I've recently discovered that an invention, for which I've previously filed a provisional for, has been "partly" invented. When I say "partly", I mean that the basic concept has been filed for a few years ago, yet my disclosure extensively improves and expand on that basic concept, meaning that there are many features that are added to it. {a} Considering the other inventor(s) pursues his filing and enforces his/her patent... {b} is it still valuable for me to file my own non-provisional and establish a venture based on the improvements of the basic concepts? {c} I know this is a calculated risk, but maybe you have more experience with these sort of things.
a}, You may want to find out for sure whether the earlier filer is pursuing his case. What's its legal status?
b}, In my line we don't drop a filing just because we learn it is an improvement on something already patented (or the subject of a published app). Heck, most of what I see could be described as such, so we normally continue to pursue patenting if we thought it was important to do so in the first place, without worrying about the other guy's patent. From the standpoint of patenting, that is.
c}, Freedom to operate is another matter. If you pursue your product, you don't want to be ignorant of the other guy's rights (assuming he does get it patented) and how his rights might impact your product freedom to operate. Getting a legal opinion on this sooner rather than later is generally a good thing. It can give you time to make product adjustments that take the product outside of the scope of his claims. Or if no reasonable design around exists and you would be within his claims, give you time to start considering other strategies such as approaching the patentee for licensing, or doing a solid validity review on his patent claims of interest. And note that patenting your improvements may help in the licensing negotiations if you decide you need to license his older/more basic patent. Could cross-license.
Note that the improvements I offer are not at all obvious over the basic concept.
"Sez YOU!"
