Subcombination: Everything You Need to Know
Subcombination refers to part of a combination, which may be an invention you're trying to claim a patent for.3 min read
2. Variations With a Single Subcombination
3. Plural Subcombinations
4. Related Products
5. Two or More Inventions Linked to One Product
Subcombination refers to part of a combination, which may be an invention you're trying to claim a patent for. Combinations can be divided into two aspects: the apparatus and way in which the apparatus is used.
Combinations and Subcombinations
As an invention, a combination may be considered distinct or not from a subcombination. To justify imposing a requirement for restriction between combinations and subcombinations, there must be strong reasons in favor of imposing the restriction.
Inventions are considered distinct if:
- The combination does not need the specific features of the subcombination for patenting
- The subcombination has an independent utility or can be used in conjunction with another combination
- A two-way distinction exists between the combination and subcombination
The idea of utility is often defined as an axis ranging from the full range of possible human activity to zero. A subcombination will likely be judged to have no separate utility from the combination if its scope of utility is smaller than that of the combination.
Variations With a Single Subcombination
Your claim may involve a combination which depends on the specifics of a subcombination presented in a separate claim. As a result, the ruling will generally be that no distinction exists between the inventions because the combination cannot be patented without the details of the subcombination.
Alternatively, you may claim a combination that doesn't need the specifics of the subcombination to be patented. In addition, the subcombination possesses another utility. In such cases, the ruling is likely to be that your invention is distinctive and that a restriction should be enforced.
A further possible scenario you could face is a claim for plural combinations requiring a common subcombination. The subcombination will be examined from the standpoint of one of the combinations so that a decision on enforcing a restriction can be made.
Some patent claims may include two or more subcombinations that are usable with the combination. This will usually result in restrictions being enforced, so long as the two subcombinations aren't variants of each other, or don't overlap considerably.
In a different scenario, you may claim two subcombinations to be usable in connection with a single combination, but rely on the details of one subcombination for the combination's patenting.
An inventor may opt to claim two or more subcombinations in connection with a claim for a combination that includes the details of at least 2 subcombinations. In that case, the inclusion of the details from the second subcombination will be taken as evidence that the specifics from the first subcombination are not essential for patenting.
If you're seeking a restriction between two related products, both the reasons for enforcing a restriction and the establishment of two-way distinction will come into play.
Inventions are viewed as distinct if:
- Their scope does not overlap
- They cannot be utilized together or have a different function
- They are not variants of each other
Two or More Inventions Linked to One Product
It is possible to prove that the product and making use of the product are two separate inventions. To do so, you must demonstrate:
- The process of use you're claiming can be carried out with another distinct product
- The product you're claiming can be used in a materially separate way
You can likewise claim that the machine used to make a product and the product it produces are two distinct creations. To achieve this, you must:
- Demonstrate that the apparatus can produce other products and was not simply made to create the product you're claiming for
- Show that the product can be made by a different machine
If you think you've developed a new process for producing your product, this can also be claimed as an invention. The tests you need to pass to have it declared an invention are similar to those for the case of the machine previously discussed, i.e. that the process can be used to make other products, or that the product can be made by a different process.
Similarly, you can also apply for three distinct inventions, i.e. the product itself, the process of making it, and the process of use. However, you may be asked in some cases to choose between the option of applying for the product and the process of making it, or the process of use.
If you need help with a subcombination claim, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.