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(Message started by: Kelley Bachman on May 11th, 2004, 12:55pm)

Title: Patent an improvement to an existing process
Post by Kelley Bachman on May 11th, 2004, 12:55pm
I have been searching high and low for information that my determine whether I should continue my "patent-it-yourself" research.

I am looking for a very straight-forward answer to this hypothetical queston:  Can one patent a process that is made possible by equipment that has been sold and/or been made public for more than one year?

This equipment I speak of can perform a number of processes (not just the one/s which I'm looking to patent).   The equipment has been made public and sold, but only one process has been made public.  Technically, I was wondering if it could be argued that only the equipment has been previously sold and/or made public, not the actual process (or any variety of potential processes).   Furthermore, there have been significant (non-obvious) improvements that have been discovered recently and have not been made public or sold as of yet.  

If patenting these new improvements possible, how can I do it broadly (to include several similar processes) but also narrow enough so as not to include the old process that has been made public (thus violating the one-year rule)?  

I will certianly appreciate any advice as I am a newbie and have no training regarding patents.

Thanks a bunch,
Kelley


Title: Re: Patent an improvement to an existing process
Post by JimIvey on May 11th, 2004, 1:53pm

on 05/11/04 at 12:55:13, Kelley Bachman wrote:
I am looking for a very straight-forward answer to this hypothetical queston:  Can one patent a process that is made possible by equipment that has been sold and/or been made public for more than one year?


Here ya go: Yes.

The bottom line is not whether the used equipment is known for a year but whether the claimed process is known.  To cover the issue of obviousness, the process shouldn't be obvious either, or (more importantly here) suggested by the equipment itself.

Here's an example I learned from Steve Shear of Silicon Valley Seminars (I think google.com finds him readily if you like).  There was a patent pertaining to a little rubber thingy with many suction cups on it for lifting stencils (because it's hard to get your fingernail under them to lift them).  The cited prior art was the ubiquitous soup holder that was a small rubber disk with many suction cups above and below, so you can stick your soap anywhere with the suction cups.  

As products, they were more or less the same -- a flat surface substantially covered with suction cups.  The difference was the method of use.  Was it obvious to use the suction-cup soap dish to lift stencils off of paper?  I don't think so.  I don't think it was suggested by the product itself.  


on 05/11/04 at 12:55:13, Kelley Bachman wrote:
If patenting these new improvements possible, how can I do it broadly (to include several similar processes) but also narrow enough so as not to include the old process that has been made public (thus violating the one-year rule)?


You're essentially asking for a quick answer on the whole of the art of claim drafting.  It took me 13 years to accumulate as much knowledge as I have about claim drafting.  I don't think I can fit it all here.  I don't even know where to begin.

One thing I would say is that you don't have to get it all into just one claim.  If you have to, you can capture classes of novel/non-obvious processes into mutliple claims.

So I guess I answered one of two questions.  Sorry I couldn't be more helpful with both.

Regards.

Title: Re: Patent an improvement to an existing process
Post by LJP on May 12th, 2004, 4:06am
Hi Kelley,

A few things to keep in mind. Even if you get a patent on your process you may not be able to defend it. Using the soap dish analogy, what would stop someone from buying a soap dish to lift the stencils?
You also can't infringe on someone else's patent because you developed a new method, therefore, you may not be able to manufacture and sell the equipment to carry out your process.

Jim

Title: Re: Patent an improvement to an existing process
Post by M. Arthur Auslander on May 12th, 2004, 8:20am
Dear Kelly Bachman,

Ivey has it right. You are out of you mind JUST getting a patent. The claims are what count and their breadth. If you have a good thing going, a commercial product, a stupid patent may be a scarecrown or of advertizing value.

If you don't care about being able to enforce your patent that is another thing. The law allows you to prosecute you own patent application. If you do it yourself it usually is likely not as good as what the scam artists get for you.

My registered service marks are ELAINE's Workshop®
E arly L egal A dvice I s N ot E xpensiveT and Reality Check®

If you have a real product, saving a few bucks could cost you millons. I'm not suggesting that you can make money with your patent.

I usually recommend a patent or patent application, where there is no breadth, to commerical clients and then have them cover themselves with a trademark.

I know about GOOD patents. My first partner patented the folded metal, fat and skinny polarzed elecric plug in you wall. Because of that a publisher got to know me and ask me to coauthor a book on chemical patents. that my second partner wrote.

I have met only one inventor that I felt had the skills to get GOOD claims in a patent that he did himself. I'm not suggesting that you can't work miracles, I'm suggesting that I don.t think you can.

Title: Re: Patent an improvement to an existing process
Post by Kelley Bachman on May 12th, 2004, 12:41pm
Thank you guys for responding so soon, I really appreciate it.

I'm pretty certian the process/method would not infringe on any one else's patent, I am more concerned about not violating the one year rule.  

So, I can try to patent a very broad process which may include (because of it's breadth) some specific processes that have already been made public?  Do I have to specifically exclude from my claims any process which might generally be related to previously publicised processes?  

For example:  You have a process that works.   You don't know why it works or how it works.  You formulate a specific, rigid series of steps which reproduce results consistantly.  You later learn how and why the process works and as such you can apply it to a wider variety of situations and adapt it to different circumstances.

The rigid steps were made public over a year ago.  The how and why it works has only recently been discovered.  

