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Author Topic: Improving on another's patent  (Read 1085 times)

oddtimeflux

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Improving on another's patent
« on: 09-27-09 at 09:04 am »

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.

Considering the other inventor(s) pursues his filing and enforces his/her patent... is it still valuable for me to file my own non-provisional and establish a venture based on the improvements of the basic concepts? I know this is a calculated risk, but maybe you have more experience with these sort of things.

Note that the improvements I offer are not at all obvious over the basic concept.
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DogDayPM 9er9er9er

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Re: Improving on another's patent
« Reply #1 on: 09-27-09 at 11:20 am »

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!"   ;)
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oddtimeflux

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Re: Improving on another's patent
« Reply #2 on: 09-28-09 at 12:58 pm »

As I guessed, while it is "bad news" to find overlapping prior art, if I'm confident that I do provide improvement over such prior art (a non obvious improvement sez I  ;)), I should not be deterred from pursuing patenting such improvements (as you've cleverly mentioned - everything is basically an improvement over known knowledge... it all depends on how far it goes beyond it, a.k.a inventive step).
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CriterionD

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Re: Improving on another's patent
« Reply #3 on: 09-29-09 at 09:07 pm »

I should not be deterred from pursuing patenting such improvements (as you've cleverly mentioned - everything is basically an improvement over known knowledge... it all depends on how far it goes beyond it, a.k.a inventive step).

Generally, I wouldn't necessarily say that you shouldn't be deterred.  The limited scope of protection that results as a result of the prior art ultimately affects your product's market potential.  And if there is potential for infringement of a prior art patent, that also affects market potential.  At some point if there isn't enough market potential for a product or product line, and/or you are simply trying to get by via selling your patent and have no intentions of making any real effort to do all the leg work by yourself (in which case you may be banking on strong patent protection or maybe might as well have none at all as opposed to weak protection), a project just isn't worth putting time/effort/money into in which case a patent would often be a waste or would at least pose a poor risk/reward ratio.

Of course, there are also situations where a product/project may have great market potential, but the patent protection available is weak at best in terms of deterrence.  If an initial budget is low enough, a professionally written patent may still make a poor investment.
 



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