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   Author  Topic: Compositional Relationships and Patents  (Read 3885 times)
anup joshi
Compositional Relationships and Patents
« on: Mar 9th, 2004, 6:12am »
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An absolute newbie to patent legalese, and my apologies in advance.  
I have a question pertaining to compositional designs.  
If A is a concept or an artifact, and I develop an artifact B  that is a superset of  concept of A in the artifact would I be infringing A ?
An example to further clarify :
Let us say  (hypothetically) I was the inventor of the car and wanted to patent it. The concept of revolute joints or bearings (analogous to concept A) was already patented.  
My invention (the car) fundamentally uses revolute joints, but the function of the whole (car) is what my concept (concept B)  is about as opposed to just the revolute joint or bearing which are utilized in transmitting motion from the drive shaft to the wheel.
Further Let us also say the conceptual equations of the joint are what I use but use a different material.  
Would I the (hypothetical) inventor of the car be stepping on patent A then?
Do I have to in any way be concerned about A ? If yes in what way ?
does anyone understand this?
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Posts: 2584
Re: Compositional Relationships and Patents
« Reply #1 on: Mar 9th, 2004, 11:30am »
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Let's see if I understand this.  I'll rephrase the question to narrow the issues a little.
Invention A (patented by another) includes elements X+Y+Z.
Invention B (yours) includes that and more: X+Y+Z+W.
Invention B' includes an alternative material (or other varation): X'+Y+Z+W.
In terms of "stepping on" the patent for Invention A, you have to look at the claims.  And, note that adding on does not avoid infringement (unless their claims are worded in such a way that excludes adding on).
So, if the claim recites X+Y+Z and you add W, you still infringe so long as you include X, Y, and Z.
As for the substitution of X' for X, you would infringe if they had a different claim for X'+Y+Z.  You might even infringe a claim for X+Y+Z is X' is deemed "equivalent" to X.  However, the doctrine of equivalents is rather weakened at the moment.  
Now, the good news is that you can get a patent on X+Y+Z+W, assuming the addition of W is novel and non-obvious.  You still infringe patent A, but you might be able to get a cross license with them if they want to practice your improvement invention.
I hope that helps.
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James D. Ivey
Law Offices of James D. Ivey
PS Arora
Re: Compositional Relationships and Patents
« Reply #2 on: Mar 10th, 2004, 4:07am »
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Dear Anup,  
  Patents dont infringe each other. Products infringe patents.  
If your invention is significant modification of the existing system and providing better and useful solution to a problem, I dont see any reason you need to be bothered about patent A. In your case, Patent A can serve as prior art if it covers exactaly what you have invented and there is no inventive addition.
      As far as infringement is concerned, a car based on your patent  may infringe both your patent and patent A. That will depend on the claims of both patents.
P. S. Arora
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PS Arora
Re: Compositional Relationships and Patents
« Reply #3 on: Mar 10th, 2004, 4:14am »
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     Just to add .......If you are just an inventor, you dont need to worry about patent A and you dont infringe anything. The ppl who will use your invention will infringe.
    However, if you are going to sell/use your invention, you will require a licence from Patent A owner also if your product uses elements X+Y+Z (included in patent A) also.
PS Arora
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M. Arthur Auslander
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DearRe: Compositional Relationships and Patents
« Reply #4 on: Mar 10th, 2004, 5:32am »
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Dear Anup Joshi
This hypothetical stuff doesn't go anywhere. A stranger can get a patent if the new invention is an unobvious improvement.
The question as I see it is where does the second inventor go if his invention is patentable yet infinges a patent he doesn't own.
An inventor can waste a lot of effort and still get a  valid patent. Possibly the owner of the original patent might be interested but the effort and odds are against the second inventor unless there was an agreement before he started.
In golf they call it a stymie. Early holistic legal understanding saves a lot of time, money and worry.
« Last Edit: Mar 10th, 2004, 5:37am by M. Arthur Auslander » IP Logged

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law
3008 Johnson Ave., New York, NY 10463
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