Orlando, FL asked in Patents (Intellectual Property) for Florida

Q: If my ideas are connected, to I file one patent for them or separate ones?

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

A: If you have two inventions, then you will need to have two patents. If you have one invention, but it has several different flavors of the invention, then you can just file one patent application. Due to the costs, it is obviously beneficial to have everything in one patent application.

How do you know if you have one invention or two? It is sometimes difficult to tell. Normally, you would file everything in one application, and the first thing that the Patent Examiner does is to determine if there are multiple inventions. If so, then the Examiner will let you know.

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

A: As noted in the first answer, you may end up with several different patents. But your question is whether to file them as separate patent applications or file one.

For many clients that are looking to slow the burn of money, if it flows naturally to describe all the ideas in one document, go ahead and do that and file one application to start with. I would not pay for a lot of excess claim fees to fully develop the sets of claims for the various inventions. The reason is that when an examiner forces you to limit the first application to just one clump of related claims and leave the other claims for divisional applications, the USPTO does not refund the excess claim fees.

So try to file all the the related ideas in one patent and not file more than 20 claims to start with. Once you see how the USPTO reacts to the first set of claims, you will know whether you want to file the other sets of claims in other applications (they may be duplicates of the first application other than the claims).

You may want to pay to accelerate the process under Track One. This can cost as little as $1000 if you are a micro-entity.

I hope this helps.

Kevin E Flynn

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