Legal Definitions - same invention

Same Invention

In patent law, the term "same invention" refers to two distinct but related concepts, both aimed at ensuring fairness and clarity in the protection of intellectual property.

• Context 1: Preventing Double Patenting

  In this context, "same invention" refers to a situation where a second patent application seeks to claim the identical subject matter as an invention for which a patent has already been granted, typically to the same inventor or entity. Patent law generally prevents an inventor from obtaining multiple patents for the exact same innovation, as this would unfairly extend the period of exclusive rights beyond what is legally allowed.

  Example 1: Imagine a technology company successfully patents a unique algorithm that significantly improves the energy efficiency of data servers. A year later, an engineer within the same company, perhaps unaware of the existing patent, files a new patent application for an algorithm that, upon review, is found to be functionally and structurally identical to the one already patented, performing the exact same task in the exact same way to achieve the same result.

  Explanation: In this scenario, the patent office would likely reject the second application because it claims the "same invention" as the first. Granting a second patent would constitute "double patenting," giving the company an unwarranted extension of its exclusive rights over the same innovation.

• Context 2: Reissuing Patents for Correction

  When a patent owner discovers an error in a patent that has already been granted—such as a mistake in the claims or description—they can apply for a "reissue" patent to correct these errors. In this context, "same invention" means that the reissued patent must cover the exact same invention that was described and intended to be protected by the original patent. The reissue process is for correcting mistakes, not for adding new inventions or expanding the scope of the patent to cover something entirely different that was not part of the original disclosure.

  Example 2: A small business obtains a patent for a novel type of ergonomic office chair with a unique lumbar support mechanism. After the patent is issued, they realize that one of the patent claims accidentally omitted a crucial detail about how the lumbar support adjusts, making the claim narrower than intended and not fully reflecting their invention.

  Explanation: The business can apply for a reissue patent to correct this error. The "same invention" principle dictates that the reissued patent must still be for that specific ergonomic office chair with its unique lumbar support mechanism. They cannot use the reissue process to, for instance, add claims for a new feature like a built-in massage function, because that would constitute a different invention not originally described or intended to be patented.