Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[paul762]

I would like to know if I invented a folding screwdriver for example(I havent btw) but for example, if I wanted a patent would I have to prove that it could screw screws or would the patent be on the new folding mechanism, what im trying to say is would they still give a patent to something without proving that it actually does what it says, could I still patent the folding mechanism and sell the  product as patented screwdriver without mentioning the folding bit?.
hope im making sense!!

[JSonnabend]

Sure, you could sell it as a "patented screwdriver", but the patent would not give you any protection beyond the scope of the claims.  In other words, a patent only covers what it covers, and calling a commercial product "patented" doesn't magically expand that coverage to the entire product.

[paul762]

thanks for the reply, sorry but I must have had brain block or something when I posted this question , let me simplify things!! if the screwdriver is patented as a screwdriver does the inventor have to prove what is claimed the screwdriver can do  before it is allowed a patent.
thats what I meant to say before!
thanks.

[Jonathan]

An applicant for a patent does not need to prove that their claimed inventions works or has utility unless the Examiner rejects the claimed invention as being non-useful, inoperative or contradicts known scientific principles.

In this situation, the burden is on the Examiner to show that one of reasonable skill in the art would doubt the asserted utility. The Examiner is required to provide evidence / reasons as to how he came to his conclusion.

The applicant would then have an opportunity to rebutt the Examiner's findings.

[JimIvey]

If I'm not mistaken, this is a variation on the "do I need a working model?" question.

In short, you don't need a working model, but your patent must teach someone to make and use a working model.  So, must your patented invention as described in your patent be functional?  Yes, even if you haven't made a functional model.  Otherwise, I'd hold several patents on time travel already.

Regards.

[TT]

Jim

If i manufacture a new chemical drug using an existing chemical process and reagents and suppose this chemical (drug) solves the problem of infertility.

1) is it patentable?
2)do i need to prove that my product can help solve the problem of infertility.

if it is patentable, what i can claim from the patent.

is it the product? or usage of the protect? or both?.

am i confusing

thanks

[JimIvey]

Again, I apologize for not responding sooner to a post directed to me personally (unless it's another "Jim").

You should know that chemical practice is a specialty within patent practice and it has its own set of rule clarifications that don't always apply to non-chemical applications.  I'm really not qualified to address questions pertaining to chemical (or life science) inventions.

My very vague understanding is that some effort must be shown that the claim(s) cover(s) things that actually have the effect claimed/described.  In fact, I believe there was a recent court opinion that effectively required clinical trials as a prerequisite to patent protection, in effect denying all chemical/pharmaceutical patents to universities and research facilities with inadequate resources to conduct clinical trials -- a huge victory for gigantic corporations everywhere!

Hopefully, someone else here knows more than I do about chemical/pharmaceutical practice.

Regards.

[ByTheWay]

The last post on this topic May 23 by Jim Ivey was so interesting I searched for the reference but without success. I agree that it would have broad implications.
   I would like to confirm or dispell  this legal event and get more details; hopefully someone on this forum can point to a reference.
      ByTheWay,thanks.

JimIvey snippet:
""I believe there was a recent court opinion that effectively required clinical trials as a prerequisite to patent protection, in effect denying all chemical/pharmaceutical patents to universities and research facilities with inadequate resources to conduct clinical trials -- a huge victory for gigantic corporations everywhere! "

[Isaac]

I think Purdue Pharma L.P v. Endo Pharmaceuticals is the case Jim is describing.   On the face of it the case seems to say not to argue or appear to argue that surprisingly discovered results are confirmed by clinical trials when they were not.

But certainly the ramifications might go further than that.  By suggesting that the difference between a suprising result obtained at a clinical trial and a surprising result obtained by insight is material, the court may be saying that in the pharma arts you better have the data to back up your contention.

On the other hand the court found deception, and perhaps when the court finds a deliberate pattern of misleading the examiner, it is willing to be a little less picky about how important the deception is.   One thing to consider is that if an applicant leads the examiner done one path of establishing patentability, the applicant is not going on the record about other things thus possibly developing a false picture.