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Is it Patentable?
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   One year rule and Patentability
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   Author  Topic: One year rule and Patentability  (Read 2672 times)
Bill Richards
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Re: One year rule and Patentability
« Reply #10 on: Sep 20th, 2006, 4:33am »
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John says:
"Let's say you have a patent with about 9 years left on it, and you find a non-obvious way to improve your product. The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years."
This is an inconsistent statement.  If the improvements are covered by the claims of the original patent, they cannot be new and non-obvious and, thus, not patentable.  And, if they're covered, then anyone practicing them infringes the original claims.
RE:  "Patent of Addition"  I am uncertain as to what this is.  If, however, it's anything like a U.S. CIP, if there's no pending case upon which to file, then a CIP in the U.S. is not possible.
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William B. Richards, P.E.
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john2006
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Re: One year rule and Patentability
« Reply #11 on: Sep 20th, 2006, 12:21pm »
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Hi Everyone,
 
Bill Richards wrote
 
"This is an inconsistent statement.  If the improvements are covered by the claims of the original patent, they cannot be new and non-obvious and, thus, not patentable.  And, if they're covered, then anyone practicing them infringes the original claims".
 
My reply
 
Bill, it is quite possible to have a patent that discloses a device that would infringe an earlier patent, having broader claims. Just because a device is covered by a broad patent claim, does not mean that is obvious.
 
In fact, that is exactly why people do infringement searches, even after a patent application is on file and they are ready to go to market. It is possible to get a patent, and not even be able to use the device disclosed in your own patent, because someone else has an earlier patent with broader claims.
 
The claims have nothing to do with obviousness, it's what is disclosed in the drawings and descriptions, that determines obviousness, along with all other prior art references.
 
Sincerely,
John
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Bill Richards
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Re: One year rule and Patentability
« Reply #12 on: Sep 20th, 2006, 12:54pm »
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I misunderstood the hypo and John is correct, of course.  The thing to note is that when the original patent expires, only the improvements are protected.  Protection via the original claims does not extend.
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William B. Richards, P.E.
The Richards Law Firm
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wallflower
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Re: One year rule and Patentability
« Reply #13 on: Sep 20th, 2006, 1:03pm »
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I thought Bill's original response was correct as I understood the hypo.
 
John first said: "The improvements are covered by the claims of the original patent, but you want to patent the new improvements so you can monopolize them for a period longer than 9 years."
 
John then followed up: "It may be desirable to go ahead and make the improvements public, just to keep anyone else from getting a patent on them. Then, get the new design to market and file an application a year after the date of publication."
 
If the improvements are covered by the claims of the original patent, then no one will be able to patent the improvements.  Maybe this is a misunderstanding on how claim construction is performed.
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john2006
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Re: One year rule and Patentability
« Reply #14 on: Sep 20th, 2006, 1:59pm »
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Hi everyone,
 
Wallflower wrote
 
"If the improvements are covered by the claims of the original patent, then no one will be able to patent the improvements.  Maybe this is a misunderstanding on how claim construction is performed".
 
My reply
 
Again, whether or not a device is patentable has nothing to do with the "claims" of prior art patent references, only what is disclosed in the descriptions and drawings of the patent(s), along with all other prior art refernces. Patentability has nothing to do with how the claims of prior art patents are crafted or written.
 
Someone (a second inventor) could patent the new improvements, if they come up with them independently of the original inventor, and if the improvements have not been published and are not publicy known. Then in 9 years, they would have some time left to market the improvements. Probably waiting 9 years is a discourgement, but when there is say, 3 or 4 years left on the original patent, they may try to patent the improvements. Or, they may wish to wait until the original patent completely expires, you never know.  
 
Either way, it's best for the first inventor of the device in the original patent, to patent the improvements, but if he or she wants to put off the expense of patenting for a year, is it not best to make the improvements public, then file an application a year later ?  
 
Would there be anything wrong with filing a provisional application one year after publication, in order to further put off the expense of filing a regular appliction ? Then, one year after the date of the provisional, a regular application could be filed. This would actually give the inventor two years after the date of pulication, before filing a regular application. Is this possible ?
 
sudhiraswal wrote
 
"It is not desirable to make the improvements public, as along with other it will also take away your right to get a patent on them. Publication does not include selling and trail testing the market therefore you wont be eligible for grant after that selling".    
 
My reply
 
In the USA, don't we still have  the right to disclose "and sell" our inventions for one year prior to filing a patent application ? When did this law change ?
 
Thanks again,
John
« Last Edit: Sep 20th, 2006, 2:02pm by john2006 » IP Logged
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