Inventors are busy people and are often developing more than one product at a time. Often they are also budget conscious and want to cut costs. When it comes to seeking patent protection for their products they sometimes wonder if they can file fewer applications in order to reduce the concomitant financial burden.
When the products bear some similarity in design or lie in the same technical field, can they file one application covering them all? Yes – that is possible and will reduce at least the amount of government fees payable upfront. As the scope of the application may need to be fairly wide to cover all of the products, it is likely that protection will be sought not only for the products per se but also the “white space” between and around the products i.e. products that are not specifically described or exemplified. This may result in acquisition of comprehensive coverage and provide the inventor(s) with a competitive market edge.
However, there are potential disadvantages associated with including several similar products in one application:
(1) A general rule of patent law is that each application must relate to one invention. There is a risk of an examiner misinterpreting where the invention lies if too many products are bundled together into a single application thereby leading to a poor quality examination. Further, if the products are too dissimilar an examiner may allege that the application impermissibly contains more than one invention and require payment of additional search fees or the filing of divisional applications for the extra inventions. Each divisional application requires payment of a filing fee. Filing separate applications in the first place lessons the likelihood of attracting these objections and associated fees.
(2) Broad patents cost more to write due to increased attorney time and may contain relatively more mistakes due to the large volume of subject matter. In most cases, the attorney cost for writing multiple applications each covering a similar product is not proportionally higher than for one application.
(3) A single application will require a large number of claims to adequately cover several products and excess claim fees are disproportionately expensive, especially in Europe.
(4) A broad patent application can hurt an inventor later when that inventor wishes to seek protection for a new product that (i) falls within the “white space” of the broad disclosure, or (ii) lies close to the boundary of the broad patent application. In a sense the inventor may unintentionally shoot himself / herself in the foot by filing an initial broad application containing several products.
(5) Assigning or licensing rights in one product can be more complicated when the product is buried within a broad application with other products. Maintaining separate applications for each product simplifies assignment or licencing of a particular product that is of commercial interest to a party or parties.
(6) Enforcing a broad patent against an infringer before a Court could lead to loss of a larger proportion of patent rights than the actual rights being enforced. It is possible, especially before a US Court, that the whole patent is lost! Segregating the products across separate patents will mean an inventor can more easily and safely enforce only the rights they need to.
(7) Displaying only one application in your patent portfolio might not prima facie look very attractive to investors or purchasers compared to a display of several applications.
While upfront cost is always a factor to an inventor in the patent filing strategy they adopt, cost should not always be the primary factor and weight should be given to the other factors (1)-(7) above.
Do not hesitate to contact Chris Addicott if you have questions or would like to discuss further.