Following up on the subject of multiple inventions, and on the relationship
between the invention and the claims.
According to the Manual of Patent
Examining Procedure on the PTO Website:
If two or more
independent and distinct inventions are claimed in one application, the Director
may require the application to be restricted to one of the inventions. If the
other invention is made the subject of a divisional application which complies
with the requirements of section 120 of this title it shall be entitled to the
benefit of the filing date of the original application.
above seems to suggest administrative discretion. Claiming two or more
independent and distinct inventions on a single issued patent would not
seem to invalidate the patent.
Many if not most patents contain
sequences of related claims, where some claims may be process or method claims,
others may be machine claims, and others may be manufacture of composition of
matter claims. Deeming patents invalid if they contain claims from more than
one statutory category would certainly cut a very broad swathe through patents
in all fields of invention!
The paper Rescuing the Invention
from the Cult of the Claim (Oskar Liivak, Seton Hall Law Review) is devoted
to a discussion of the relationship between inventions, claims and embodiments.
The following paragraph is to be found on page 8 of this interesting and
In this view, claims are "the sole
measure of the invention" and they form the "cornerstone" of the
modern patent system. In this system, as argued by Judge Giles Rich, "the
sole function of [a] patent claim" is "to determine the scope of the
right to exclude." The claims in a patent application are the subject
matter over which the applicant is requesting exclusive rights in exchange for
their disclosure. The invention, the claims, and the patentís exclusive rights
conceptually seen as synonymous.
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