Epic Patents

You’ve seen The Poseidon Adventure, a big sprawling movie with a dozen or so stars, each having major parts that have to be properly developed to showcase their talents. Some patents are like that with multiple different inventions all confined in the same description. You could echo the analogy to big movies and call these “epic patents,” though I call them “omnibus patents.” Whatever you call them, they create special challenges.

For one thing, many claims are needed, at least one independent claim for each separate invention (a simplification for purposes of discussion, there are good reasons to have three or four different kinds of independent claims for each invention). And for each independent claim, it is always wise to include a set of successively narrower dependent claims as validity protection against potential prior art. So for an omnibus application with four or five separate inventions, there can easily be 40 or 50 claims, even in our simplified scenario.

But the U.S. Patent Office will limit its examination of an application to a single claimed invention, issuing a restriction requirement forcing the Applicant to elect just one set of claims for examination. Any others can be pursued separately in one or more divisional applications. It is usually not too hard to choose a first set of claims to elect for initial examination, but it is often unclear whether or which claims to file in divisionals and when.

Luckily for you, I am here with an answer to that. When the patent attorney is initially preparing an omnibus patent application, he or she should be able to foresee the situation above. And the first of group of claims for the first invention expected to be elected should start with claim 1 and a conventional set of dependent claims, e.g., claims 2-10. Then include some additional “special” dependent claims which narrow claim 1 by adding in limitations that include the subject matter of each of the other independent claims that correspond to the other (initially unelected) inventions.

Why? Because shortly after the election of the first restriction group of the claims, the Examiner is going to produce an Office action on the merits which initially rejects all of the elected claims. Supporting that rejection, he (or she) is going to cite one or more prior art references that purportedly show what is claimed. And the rejections of the “special” claims are going to give the patent attorney and the client a suggestion of just how new and valuable each of the unelected inventions might be. If the rejection of any of the special claims is reasonably solid, then that suggests that it might be difficult to prosecute similar independent claims without the additional restrictions of claim 1. But if the rejection of any of the special claims is not very compelling, then that suggests that a divisional patent application with similar broader claims might be promising.

Thus, the use of special dependent claims to provide a preliminary test of potential divisional claims can be a useful tactic in large omnibus patent applications.