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

Q: If my two patent applications can’t have the same title, but the priority country allows it, how is that handled here?

3 Lawyer Answers
William Scott Goldman
William Scott Goldman
Answered

A: While trademarks and copyrights are my specialties, I work with several excellent patent attorneys/agents, so feel free to call or email, and I'll set up an introduction...unless a patent attorney responds directly to your request on Justia, of course!

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

A: I am not aware of a rule that precludes having two patent applications with the same title. As a practical matter, I avoid doing so but I am not aware of a rule that will prevent it. If both applications issue as patents, they will be unique based on the patent number even if they have identical titles.

Further, there is not a rule that causes you to have the same title for member of the patent family in different countries. You may have a title in the US that is very different from the same idea that you patented in Canada or Australia.

I hope that this helps.

Kevin E Flynn

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

A: You have to handle it according to the laws of the country where the application is filed. What the priority country allows or not is irrelevant for the purposes of filing country.

This is, of course, a very big problem at times. To deal with this, you need to make sure that the first application in the priority chain is consistent not only with the laws of that country, but also obeys the rules of all of the other countries. The way that I typically handle it is that I draft a patent application that follows all of the laws of countries where the invention will eventually be applied for, and do a preliminary amendment or a Rule 161/162 Communication response, when the application enters the national/regional phase or is filed therein.

In case of amending the title to comply with the local rules is not a big deal, but other amendments may be more difficult.

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