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   Can Someone Describe a BLOCKING PATENT?
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   Author  Topic: Can Someone Describe a BLOCKING PATENT?  (Read 9700 times)
Lester McDaniel
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Can Someone Describe a BLOCKING PATENT?
« on: Mar 22nd, 2006, 5:50am »
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Can someone give me a scenario where a blocking patent would work?   If someone gets a patent on a, b, c, d, then another person gets a patent on the improvement of that, with e, does this mean that the first patentee cannot practice their invention?
 
Or is it where an applicant determines where the art is going and patents an improvement that way, blocking the previous patentee from moving further in their art?    
 
I am lost.
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Isaac
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Re: Can Someone Describe a BLOCKING PATENT?
« Reply #1 on: Mar 22nd, 2006, 6:23am »
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on Mar 22nd, 2006, 5:50am, Lester McDaniel wrote:
Can someone give me a scenario where a blocking patent would work?   If someone gets a patent on a, b, c, d, then another person gets a patent on the improvement of that, with e, does this mean that the first patentee cannot practice their invention?

 
Assuming "their" refers to the first patentee, then the answer is No.  As long as the first inventor does not do "e" he will not infringe the imrovement patent.   The second patentee cannot practice the inventive improvement without permission of the first inventor.  
 
Quote:

Or is it where an applicant determines where the art is going and patents an improvement that way, blocking the previous patentee from moving further in their art?    
 
I am lost.

 
You are not lost.  This second scenario would provide a block.
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Isaac
Lester
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Re: Can Someone Describe a BLOCKING PATENT?
« Reply #2 on: Mar 22nd, 2006, 6:32am »
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OUCH!   So if someone comes up with an improvement (e), then they still have to receive rights from the person who invented a,b,c,d?  
 
That is horrible.   So if you dont get those rights, then the patent is essentially worthless?
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Wiscagent
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Posts: 843
Re: Can Someone Describe a BLOCKING PATENT?
« Reply #3 on: Mar 22nd, 2006, 8:02am »
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In order to avoid infringement, Improver (the owner
of an improvement patent to a basic invention) must
obtain rights from Basic (the owner of the patent on
the basic invention).  So if Improver does not get the
right to practice from Basic, then the improvement
patent is essentially worthless?
 
- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
 
No, for several reasons.
 
- The improvement patent probably expires after the basic patent.  If the basic patent expires in 2010 and the improvement patent expires in 2015, then Improver has both right to practice, and the ability to exclude others from practicing the invention for those five years.
 
- Assuming the Improver and Basic are competitors, the improvement patent has blocked Basic from practicing the improvement, this may help Improver in the market place.
 
- The basic patent could be ruled invalid or unenforceable for any number of reasons that do not impact the validity or enforceability of the improvement patent.
 
- Just because Basic has no interest in making a deal with Improver today, that is no indication of what the owner of the basic patent will agree to in a few years.
 
- Often an improvement patent claims not just a sub-set of what is protected in the basic patent.  The improvement patent may actually shelter some embodiments that are not protected by the basic patent.  
 
Trivial example – I was just looking at the ceiling in my office. Basic patents some kind of thin, lightweight acoustical ceiling tiles.  Improver patents thin, lightweight ceiling tiles that provide enhanced thermal insulation. While Basic may block Improver in the acoustical ceiling tile market, Improver may be able to practice the invention in the non-acoustical ceiling tile market.
 
 
Richard
« Last Edit: Mar 22nd, 2006, 8:03am by Wiscagent » IP Logged

Richard Tanzer
Patent Agent
JimIvey
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  jamesdivey  
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Posts: 2584
Re: Can Someone Describe a BLOCKING PATENT?
« Reply #4 on: Mar 22nd, 2006, 9:11am »
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I'll just add my little spin to what appears to be a fundamental underlying misconception:
 
A patent does not convey the right to make, use, or sell anything.  A patent only conveys the right to exclude others from making, using, or selling (and importing) the thing patented.
 
So many misconceptions are founded on failure to completely grasp that point that it's worth re-reading a few times until it sinks in.
 
Then, when you look at your scenario, you'll see that the former patentee can prevent others (including the latter patentee) from making, using, sell all combinations of a, b, c, and d that are described by the claim(s).  The latter patentee can prevent others (including the former patentee) from making, using, selling all combinations of a, b, c, d, and e that are described by the claim(s).
 
So how can anyone make anything with over 7 million patents issued (maybe as many as 2 million in force right now)?  Easy.  Anyone who was politically aware in the 1980s would be familiar with the phrase, "mutually assured destruction".  Most business people recognize that situation and "play nice" -- leading to cross licenses.  Then, a patent (a non-obvious contribution to the relevant technology) becomes an ante, a price of admission, for participating in the marketplace.
 
I hope that helps.
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James D. Ivey
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