Monday, January 6, 2014, 8:49 AM

Patent Families

Often, a single disclosure from a client leads to a single patent application.  Sometimes, the claims in the patent application face a restriction requirement, and the unelected claims can get later filed in a divisional patent application.  Or, the client may ask for a continuation, with claims fully supported in the parent application as filed.  But, what should we do if the client wants to have a patent family from the outset, descending from a single disclosure?

A particularly rich disclosure may have multiple inventive aspects, each of which can be developed in a claim set.  So, we can write a very detailed description, with lots of embodiments, and lots of drawings.  A disclosure that lends itself to a method might have a patent application with several flow diagrams, and accompanying description.  One claim set could be dedicated to one of the flow diagrams, with one or two method claims and perhaps system or tangible media claims.  Later patent applications could have claims sets dedicated to others of the flow diagrams, also with method claims and system more tangible media claims.

A key advantage to filing a detailed patent application is that, during the pendency of the parent patent application, every continuation, divisional, or continuation-in-part application filed that claims benefit of the parent application has the same effective filing date as the parent patent application.  Of course, material that is later added make a continuation-in-part application, and claims in the continuation-in-part application pertaining to that material, benefit only from the filing date of the continuation-in-part application.  A client may ask for multiple claim sets initially, and, knowing this, the practitioner can make sure to have sufficient detail in the parent application to support these in the present applications and further claim sets in later applications.  Such a strategy can lead to a patent family, and tends to be more efficient with respect to costs save document as compared to a one-at-a-time approach.  Multiple patents with the same specification but differing claims can be filed in parallel (on the same filing date) or sequentially, with a parent application having descendents.  It is well worth discussing patent strategy up front with the client, so that the client understands a range of possibilities and can make informed decisions.  This makes the patent practitioner’s job more straightforward as well.  All part of the art of patenting.

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