Q: Do I Need 2 Utility Patents, or can I get away with only filing 1 with the 2 different functions but same, Field Sock.
Field Sock is attached 2 main sock & my 2nd design, the Field Sock is not attached to main sock.. I'm selling them as 2 different utility socks that serve different functions.
I have a provisional patent & in process of filing for Utility Patent.
A:
The USPTO Examiners have the option to say -- whoa -- you are asking me to do more than one patent's worth of work as there are more than one invention here. They can request that you seek to restrict the current application to just one claim cluster and leave other claim clusters for you to chase in a special type of continuation application called a divisional application.
It is a subjective call and thus hard to predict. Note that when you file the application with more than 20 claims, you pay extra claim fees. The examiner does not get extra credit from these fees (bad policy from my opinion). NOTE -- when you cut back to a smaller set of claims to have just one claim cluster you do not get the excess claim fees back (another bad policy).
So if the two embodiments are really the same idea with a slight variation, I would at least try to keep them in the same case, even if you initially did not duplicate every possible dependent claim into each independent claim family.
So it is a good idea to put all the claims you might reasonably get under one application but avoid putting in many claims beyond 20. If you can get both embodiments examined in one application you will save a lot of money (especially when you factor in the maintenance fee payments to keep the application alive).
The one thing I would not do is immediately file two utility applications. I would have one specification and then decide later whether to file a divisional application if forced to do so.
If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at
https://lawyers.justia.com/lawyer/kevin-e-flynn-880338
Kevin E Flynn
A: BTW --- just so you use the right nomenclature. You have a pending provisional patent application. It is not a patent as you cannot sue anyone for patent infringement of a provisional patent application.
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