More than one way to perform the function, do I have to patent them all? 6 Answers as of December 30, 2010

I have developed a system to do a certain function. But later on I figured out there are more than one way to alter the system to do the same function, so if I patent the system is it possible for someone else to modify it then patent it? How well would a patent protect my idea in that scenario?

Ask a Local Attorney. 100% Anonymous. Free Answers.

Free Case Evaluation by a Local Lawyer: Click here
Young Basile
Young Basile | Denise Glassmeyer
Here are some points to consider as you discuss this matter with your patent attorney.

* There is more than one way to claim an invention. Three of the most common types of claims are apparatus or device, process or method, and product-by-process.
* Method claims, as a general principal, are limited to a specific function or process. Article or device claims may or may not be function limited. For instance the article claim may simply be directed to a device having element A, B, C etc.
* The breath of any claim depends on the prior art and the statements made in the patent specification and during patent prosecution.

It may be the case that your invention can be claimed in a manner that covers multiple functions or end use applications. One of the things you and your patent attorney will discuss during initial disclosure meetings is just this point. Drafting an initial application and claims to address and cover multiple end use applications and functions is one of the things that patent attorneys really strive for.

Good luck and let us know if there are further concerns or questions.
Answer Applies to: Michigan
Replied: 12/30/2010
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
Your patent can have more than one embodiment of your invention. Remember you get 20 claims for the same price as one claim.
Answer Applies to: Oregon
Replied: 12/29/2010
Fish & Associates, PC
Fish & Associates, PC | Robert D. Fish
The whole point of patent protection is to secure a commercially significant monopoly. If there are multiple, commercially viable, ways to solve a problem, then blocking off less than all of those ways will not achieve a monopoly. Its like a ship with holes in the hull. It doesn't do much good to block off only some of the holes, if the other ones are so big the ship will sink anyway. So yes, you need to find some way of claiming all commercially viable solutions, whether you know what they are or not, while circumventing all known combinations and all combinations that are obvious over what is already known. That's usually a very tall order, and is what your patent attorney is supposed to be doing. Its very difficult to do that yourself, and indeed most patent attorneys won't do that either. All they will do is claim what you invented.
Answer Applies to: California
Replied: 12/29/2010
Malhotra Law Firm, PLLC
Malhotra Law Firm, PLLC | Deepak Malhotra
There is no requirement to patent all ways of doing things. The claims section of a patent defines the legal scope of protection. Consider whether there is generic language that could be used that could cover both alternatives, and discuss this with your patent attorney.

If a patent application has already been filed and is still pending, there may be time to file a continuation application with claims directed to the alternative manner. Speak to your attorney now.

If an application has not yet been filed, it may be possible to draft patent claims to recite the function without being too specific about how the function is being performed.

If you do end up with issued claims that cover one way but not the other, keep in mind that a requirement to being able to get a patent is that you have to be an original inventor. You can't just see someone else's idea and patent it. It is possible that someone else may independently come up with the same idea. But another person who independently invents it cannot patent it as long as it has been published or sold more than a year before their filing date. It is publication that prevents them from patenting. Your issued patent is just one possible form of publication. You could also publish on a website or elsewhere. This is called a "defensive publication." But it would be better if you can get issued patent claims to cover it.
Answer Applies to: Washington
Replied: 12/28/2010
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
It is surely possible to modify a patented technology to get around the patent. This is commonly referred to as a design around. However, if the patent is drafted properly one can minimize the number of ways to do such design around. As a result, you need to consult and use the services of a skilled patent attorney to draft the patent application so as to achieve the broadest scope of your invention.
Answer Applies to: California
Replied: 12/28/2010
    Handal & Morofsky LLC
    Handal & Morofsky LLC | Anthony H. Handal
    If you know of several ways to perform a certain function, you should disclose them all in the application. This will support broad claims that may encompass more than the disclosed methodologies. It is important that you work with your attorneys to develop claims which are generic to all of the methods, if that is possible and/or use other patent protection strategies.
    Answer Applies to: New York
    Replied: 12/28/2010
Click to View More Answers: