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Author Topic: New patent vs existing patent  (Read 4832 times)

toshgaal

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New patent vs existing patent
« on: 02-16-10 at 02:19 pm »

If there is a exercise machine that has a patent on it, what exactly is patented? Letís say a patented machine uses a rod and bearing mechanism to move the weight. Does that mean someone can patent a similar exercise machine that uses wheel and track system to move the weight? What if the machine is similar in design but different and also has added features? I am just trying to find out what needs to be different in order to patent something new.

Any help would be appreciated.

toshgaal
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CriterionD

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Re: New patent vs existing patent
« Reply #1 on: 02-16-10 at 03:20 pm »

When push comes to shove, "something" needs to be different, plain and simple, as far as patenting something new is concerned.  That something must be novel (i.e. different than anything else that has or hasn't been patented), and considered "non-obvious."

Of course, the real scope of patent protection that is available will be mostly limited at least to that "something" which is different, even if you can technically patent the product as a whole.  Just because you can patent something doesn't necessarily mean it is worth patenting something.  It also doesn't necessarily mean that will not have to worry about infringing someone else's patent. 

If an in-force patent claims simply a rod and bearing mechanism to move "the weight," and your machine also uses a rod and bearing mechanism to move "the weight," you'll be infringing that patent regardless of whether or not you have your own patent.

Note that what a patent truly protects, is governed by its claims.

toshgaal

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Re: New patent vs existing patent
« Reply #2 on: 02-16-10 at 03:49 pm »

Thanks for the reply. Well who determines if my idea will infringe on someoneís patent? If I had to guess, a patent attorney.

Let me try another example. Someone patents the bench press where you use a free bar and weights. Now, if someone designs a bench press that the bar is attached to a rod with bearings so the bar slides up and down the rod (smith machine) does that differ enough to patent the whole machine or just the new mechanism that allows it to slide up and down a rod.

I am sorry for these lame examples, but I am trying to describe something without describing it. If you know what I mean.

Thanks
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JimIvey

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Re: New patent vs existing patent
« Reply #3 on: 02-16-10 at 05:30 pm »

It's sometimes hard to remember how confusing this all is when you first encounter patents.  Let's start with some basics.

It's helpful to remember that patents are property.  Like land in which the bounds of the property are defined by survey data recorded on a deed, patents define their coverage very precisely in claims that are included in the patent.  So, to see a device and note that it's patented, that doesn't tell you much about what the patent covers -- although if you're very familiar with the subject technology, you can often make a pretty good guess.  Trying to figure out what a patent covers by looking at one device the owner claims is covered by the patent is not unlike trying to figure out land property boundaries by watching where the owner walks.  To know what a patent covers, you have to read the patent. 

It's also helpful to remember that patents are different from most other types of property.  In particular, coverage can overlap.  So, you don't look so much at what's been patented before as much as other stuff, which I will get to quickly.

A patent is an inducement for people to share their clever ideas with the rest of us when they otherwise wouldn't.  The inducement is in the form of rights to exclude others from exploiting their clever idea for a limited period of time -- exploiting means making, using, selling, and importing.  Note that there is not explicit right for the clever people to exploit their own ideas -- only the right to exclude others.

So, patentability and infringement of patents is not a comparison of patents to patents but rather a comparison of a patent's coverage (claims) to what others make, use, sell, etc.  In short, a new patent must not cover anything that came before it, or any obvious variation thereof.

So, let's step back in time and assume you invented the Smith machine.  You have two questions and they're not as related as you might think.  First, do you infringe someone else's patent.  Second, can you get your own patent.

For the first question, you need to get a copy of the patent in question and read its claims and see if one or more of those describes what you're making, using, selling.  Does the claim specify rod and bearing?  Is it more basic and the basic description covers both rod and bearing as well as wheel and track?  You'll have to figure that out (or have someone do that for you).

For the second question, you have to determine whether the claims in your patent application cover anything known earlier or any obvious variation of anything known earlier. 

