If you have multiple inventions related to a main idea or product, when does it make sense to combine them into a single utility patent application?

A guiding principle of filing utility patent applications is that you can only claim what you show. In other words, if your drawings and specification fail to show a feature, that feature cannot be claimed. When you have multiple inventions or concepts that are related to each other, it might make sense to combine the disclosures of the multiple inventions into a single specification called an “omnibus specification.” Let’s explore the different approaches to patenting multiple related inventions.

1-to-1 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 patent application on only A and a second patent application on only B.

Combined 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 for Multiple Inventions

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.

Combined 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 for Multiple Inventions

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.

Combined Approach: Greater flexibility

In a patent 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 combined 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

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com