Can a patent be applied for, using broad and explicit claims, even if the claims overlap the previous 'reason unknown' steps?  This is very complicated and I am having a hard time trying to explain exactly what I mean, but I think you'll get the gist.

I've read the patents which apply to the area that I am interested in, and the majority of them are very simplistic and spartan, yet were granted by the USPTO.  I am hopeful that I will be granted a patent as well.

Thank you again,
Kelley


Title: Re: Patent an improvement to an existing process
Post by JimIvey on May 12th, 2004, 2:57pm

on 05/12/04 at 12:41:57, Kelley Bachman wrote:
So, I can try to patent a very broad process which may include (because of it's breadth) some specific processes that have already been made public?  


No.  Well, you can try.


on 05/12/04 at 12:41:57, Kelley Bachman wrote:
Do I have to specifically exclude from my claims any process which might generally be related to previously publicised processes?  


Yes.


on 05/12/04 at 12:41:57, Kelley Bachman wrote:
Can a patent be applied for, using broad and explicit claims, even if the claims overlap the previous 'reason unknown' steps?  This is very complicated and I am having a hard time trying to explain exactly what I mean, but I think you'll get the gist.

I've read the patents which apply to the area that I am interested in, and the majority of them are very simplistic and spartan, yet were granted by the USPTO.  I am hopeful that I will be granted a patent as well.


You have to understand that there are two basic and separate parts of a patent: the specification (drawings, description, etc.) and the claims.  The specification adds to the whole of public knowledge.  The claims specify the breadth and coverage of legal rights associated with a patent.

To get a patent, you only need to add some non-obvious thing to the whole of public knowledge.  You do not need to establish that your invention doesn't infringe any earlier patents.

The relevant comparison is between the prior specification and your claims.  

If your invention infringes valid and enforceable claims of another patent, that restricts your ability to practice your invention but does not, by itself, affect the validity of your own patent.

A basic and fundamental patent truth:  patents don't give you the right to practice your invention; they only give you the right to exclude others from practicing your invention.

I hope that helps.

Regards.

Title: Re: Patent an improvement to an existing process
Post by M. Arthur Auslander on May 13th, 2004, 4:32am
Dear Kelley,

The ability to get a good or even a worthless patent depend on the state of the art too. I star with a Reality Check® even before a patent search.

Title: Re: Patent an improvement to an existing process
Post by Kelley Bachman on May 13th, 2004, 9:38am
Once again, thank you for your prompt replies.

The generous amount of info you have provided definately eases my mind...as to whether I should even bother applying.

I have been doing a lot of research regarding patent applications; specifications, claims, and drawings and feel that I would like to give it a shot.

Yes, the only purpose of securing a patent in this case is to keep anyone else from practicing the invention.  But, we do realize that obtaining a patent could potentially harm us in the long run as it will then allow others to learn how it works and potentially make some adjustments and get themselves a patent.  We have entertained the idea of just keeping it a "trade seceret" but like I said, some of the info has already been made public.

If we wanted go the trade seceret route, do we just start that immediately concerning this new discovery?  And you can't apply the TS to any previous info that has been made public?

Patent or Trade Seceret? Hmmm.

Thanks again!  It is so refreshing to know that there are decent, knowledgable  people out there who are willing  to help out poor folk like myself who can't afford the services of a lawyer.

Kelley

Title: Re: Patent an improvement to an existing process
Post by JimIvey on May 13th, 2004, 11:42am
There's a forum here for trade secret.  You might want to peek over there.  I tried participating in it once, but I only have time for this one.  

Here are a few tips.

First, the law clearly favors patents over trade secrets.  If you go with trade secrets and someone else comes along and patents it, you're not permitted to infringe that patent without their permission.  So, going with trade secret, you take that risk.

Of course, there's a legislative cut-out for "business methods" in which case prior trade secret usage of "business methods" is a safe harbor from patent infringement.  However, the law doesn't say what a "business method" is and it doesn't explain why this nebulous category of invention deserves an exception to the whole of patent law.  However, in any government by the people, of the people, for the people, you're going to have inherent human fallibility.

Lastly, you don't "apply" for trade secrets.  You simply protect them as secrets.  Someone else can lay this out better than me, but I'll get it started.  A trade secret is something that (i) has business value ("trade") and (ii) is not generally known ("secret").  The way you keep it not generally known is to only tell it to people under a promise to keep your secret.  There are a number of practices you can implement to protect your secret.

The value of trade secrets is that they last as long as you can keep them secret.  The downside is that they only last as long as you can keep them secret.  If someone blabs, your IP is gone.  If no one blabs, your IP can last forever.

That's about all I have time for.  I hope it helps.

Regards.

Title: Re: Patent an improvement to an existing process
Post by M. Arthur Auslander on May 13th, 2004, 4:58pm
Dear Kelley,

It usually takes even a patent lawyer a couple of years of study to learn how to write a GOOD claim that might give some value to the patent or the invention.

Just because you get a patent does not mean that the invention is protected. A good claim to a good specification is the only way. If the state of the art is not right, even that won't help.

If you have anything of value, the odds are that your patent will give away the art unprotected.

Your chances may be about equal to the one in ten thousand that use the scam artists who get back more than they pay.

Yes, I have met non patent lawyers that can write GOOD patents. They are more rare than a good patent. Edison didn't write his patent applications.



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