Filing Multiple Embodiments in a Single Design Application for a U.S. Inventor: A Case Study

The United States Patent and Trademark Office (USPTO) permits applicants to disclose multiple embodiments in a single design patent application. This helps in saving application fees as well as legal fees originating from the filings. However, there are often several risks involved in opting for multiple embodiments, and it may not be suitable in all scenarios. Therefore, inventors often seek professional expertise to ensure their application gets processed smoothly.  

The following case study describes how Sagacious IP assisted a US-based inventor from the sheet metal industry in filing multiple embodiments in a single design application. It also narrates how we shared technical prerequisites that would ensure the application‘s success.

The Challenge

The client was concerned about the increased cost involved in filing multiple embodiments in a single design application. There was also a dearth of awareness regarding the pitfalls of filing a single application with multiple embodiments. The client approached Sagacious IP in order to understand the right approach for his design application.

Our Solution

We first laid down his application concerns to rest by providing vital information regarding the entire design application submission process. We advised the client that filing multiple embodiments in a single design application is possible without paying a lofty application fee. We further informed the client about the drawbacks of filing multiple embodiments in a single design application. These applications can take longer to approve than a single embodiment application.

Moreover, the greatest risk is that the patent examiner might find all, or some, of them distinct and demand that the applicant select one. Other embodiments are removed from the submitted application, although they can be claimed later in a divisional application. The client requested samples for a single application with multiple embodiments. Therefore, we shared an electronic block having three embodiments in one application, as mentioned below.

Example for Multiple Embodiments in a Single Application

Embodiment 1: In the first embodiment, the applicant wishes to file a claim in the US for all four electrical terminals connected in a series. As a result, all of the terminals are drawn with solid lines, along with shading as per the American guidelines for patent drawings.


Figure 1: Patent Drawing for Embodiment 1

Embodiment 2: In the second embodiment, the applicant wishes to file an application in the US for the two outer terminals and disclaim both the middle terminals. Therefore, the two middle terminals are drawn with dotted lines, while the outer terminals are drawn with solid lines and shading.

Figure 2: Patent Drawing for Embodiment 2


Embodiment 3:

In the third embodiment, the client wishes to file a patent in China for all four electrical terminals connected in a series. As a result, all the terminals are drawn in solid lines, but without shading, as per the Chinese patent drawing guidelines.

Figure 3: Patent Drawing for Embodiment 3

Conclusion

Upon careful consideration, the client chose to file multiple embodiments in a single design application. We also recommended the client to try our patent illustration services. We have a team of expert patent illustrators with years of experience creating drawings for design and utility patent applications. The client was pleased with our recommendations and decided to use this service. In addition, the client has become one of our regular customers.

Sagacious IP provides its valued clients with patent drawing services. We supply drawings that are drafted in accordance with the patent drawing rules of the relevant PTO, thanks to the skilled team of around 300 researchers and expert draftsperson.

  • Rupesh Vajpayee (Sr. Patent Illustrator) and the Editorial Team

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