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

There were several challenges in this project. These were:

• The client was concerned about the increased cost involved in filing multiple embodiments in a single design application.
• In addition, the client wanted to know what type of embodiments can or cannot be filed in a single application.
• There was also a dearth of awareness regarding the pitfalls of filing a single application with multiple embodiments. For instance, such filings can take a longer time 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 of them due to misunderstanding that the multiple embodiments contain more than one distinct design for patenting. Accordingly, the examiner might issue a Restriction Requirement and can advise the applicant to pick a particular embodiment.  

Thus, the client approached Sagacious IP to understand the right approach for the design application.

Our Solution

We first addressed the client’s concerns regarding application filing by providing vital information about the entire design application submission process. Then we advised the client that filing multiple embodiments in a single design application is possible without paying a lofty application fee. Multiple embodiments in a single application should have minimum alterations and stick to the core design of the invention. Since the client had similar embodiments with few minor changes and the same base design, we proceeded to file them in a single design application.

The team also gave him an example of a case wherein a client reached out to us to file a different embodiment in the same design separately, paying a fee each time. However, this cost could have been reduced if the client had analyzed the design earlier and figured out all design claims and disclaims at once. This can help one save the filing fees, and at the same time, the fees of the illustrator working on the same drawings for different embodiments multiple times.

Other embodiments can be removed from the submitted application and claimed later in a divisional application. However, this can consequently increase the cost through multiple filings. So, 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 design application 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 USPTO guidelines for patent drawing.

Embodiment 2: In the second embodiment, the applicant wishes to file an application in the US to disclaim all eight holes at the front. The purpose is to keep the shapes of holes universal such as square, elliptical etc., and also make the holes universally acceptable for using different types of fasteners and tools. Therefore, all the holes in front of terminals are drawn with dotted lines. Except for these holes, all terminals are drawn with solid lines and shading.

Embodiment 3: In the third embodiment, the applicant wishes to file an application in the US to disclaim all eight holes at the front along with the cavity at the top. The objective is to keep the shapes and size universal and acceptable for using different types of fastener and tools. Therefore, all the holes in the front and cavity at the top of terminals are drawn with dotted lines. Except for these holes and cavities, all terminals are drawn with solid lines and shading.

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 unparalleled patent drawing services. We create illustrations 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 drafters.

– Rupesh Vajpayee (Illustration) and the Editorial Team

Having Queries? Contact Us Now!