Patent Search

Filing Strategy: Multiple Inventions & Proper Inventorship

Intellectual Property FirmsSome inventors consider the possibility of combining multiple inventions in a single patent application in order to “streamline” the patent application process by saving time and money. There are several issues to be concerned about regarding this practice as most intellectual property firms will advise. First of all, the USPTO provides means for entities to receive a single patent for a single invention. While many patents claim multiple types of inventions as part of an IP strategy (for example, a chemical process for producing a compound and the compound; or a system, a system device, and methods for performing processes using such a system), the criteria for determining a “restriction requirement” (or “unity of invention”) relies on the interrelatedness of the claimed inventions.


That being said, many cost-conscious entrepreneurs decide to “bundle” their inventions in a provisional patent application (PPA) anyway. Since a PPA is never examined in its own right, such bundling can be considered useful by some even if multiple inventions are later “unbundled” via a restriction requirement in a follow-on patent application as a cost-cutting measure in an IP strategy. Notwithstanding the issues mentioned above regarding one patent per one invention, there are other concerns that such practice raises.


Consider a situation in which an individual submits a PPA with three unrelated inventions. During the priority year, the individual decides it is worthwhile to pursue one of the inventions with a full patent application, but decides that the other two can wait (either due to financial constraints, market potential, or other reasons). Unfortunately, the individual will not have such an option because once the full application is published (18 months from the earlier priority filing date of the PPA), the PPA that was claimed as the priority document will also enter the public domain. The individual cannot have parts of the PPA removed from the original document. Whereas, had the individual submitted three separate PPAs, and then decided to pursue only one of them, the other two would have remained undisclosed, since a PPA is never published directly.


In addition, the issue becomes more complex when multiple inventors are involved, making the idea of combining inventions even less desirable. The USPTO requires that proper inventorship be disclosed upon submission of a patent application. While inventorship can be changed (either inventors added or removed) if inadvertent errors were made without deceptive intent, a “chain of inventorship” must be maintained from one application to another application that claims priority. That is, there must be “inventorship overlap” of at least one inventor. Typically, patents change in scope during the life of their prosecution which should be assessed in the formulation of an IP strategy. If aspects of a patent application are no longer claimed that were the sole contribution of one inventor, then that inventor should be removed from the inventorship. Patent rights can be assigned, wholly or in part, to third-party entities (such as companies, relatives, or other benefactors) by each inventor independently.


FlashPoint IP, a leader among intellectual property firms, factors these wide-ranging aspects into the process of securing patent protection, whether in performing  a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file a patent application, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.