Expert: George H. Morgan, P.E., Patent Agent - 9/8/2010

Question
QUESTION: Hi there,

First of all, thank you for reading this question. I am grateful to this website.
I have a design that I want to patent that contains several elements. I am wondering if it is better to patent these elements separately or together. Obviously patenting them all together as part of the same invention would be cheaper, but I am worried that if one part is found to be not patentable for some reason, it might invalidate the entire application. Does this often happen?

ANSWER: If your design comprises all three elements, and  you are going for a design patent, one application would cover the design that had all three elements.

If each element is a separate invention, you would need three design patent applications.

If it is a utility patent, and one element was the key element, you could probably add the other elements as dependent claims. If one or two were not considered patentable material, maybe only one would survive.

This is a generality...your case may hinge on specifics that could change things.

Also, this is only the way it is over here in the U.S. Each country has their own rules.

Best wishes on your projects!

---------- FOLLOW-UP ----------

QUESTION: Thanks very much.
I am thinking of applying for a provisional patent first and then trying to get a prototype made. It is my understanding that at the end of the year covered by the provisional patent I must submit a prototype to demonstrate the functioning of the design I want to apply for the full patent for, is that correct? My design is for a device that is made up of very very small components. If I manage to make a large scale model that demonstrates the workings of the device, would that be acceptable to the patent office, or would the prototype also need to be on the same small scale?

Thanks again,
Eddie

Answer
A provisional application for patent is only applicable for utility patents. Then the 12 month delay in filing the formal application is relevant. You do not need to build a prototype to get a patent. The patent office has no desire to see or store your prototype.

You might build your prototype first, as often that uncovers problems or inspires changes to your design that influences or affects what you want to patent.

A design patent, which is a patent only on eye appeal of your invention, has a grace period, in this country, only 6 months. i.e. you must file within 6 months of discloser or offer to sell. There is no provisional application for a design patent.

I hope that helps.  Best wishes on your project.