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Topic: Patentability Question. Other similar patent(s). (Read 2206 times) |
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birdatwork
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Patentability Question. Other similar patent(s).
« on: Feb 17th, 2004, 8:58pm » |
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There is an existing patent that is similar of sorts. I'm trying to figure out if my idea is different enough to warrant getting it's own patent. I have read some terminology that states something to the effect of "if somebody in the business would come to the obvious conclusion" then it would not be grounds for a new patent.
Can ya'll give me some ideas, thoughts, and maybe some examples on some real and/or fictional inventions. For example:
There is a patent for a lamp and somebody else had an idea to move the switch down (from under the lamp shade) to the base so that it is more easily accessible. I would not think this should be a new patent.
There is a patent for a folding 3rd seat (that folds down and maybe up some) in a vehicle and somebody else had a idea to fold the seat in such a way that once folded it would be under the floorboard leaving a smooth surface. In this case I would think a new patent could be obtained.
There is a patent for a (cloths) ironing board with vertical legs at each end (basically like a thin table) and these legs collapse inward. Somebody else comes along with the idea of diagonal intersecting legs (like the ones used today that form a X pattern that allow the legs to be fully collapsed or adjusted at different heights). I'm not sure about this one, but I would guess a new patent could be obtained.
I would imagine that part of the answer to my question would depend on how broad the existing patent is. From the drawings and most of the descriptions in the patent that is similar to my idea, I would not think that somebody would easily come up with my idea from it, but under the summary of the invention it has a paragraph that talks about other certain embodiments that has me concerned. It's wording is hard to decipher.
Thanks in advance for any help.
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eric stasik
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director, patent08
Posts: 391
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Re: Patentability Question. Other similar patent(s
« Reply #1 on: Feb 18th, 2004, 12:09am » |
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dear birdatwork,
the specific statute is 35 USC 103
http://www4.law.cornell.edu/uscode/35/103.html
the examiner doesn't just say "well, that's obvious," and reject the claims, rather she has to argue that specific claims are obvious as per 35USC103 in light of one, or more, prior art references.
you write back arguing why your invention is different, and maybe offering some amendments to the claims to delineate the differences, etc.
arguments/discussions over "obviousness" comprise the majority of correspondence between the patent office and the applicant - there is no well-defined line. almost every instance is unique.
what you need to do is to sit down with an experienced attorney or agent and discuss the details of your circumstances.
and even then it may not be clear!
good luck.
regards,
eric stasik
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eric stasik
director
http://www.patent08.com
patent08
patent engineering,
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JimIvey
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Posts: 2584
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Re: Patentability Question. Other similar patent(s
« Reply #2 on: Feb 18th, 2004, 7:54am » |
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Dear birdatwork,
Mr. Stasik is correct. I'll try to elaborate a little on the nature of an obviousness rejection.
The examiner would likely cite the patent you found and try to cite another one showing that your variation was known. Then the examiner will have to show that some description, hint, or motivation to use that variation in the patent you found existed at the time you made your invention (or by your filing date).
It would probably be a good idea to spend some time looking for prior art teaching the variation you have in mind. You can search patents at the USPTO web site(www.uspto.gov), but don't search just patents. All prior publications can be prior art.
If you come up with something showing your variation, try to determine whether it would have been obvious to combine them or whether it would have taken a bit of a mental leap (what the Europeans call "inventive step") to combine them.
Even if you think you might be different enough to get a patent, that doesn't mean you ought to. The fact that you're so close to a prior patent suggests that you won't get particularly broad coverage in your patent. You won't be able to prevent people from doing what's described in the prior patent. So, you will have to compete against them in the marketplace. Is your variation so valuable to consumers that you don't mind competing against the prior patent? If so, (i) it may be worth the expense and (ii) it's more likely that your variation is non-obvious.
Good luck!
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James D. Ivey
Law Offices of James D. Ivey
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M. Arthur Auslander
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I love YaBB 1G - SP1!
Posts: 541
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Re: Patentability Question. Other similar patent(s
« Reply #3 on: Feb 21st, 2004, 7:26am » |
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Dear Birdatwork,
It really depends on what you want. My approach is to not file and save the money unless there is a strong need and likelyhood of reward.
The is why I have a Reality Check®.
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M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
Reality Check® ELAINE's Workshop®
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Infinite
Newbie
Posts: 4
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Re: Patentability Question. Other similar patent(s
« Reply #4 on: Oct 25th, 2004, 9:26am » |
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I have wondered the same question on prior art and existing patents.... how much wieght does the following statement have ......"Whereas the present invention has been described in particular relation to the drawings attached hereto, other and further modifications apart from those shown or suggested herein may be made within the spirit and scope of the invention."
Here agian I have seen this on many similar inventions ...but they all run on the same theme. Let's use the mousetrap for our example...one inventor uses a spring that pulls to mechanise his trap ...the next uses a spring that pushes to mechanise his trap. They both made the above claim that would seem to protect such a claim. I realize this over-simplifies the point ....could you explain?
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