Post by rmc on Jan 30, 2015 3:00:42 GMT
Let's say you are the inventor of the very first bicycle. However, because you are unsure if riders could balance themselves at all times (worrying about potential litigation, possibly), your very first embodiment is one with built-in training wheels.
So, you set up a provisional application for a bicycle, essentially having four wheels (two main road wheels plus the smaller, fixed training wheels), send it off to the USPTO, and also hire a patent attorney.
Your attorney requests that you imagine as many alternate embodiments as you can so that he can write claims that declare as wide as possible a definition. While you are doing so, you realize that the training wheels need not be a permanent part of the invention. You then further conclude that an improvement for the training wheels is making the suspension arms slightly deformable, allowing metered support while leaning during turns. You also realize that a reclining type of bicycle could also be configured.
You report back to your attorney, drawing and describing all the embodiments you've come up with. He drafts the claims, first describing the bare-bones bicycle, then the one with training wheels, then the one with deformable suspension in the training wheels, and lastly calls out the reclining bicycle.
A year later, the USPTO essentially tells you that you need to pick just one thing to be claimed (which is called a "restriction requirement"). They go on to explain that what you've essentially done is to try and patent more than one invention. The patent office defines each of your embodiments as distinct, non-obvious and unique. You can attempt to argue that all embodiments are really just one invention, but the USPTO still requires you to pick one claim anyway, and if you lose the argument, it automatically results in another Restriction Requirement, even though you've already picked one (because they'd need to check if you've 'changed your mind'). You ponder the worth of your patent attorney for a moment and then set out to make a decision on what exactly to cut...
Knowing that an invention described in a minimum-number of parts is more-easily protected than an invention built from more parts, you are, at first, inspired to declare just the basic bicycle; cutting all the other designs out of your patent. But, this means your provisonal application would no longer enforce an earlier filing date because the more-basic design (the one without training wheels) was thought up and proposed well after your provisional application (on the permanent training wheel design).
Plus, you realize anyone could come along afterward and possibly improve your basic-bicycle by adding nifty parts; arguably infringing on your patent, unless their improvement is deemed essential to the absolute proper operation of the invention... Say for instance, training wheels? Now you are uncertain if fewer parts keeps other inventors away or not. On top of all that, it is widely accepted that if one can remove a part from a currently-protected invention in such a way that the invention still works, one gets to undermine the patent (they'd not be infringing, legally) though theyd not be able to patent the result as a "new" invention.
Furthermore, while you are also considering cutting the reclining bicycle design, you see someone working up that very idea, proving that it works well and, fortunately for you, they've been tinkering with the idea only after you drew it up in your regular patent application (the one after the provisional). But, if you cut it now, you will be giving it away to them!
Your attorney is replaced by a senior partner at the firm. And he proposes you keep all your claims by developing something called a "divisional" patent application (essentially patenting all the species of the invention, potentially costing you horrendous amounts of money).
So, now comes the question: Do you,
A). Patent just the basic bicycle, foregoing the earlier provisional date?
B). Continue the training wheel model, keeping the provisional date?
C). Mortgage the house so you can go with a divisional patent and claim everything?
D). Do ____________________ instead. (Could include abandoning everything)
So, you set up a provisional application for a bicycle, essentially having four wheels (two main road wheels plus the smaller, fixed training wheels), send it off to the USPTO, and also hire a patent attorney.
Your attorney requests that you imagine as many alternate embodiments as you can so that he can write claims that declare as wide as possible a definition. While you are doing so, you realize that the training wheels need not be a permanent part of the invention. You then further conclude that an improvement for the training wheels is making the suspension arms slightly deformable, allowing metered support while leaning during turns. You also realize that a reclining type of bicycle could also be configured.
You report back to your attorney, drawing and describing all the embodiments you've come up with. He drafts the claims, first describing the bare-bones bicycle, then the one with training wheels, then the one with deformable suspension in the training wheels, and lastly calls out the reclining bicycle.
A year later, the USPTO essentially tells you that you need to pick just one thing to be claimed (which is called a "restriction requirement"). They go on to explain that what you've essentially done is to try and patent more than one invention. The patent office defines each of your embodiments as distinct, non-obvious and unique. You can attempt to argue that all embodiments are really just one invention, but the USPTO still requires you to pick one claim anyway, and if you lose the argument, it automatically results in another Restriction Requirement, even though you've already picked one (because they'd need to check if you've 'changed your mind'). You ponder the worth of your patent attorney for a moment and then set out to make a decision on what exactly to cut...
Knowing that an invention described in a minimum-number of parts is more-easily protected than an invention built from more parts, you are, at first, inspired to declare just the basic bicycle; cutting all the other designs out of your patent. But, this means your provisonal application would no longer enforce an earlier filing date because the more-basic design (the one without training wheels) was thought up and proposed well after your provisional application (on the permanent training wheel design).
Plus, you realize anyone could come along afterward and possibly improve your basic-bicycle by adding nifty parts; arguably infringing on your patent, unless their improvement is deemed essential to the absolute proper operation of the invention... Say for instance, training wheels? Now you are uncertain if fewer parts keeps other inventors away or not. On top of all that, it is widely accepted that if one can remove a part from a currently-protected invention in such a way that the invention still works, one gets to undermine the patent (they'd not be infringing, legally) though theyd not be able to patent the result as a "new" invention.
Furthermore, while you are also considering cutting the reclining bicycle design, you see someone working up that very idea, proving that it works well and, fortunately for you, they've been tinkering with the idea only after you drew it up in your regular patent application (the one after the provisional). But, if you cut it now, you will be giving it away to them!
Your attorney is replaced by a senior partner at the firm. And he proposes you keep all your claims by developing something called a "divisional" patent application (essentially patenting all the species of the invention, potentially costing you horrendous amounts of money).
So, now comes the question: Do you,
A). Patent just the basic bicycle, foregoing the earlier provisional date?
B). Continue the training wheel model, keeping the provisional date?
C). Mortgage the house so you can go with a divisional patent and claim everything?
D). Do ____________________ instead. (Could include abandoning everything)
