My New Invention Has Many Uses – Do I Need Multiple Patents?

A single invention (for example – an automated robot) may have many different uses and functions. Inventors often struggle to decide if separate patent application filings are necessary for each use and function. To assist you in deciding, answer the following questions.

Does the single invention have different uses?

Generally, a patent application should only claim a single use of an invention. The first and foremost reason: If you are claiming multiple uses of the same invention in a single patent application, the Examiner, at his or her discretion, may force you to select a single use and file separate patent applications for each other use.

The second reason is related to the licensing of your patented invention. It’s important to retain flexibility when licensing your invention. You may desire to license a first use of your invention to, for example, a medical device company while licensing a second use of your invention to, for example, a software company. By having separate patent applications, each claiming a different use, you have the flexibility to control your licensing schemes rather than granting all of the uses to a single entity.

Does the single invention perform different functions?

As with the ‘use’ analysis above, a patent application should only claim a single function of an invention. The first and foremost reason: If you are claiming multiple functions for the same invention in a single patent application, the Examiner, at his or her discretion, may force you to select a single function and file separate patent applications for each other function.

The second reason is related to the licensing of your patented invention. It’s important to retain flexibility when licensing your invention. You may desire to license a first use of your invention to, for example, a medical device company while licensing a second use of your invention to, for example, a software company. By having separate patent applications, each claiming a different use, you have the flexibility to control your licensing schemes rather than granting all of the uses to a single entity.

 

For more information visit Part 2 of this series.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

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Source: Smartup Legal