Straightforward Approach: 1 patent app = 1 invention

The 1-to-1 approach is straightforward: a separate patent application is filed for each invention. Where an inventor has two or more related inventions, multiple applications would be filed with each application covering only a single invention.

Suppose an applicant has invented two distinct product features (let’s call them A and B) and seeks to patent both A and B around the same time. The 1-to-1 approach would result in filing a first application on A and a second application on B.

Consolidated Approach: 1 patent app = 2 inventions

In contrast, a consolidated approach combines multiple inventions into a single specification, which is sometimes called an “omnibus specification.” The assumption here is that these inventions are related, and that it would not be a stretch to talk about inventions A and B in the same document. The result would naturally be a greater number of drawings and a lengthier description.

But, there’s more to a combined specification than merely a higher quantity of words. Combining multiple inventions into a single specification enables the applicant to describe the whole of the invention (e.g., the entire system, assembly or product) as comprising multiple features. In other words, an omnibus specification enables the applicant to pursue claims on the combination of A and B, which would not be possible if A and B were each filed separately.

Let’s see how the 1-to-1 approach differs from the consolidated approach.

Foreign Filing Considerations

1-to-1 Approach: Multiple foreign filings

Since the 1-to-1 approach leads to multiple cases, each case would have its own priority date and corresponding foreign filing deadline. If foreign patent protection is desired, a counterpart international PCT patent application would have to be filed for each US application.

In our example, the applicant would have to file a first PCT application for the A invention and a second PCT application for the B invention.

Consolidated Approach: Single foreign filing

A consolidated application would have only one foreign filing deadline. Consequently, an applicant can file a single international PCT application to pursue foreign filing. Though the applicant may eventually have to file divisional applications to pursue claims on the various inventions, the consolidated approach enables the applicant to file fewer international applications upfront. This saves upfront costs, thereby conserving cash flow.

Claims

1-to-1 Approach: Limited scope

Since you can only claim what is described, each patent application under a 1-to-1 approach would only allow for claims on the invention described in each specification. So, the A patent app would allow for claims on A only, while the B patent app would allow for claims on B only.

Consolidated Approach: Greater flexibility

In an application describing both A and B, an applicant can pursue claims on A alone, B alone or the combination of A and B. The flexibility to claim both A and B, which is not available in the 1-to-1 approach, is a key factor favoring the consolidated approach. This may be particularly advantageous if the prior art already includes A alone and B alone, but not the combination of the two.

Get 2 patents for the price of 1?

Though the consolidated approach may lessen cash flow in the short term, the long term costs of both approaches eventually amount to roughly the same ballpark. USPTO examiners generally disfavor reviewing claims directed to more than one invention in a filing, so the result of an omnibus specification is that you will eventually have to file multiple continuing applications to pursue claims that were not pursued in the parent application (e.g., not elected in response to Restriction Requirement).

 

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.