I have invented a product that I want to target specifically to ski resorts. That is the most likely market/highest profit margin. I primarily want to prevent competitors from copying my invention to sell to ski resorts.There is a potential for this product in the consumer market, but given the characteristics of the invention, the potential for success is limited. However, if it is proven that there is a consumer market, I want to protect my IP to either sell into that market or license the product. Is it possible to file 1 patent that narrows the claims for use at ski resorts and file a 2nd patent that would have broader claims to cover the consumer market? Again, primarily I want to protect the ski resort market but not leave $ on the table if there is a consumer market.
There isn't enough information in your question to answer it definitively. This is one of those things you should discuss with a patent attorney to whom you'd confidentially disclose the invention, and then devise a protection strategy that's optimal to your situation.
That said, there are some general principles that can be stated in general.
If the gizmo you've invented is novel and non-obvious and potentially useful without modification in various markets, then a set of claims to the gizmo would cover it, regardless of eventual use. Alternatively, if you've conceived a gizmo that is useful in one configuration or embodiment at ski resorts and in another configuration or embodiment in the consumer market, then maybe you've made two separate inventions that best would be covered by two different patents; alternatively maybe you've made a single invention that could be expressed in a single claim, as well as in two or more specific claims, all of which are likely to be allowable in a single patent.
In addition, U.S. patent claims can be written to cover something that happens in a series of steps, as a "method" or "process." This method might involve use of a particular gizmo, either a new and inventive gizmo, or an old gizmo that's used in a new and nonobvious way. Perhaps the method of use would involve one set of steps if at a ski resort or another set of steps if used in the consumer market. These sets of steps might overlap; perhaps the generic set of, say four, steps, would be applicable at a ski resort, but a more specific set of those four steps plus two others, would be applicable when used by consumers. In that event, a single patent to the method, having a main claim that recites the four steps and a dependent claim that adds two more steps to the four recited in the main claim, would do what you need.
--Gerry J. Elman
Elman Technology Law, P.C. in Media, PA
This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance.
You should ask the attorney you’ll use to draft your application(s) for help with the strategy on this, but yes, it is possible to do as you suggest. It may or may not be the best or most cost-effective way to get want you want. And if you do this, you will likely (or not, depending…) use the same, complete specification / disclosure for both applications, but just have claims drafted for the separate uses. Of course with having separate, targeted claim sets, you might be missing patentable subject matter not in those areas.
It is also possible to draft one, broad application with claims that are not use-targeted (perhaps covering uses you have not thought of yet), but then license the technology separately to different industries and/or geographies, or however ever else you want to slice it up. You should definitely get help with this strategy BEFORE you start drafting applications; it will help a lot going forward.
And there are other strategies you might consider, which you and your patent attorney should discuss.
Best of Luck!
Legal disclaimer: This answer is not legal advice, but is for informational purposes only. My answer to your question does not create an attorney-client relationship between us. Please contact a licensed attorney in your area for competent legal advice.
Yes, you can file two separate utility applications, one directed to the broader market and another one specifically directed to the ski market.
The foregoing does not constitute legal advice. No attorney-client relationship exists between me and you. Please consult a qualified attorney before making any significant decision.
I would recommend filing a single patent application with multiple claims covering diferent aspects of your invention. You can file continuation applications later in the process to cover additional aspects of the invention. You should definitely have a patent strategy in place before filing the first application.
Disclaimer: This answer does not constitute legal advice and does not create an attorney-client relationship.
Only the attorney whom you retain can address the pros and cons in your particular case, but I will address this in general.
In short: filing multiple application for different uses is often, not only possible, but advantageous. There are certainly strategic issues to consider (as well as cost implications), but as, not only a patent attorney, but patent litigator and business advisor, I have seen a number of cases where having multiple patents (even when they might have been combined into a single one) is advantageous.
One's particular circumstances may or may not warrant the multiple-applicaiton approach, but it is certainly worth investigating.
I'm happy to endorse the prior answers. i am particularly happy to point you to the Thoughtful response of my friend and colleague Gerry Ellman. One additional comment is this: do not- NOT! Fall into the clutches of an invention marketing company. If you can't afford a first-class lawyer, you can't afford to be in business. There are no shortcuts, friend.
All comments on this site are 'in the cloud' and do not form an attorney-client relationship of any kind. Just consider them ideas for discussion. J
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