires stuff from A. Do A and B seperately have functionality, that is, do they individually meet the "usefulness" requirement? The second question is whether A and B seperately are patentable, both in terms of patentable subject matter and non-obviousness/novelty.

If the answer to both questions is yes -- that A and B individually are useful, novel, and non-obvious over the prior art -- then you could file separate patent applications for each, and potentially have 2 patents instead of one. However, then you would have to also patent A+B -- if you didn't, someone else could (unless A+B becomes 'obvious' in light of A and B).

Its a judgment call you will have to make. If A and B do meet the patentability requirements, and would have some marketability separately, then it makes sense to file patents on both A and B as well as A+B. Alternatively, if only A or B alone is patentable, then you could patent A or B and A+B.

Even if A and B separately are patentable, it is still possible to capture A, B and A+B in a single patent application with carefully drawn claims; depending on the invention, you could potentially claim A, B and A+B in the same application. Of course, if A and B are truly separate inventions from A+B, the patent office may require you to file a divisional application -- but at least you only have to file 1 application intially, and you can wait and see what happens...
 
S

Stuman

Guest
Thanks for the reply. The reverse is actually more true in this sense: I could see B, slightly modified, being separate from A. But A is completely useless without B. That being said, I have one follow up question ... You said...

"Even if A and B separately are patentable, it is still possible to capture A, B and A+B in a single patent application with carefully drawn claims; depending on the invention, you could potentially claim A, B and A+B in the same application. Of course, if A and B are truly separate inventions from A+B, the patent office may require you to file a divisional application -- but at least you only have to file 1 application intially, and you can wait and see what happens..."

If I'm reading this correctly, if I go for A+B, there is a decent chance that the follow up would be to simply write a divisional application. I wouldn't lose both patents in one stroke-- which is my fear. Is that correct?
 

divgradcurl

Senior Member
if I go for A+B, there is a decent chance that the follow up would be to simply write a divisional application. I wouldn't lose both patents in one stroke-- which is my fear. Is that correct?
No, you wouldn't. A divisional is called for when a single patent application contains two inventions that should reasonably be patented seperately. When you file a divisional, you simply split the app into 2 apps, and both are afforded the priority date of the original application.

From your further description, since A would not be a viable invention on its own, B and A+B are probably not going to be considered two seperate inventions that would result in a divisional -- but that will be very fact-specific. However, you should still be able to capture both B and A+B in a single application bu clever claims drafting.
 
S

Stuman

Guest
Thanks again. My big concern is that in graphically representing this-- which, to my understanding with software, has to be by flowchart-- I will definitely have to have two distinct flow charts. Unless there is some methodology in flowcharting to connect complementary programs that I am not aware of. Assuming that I am right, would the presence of two distinct flowcharts result in a rejection of some sort? Or would they tolerate both in an A+B scenario?
 

divgradcurl

Senior Member
To be honest, I don't know. There's nothing in the rules that would require a rejection in this case, but I 'm not sure how it would be handled.
 
S

Stuman

Guest
Thanks do you recommend filing electronically, even if that means that I would have to get my customer number first, or is filing a paper claim a better option?
 

Yuke

Member
Thanks again. My big concern is that in graphically representing this-- which, to my understanding with software, has to be by flowchart-- I will definitely have to have two distinct flow charts. Unless there is some methodology in flowcharting to connect complementary programs that I am not aware of. Assuming that I am right, would the presence of two distinct flowcharts result in a rejection of some sort? Or would they tolerate both in an A+B scenario?
I would file a single patent. If your two concepts seem interelated then I doubt the examiner would force a divisional. Make sure the disclosure is sufficient to support both concepts just in case you are asked to file the divisional. You cannot add new matter after filing, because if you do you will lose the benefit of your earlier filing date.
 

Find the Right Lawyer for Your Legal Issue!

Fast, Free, and Confidential
data-ad-format="auto">
Top