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Is it Patentable?
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   "prior art" question
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dr.jay
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Posts: 2
"prior art" question
« on: Oct 18th, 2007, 12:04pm »
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There are two similiar ideas that have been attempted to be patented, both are clearly different, only overlap in the summary; and description- one was patented 19yrs ago but was flawed and never went into production because of laws and is very expensive to use this concept, simply not cost-effective and maybe even ineffective.  It did gain a patent.
 
The other idea was filed for a patent application, but was abandoned over 5 years ago.  Also flawed, actually ridiculous- but was published, although again was abandoned.
 
Now my invention, is clearly different than both of these- but serves a similiar purpose and will over lap some of the description and summary for use of this product, but completely different claims, design, and method than the other two named above.
 
Here are my questions
 
Should I reference the prior art of the patent application named above in my patent application?  
 
What is the best way to make sure my product's patent does not fall under the "obvious" term by combining these similiar ideas named above?
 
These products do similiar things; but the methods, claims, and design are different.  How can I make sure that my product's patent is clearly defined as “novel, non-obvious, and have utility”?
 
-And yes!  I have a terrific patent attorney, who is working hard on my concerns.. But I would like to see so others input also.
 
Thank you in advance-
« Last Edit: Oct 18th, 2007, 3:33pm by dr.jay » IP Logged
pentazole
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Posts: 197
Re: "prior art" question
« Reply #1 on: Oct 18th, 2007, 12:27pm »
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Well, aside from personal feelings, what will legally determine if your invention will get a patent is whether or not your claims are patentable over the entire specification of the references.  So whether or not the other publications were abandoned, or they claim the same things as you, examination will evaluate your claims in view of the references' entire specification.  So the question is, do the references alone or in combination, obviate all the elements of your claims.  Or another question would be what is the broadest claim you can get allowed that will be non-obvious over the references.  Just remember that the examiner may not rely only on the two references you are talking about, he may combine one of them with something completely different.
 
And yes, you have a duty to disclose these references as pertinent to the examination of your patent.  You submit them as part of the IDS (Information Disclosure Statement).  It is to your advantage to disclose every reference you think may affect the examination of your patent application, because in the end you will get a more solid patent.  Also if you don't and are discovered, you can get in a lot of trouble and even have your patent invalidated.
 
I think this will be difficult to determine without knowledge of the facts, so if you are happy with your patent attorney, talk with him about it and have him explain everything to you to the extent you are comfortable with.