District Heights, MD asked in Native American Law and Patents (Intellectual Property) for Maryland

Q: How many variations can be covered in one patent? I created a gaming table that I foresee being done in Multiple ways.

Gaming table utilizes a clear surface, but that could be done via glass, plastic, etc.

Table is also able to be fliped over utilizing both sides, however this could be done manually, mechanically, or electronically

Also, I am "American Indian" and do not belong to a federally recognized tribe. Please provide any relative information

2 Lawyer Answers
Peter D. Mlynek
Peter D. Mlynek
Answered
  • Patents Lawyer
  • Moorestown, NJ

A: There is no limit how many variations of ONE invention you can cover.

But, you cannot claim more than one invention in one patent. If the Examiner thinks that the claims cover more than one invention, then he/she will issue a restriction and ask you to elect only one invention to prosecute.

The question becomes: if you make the table out of another material, or if you make another way of flipping the table over, is this a new invention or is it just a variation of the same invention? The answer really depends on if the variation is patentably distinct or not.

Good luck!

1 user found this answer helpful

Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: The issue of whether two different examples of gaming table fall into one "invention" or not may seem abstract and somewhat subjective. There is a lack of clear rules on this decision. There are times when I disagree with a patent examiner then the examiner states that the patent application has several different inventions, but we live with that decision and divide the claim sets into separate copies of the patent application which will each be evaluated and ideally each will be issued.

It may be helpful to provide an example. Assume your invention was for a new wood screw and the point of novelty was that you had a new shape to the threads. Then you would likely be able to have within that application screws with various types of screw heads and openings to receive a screw driver (flat head, Phillips, Torx, Allen, Robertson, etc.) as these variations are not at the point of novelty and would not require different searches. Likewise, you could show examples of different screws using different conventional screw head shapes like button head without having to break the patent application into parts.

However, if your new screw application had two different types of screw threads and you thought both types were improvements and needed protection, then it is likely that the Examiner would make you limit your claims to one new screw thread in the first application and to chase the claims on different screw threads in a second application.

I am not aware of any interplay between status as a Native American and the patent process. There are discounts on USPTO fees for companies with less than 500 employees (small entity) and a special category called micro entity which gets a 75% discount off of USPTO fees. https://www.uspto.gov/patent/laws-and-regulations/micro-entity-status-gross-income-limit

Hope this helps.

Kevin E Flynn

1 user found this answer helpful

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