The foregoing is gross over-simplification, but that inquiry will get you probably 80% or more of the way to your destination.

I hope that helps.
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James D. Ivey
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Friends don't let friends file provisional patent applications.

toshgaal

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Re: New patent vs existing patent
« Reply #4 on: 02-16-10 at 07:45 pm »

Thanks Jim. That helps a lot. I have been sitting on this idea for some time now, and not real sure where to go from here. The device I want to patent doesn't look anything like the devices I have located from my patent search,  although it's function does. What about provisional patent application? I guess I need to rule out if my idea infringes on any of the patents that are out there before filing one. The sad thing is all the patents that function like my idea, are not even being produced from what I've seen. The device that is currently being used now is not even designed for it. It is just something they use because it works, but works poorly. That is how I came up with the idea in the first place and I have already built a prototype and it works great. I guess I need to contact a patent attorney if I am serious about this.

Thanks again for your time sir.

Todd
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JimIvey

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Re: New patent vs existing patent
« Reply #5 on: 02-16-10 at 08:28 pm »

Provisional applications are an extra step that isn't worthwhile in many cases.  You can find many debates in these forums about provisional applications, but I think most practitioners (patent attorneys and agents) misunderstand and misuse provisional applications.

Here's a brief rundown.  Many compare the Patent Office fees for provisional applications and fees for real applications and declare that provisional applications are cheaper.  Bear in mind that, if you file a provisional application, you still need to follow up with a real application.  So, the filing of a provisional application is not instead of filing a real application but is rather in addition to filing a real application.  People will tell you it buys you a year of testing the waters, so to speak.  But it doesn't.

You can search in here for the debates on those topics and make your own decision. 

As for ensuring that your idea won't infringe anyone else's patent, good luck.  More than 7,000,000 patents have been granted and as many as 1,000,000 or more are current in force.  I won't suggest that you should cultivate ignorance and ignore patent infringement risks altogether, but how often do you check everyone's deeds before walking along a trail in a field?  Generally, you assume no one will care so long as your use of the property is small and, if anyone yells at you for being on their property, you apologize and leave. 

Of course, patents are different in that you may intend to invest in bringing your innovation to market.  It's more like building a fruit stand on what you believe to be available property.  You might do some modest research into titles; you might be fine to move if someone complains if you're not making much money; and you'll really dig into titles and fight harder if you're making a lot of money there.  Patents are more like that.

It's just impractical to ever really ensure that you'll never infringe anyone else's patent.  And, even if you do that, you can't prevent others from disagreeing with your conclusions and suing you for infringement of a patent you're pretty sure you're not infringing.

Patents are a risk in the marketplace.  They've always been a risk and will continue to be so for the foreseeable future.

Regards.
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James D. Ivey
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Friends don't let friends file provisional patent applications.

toshgaal

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Re: New patent vs existing patent
« Reply #6 on: 02-17-10 at 08:42 am »

Thanks Jim for taking the time to explain a lot of things I never really thought about. I have one last question. How much protection does a non-disclosure agreement have? If I decide not to pursue a patent but have a company who is interested in looking at my idea, does a non-disclosure agreement protect me in any way?
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JimIvey

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Re: New patent vs existing patent
« Reply #7 on: 02-17-10 at 02:27 pm »

Trade secrets are based on contract law.  In essence, you have the other side promise not to tell anyone about your idea or use it themselves without your permission.

If you can get someone to sign such a contract, that's a good start.  Many decide not to honor the contract later, so getting them to honor is even better. 

One of the things to be careful of is that breach of the contract (by publishing/using your idea) can prevent you from getting a patent at all, depending on the timing relative to your filing of your application and perhaps inventing efforts.  Even if it's not your fault, no patent.  Your only recourse is your contract in state court.

There's a Trade Secret forum here.  You might poke around there for better answers.

Regards.
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James D. Ivey
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Friends don't let friends file provisional patent applications.
 



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