Print

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

[Inventor_X]

Hello folks!

I've been mulling on this one for quite a while, and believe that I may know the answer.

However, since I'm of no account in matters such as this, I'll pose the question to those of greater mind 

OK.

In this imaginary scenario, a particular item is coated with a costly material of thickness X for the purpose of imparting "characteristic A" to the item.  A patent is issued for this process.

After quite some time, it is discovered that this particular item, when coated with the same costly material at a precisely-determined threshold thickness of only 1/2 X is adequate to impart a newly-discovered "characteristic b" to the item in question. 

Now, both processes would have the effect of imparting "characteristic b" to the item; but the first process would be wasteful of the costly material if one sought to achieve "characteristic b" using it.

IMHO, I believe that a patent could be issued in the second case as well due to the cost and process time savings represented in the "new" disclosure for the purposes of addressing a different problem.

Is this a good take?  If so, does anyone know of cases which may have turned on such matter?

Probably a no-brainer, but thanks a bunch; and have a great day 

[orangequant]

somebody patents gold foil, coated with 2u thickness of GaAs, to produce a plasmon resonator. the patent is silent on all other effects.
you develop a 1u coating of GaAs, rendering foil and coating invisible to x-rays. i say you have a novel use, unanticipated by prior art, even though it also works at 2u or 55u thickness. but, at 2u you "might" need a license.

[ManOfManyBadIdeas]

I am certainly not a great mind, but I will chime in anyway. More knowledgeable folks than
me on this board have many time repeated the mantra "if later infringes, earlier anticipates".
So if the product is manufactured to achieve "characteristic a" by coating of any thickness,
even if it's not X, invalidates the new patent if the new patent claims such thickness. So,
whatever the new patent coverage may be the crucial point is to establish very clearly
that the "characteristic a" is not imparted by coating the part to the thickness claimed in
the new patent. I am saying this since you have mentioned that the old patent is well, old,
maybe there are improvements in the coating techniques, and "characteristic A" can be
imparted using a smaller thickness, one should be careful not to claim such thickness in the
new patent. And I seriously doubt that one can claim, never mind avoid license fees, for any
thickness exceeding X. That's as far as patenting *the product*. I think you can also patent
the *use* of the product. So if someone uses the coating for any thickness for "characteristic B",
they would need your license. If they want to use it for any other purpose, they do not.
And such claim would not stop anyone from *manufacturing* the product. So probably you could
claim
1. product that is coated to small enough thickness to not have "characteristic A", but
still have "characteristic B".
2. use of the coated product (any thickness) for the benefit of "characteristic B"
The first claim will protect the product manufacture, the second will protect the use.

[JimIvey]

1. product that is coated to small enough thickness to not have "characteristic A", but
still have "characteristic B".

That's a good approach.  You can also claim a coating of thickness in the range of 0.5X-X.

2. use of the coated product (any thickness) for the benefit of "characteristic B"
The first claim will protect the product manufacture, the second will protect the use.

I'm not as sure about this one.  Perhaps someone with more experience with chemical patents can help.  My concern is that prior art items also had characteristic B, though without knowing it.  I don't think you'll be able to stop others from making, using, selling, or importing items with characteristic B if they are also coated to provide characteristic A.  It would be really hard to prove motivation in a competitor.

Regards.

[orangequant]

I don't think you'll be able to stop others from making, using, selling, or importing items with characteristic B if they are also coated to provide characteristic A.  It would be really hard to prove motivation in a competitor.

...So, whatever the new patent coverage may be the crucial point is to establish very clearly
that the "characteristic a" is not imparted by coating the part to the thickness claimed in
the new patent... one should be careful not to claim such thickness in the new patent. And I seriously doubt that one can claim, never mind avoid license fees, for any thickness exceeding X...

i think you guys made some good points that didn't occur to me. i have great respect for your expertise, but Inventor_X did specify:

...item is coated with a costly material of thickness X for the purpose of imparting "characteristic A" to the item...

i.e., X thickness and no other, so i'd see no problem claiming a thickness in excess of X, except for the issue of having, during the mfg process, to pass thru X thickness to get to a greater thickness (a problem which, in theory, a maker of characteristic B would also have to face, as against the new patent for characteristic A--- and in neither case do i see that as an "actual" problem)--- or am i missing something?

[Inventor_X]

Awesome.  Thanks for all of the traffic on this one.  I'm glad to know that the logic of the issue resonates somewhat with me . . .

orangequant, I do want to square one thing in my thought problem before my original ruminations wind up off the rails:

I mentioned in the OP that,

"In this imaginary scenario, a particular item is coated with a costly material of thickness X for the purpose of imparting "characteristic A" to the item.  A patent is issued for this process."

In this hypothetical situation, the thickness of the material is perhaps not expressly claimed; rather, it is only supported in the spec by a particular dimension and beyond as being usable for the purpose (those nutty Germans ).  Perhaps a twist???

And, again, the new purpose for thickness 1/2 X was not ever contemplated in this specific example utilizing costly material at X++; even though the problem to be solved by 1/2 X was in existence long before the first case was ever filed .

More fun? 

Thanks again for the beer and pretzels!

[orangequant]

In this hypothetical situation, the thickness of the material is perhaps not expressly claimed; rather, it is only supported in the spec by a particular dimension and beyond as being usable for the purpose (those nutty Germans ).  Perhaps a twist???
...More fun?... 

heheheh, now i can't wait to hear what the experts say
 

[bartmans]

In this hypothetical situation, the thickness of the material is perhaps not expressly claimed; rather, it is only supported in the spec by a particular dimension and beyond as being usable for the purpose

This would not cause a problem in a European application. Under the EPC selections inventions (the present invention can be defined as such) are patentable if:
a. the specific compound/range has not been disclosed in the prior art
b. the specific compound/range is sufficiently distinct from the prior art; and
c. if the invention is directed to another effect/use (as is the case here).

This means that the item with teh new coating would be patanetable, as well as the use of the coating.

Regards

[Inventor_X]

Everyone:

Awesome info!  I love these puzzles . . .

Thanks a million.

Hopefully one day I'll know enough to pass the favors along 

Have a great day --

[Yet another examiner]

In this imaginary scenario, a particular item is coated with a costly material of thickness X for the purpose of imparting "characteristic A" to the item.  A patent is issued for this process.

After quite some time, it is discovered that this particular item, when coated with the same costly material at a precisely-determined threshold thickness of only 1/2 X is adequate to impart a newly-discovered "characteristic b" to the item in question. 

Now, both processes would have the effect of imparting "characteristic b" to the item; but the first process would be wasteful of the costly material if one sought to achieve "characteristic b" using it.

Will coating the item with a thickness of 1/2 X still impart characteristic A to the item? Is there any teaching that says "don't use less than a 1X thick coating"?