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[ECmax]

Is it possible to obtain a patent for a broad inventive concept that encompasses a narrower concept embodied in a previously issued patent? As a simple example of what I mean, imagine that chairs have not yet been invented, and then someone comes along and obtains a patent for a chair comprising a surface on which to sit, four legs to raise said surface above ground level, and a structure attached to said surface to support the sitter's back. Subsequently, I determine that a chair could be made with any number of legs, so I decide to try to patent a chair comprising a surface on which to sit, one or more legs to raise said surface above ground level, and a structure attached to said surface to support the sitter's back. Ignoring the question of obviousness for the moment, could I conceivably obtain such a patent, or does the existing patent kill my chances, even though its concept is narrower?

[blakesq]

You may be able to get a patent for a chair with 1, 2, 3, and 5 or more legs. 

Is it possible to obtain a patent for a broad inventive concept that encompasses a narrower concept embodied in a previously issued patent? As a simple example of what I mean, imagine that chairs have not yet been invented, and then someone comes along and obtains a patent for a chair comprising a surface on which to sit, four legs to raise said surface above ground level, and a structure attached to said surface to support the sitter's back. Subsequently, I determine that a chair could be made with any number of legs, so I decide to try to patent a chair comprising a surface on which to sit, one or more legs to raise said surface above ground level, and a structure attached to said surface to support the sitter's back. Ignoring the question of obviousness for the moment, could I conceivably obtain such a patent, or does the existing patent kill my chances, even though its concept is narrower?

[ECmax]

You may be able to get a patent for a chair with 1, 2, 3, and 5 or more legs. 

Thanks. So a patent could conceivably be obtained for the broader concept, but the claims would have to be drafted in such a way that they exclude the existing patent, correct? Then anyone producing a chair with 4 legs would have to obtain a license from (only) the first patent holder, and anyone producing a chair with any other number of legs would have to obtain a license from (only) the holder of the new patent. 

In a case like this, would the existing patent work against the person trying to obtain the broader patent because of obviousness issues, or could the fact that the original patent didn't make a broader claim be used as evidence that the broader concept wasn't obvious? I know it would depend on the specific details of the case, but do you have any thoughts about the likely outcome in an abstract/generic sense?

[JimIvey]

Subsequently, I determine that a chair could be made with any number of legs, so I decide to try to patent a chair comprising a surface on which to sit, one or more legs to raise said surface above ground level, and a structure attached to said surface to support the sitter's back. Ignoring the question of obviousness for the moment, could I conceivably obtain such a patent, or does the existing patent kill my chances, even though its concept is narrower?

No.  A 4-legged chair would infringe the one-or-more-legged chair claim.  That which infringes if after anticipates if before.

You might try patenting chairs with fewer than 4 legs and with more than 4 legs.  Whether those variations are obvious would depend on the specifics of your innovation.

Regards.

[Isaac]

Is it possible to obtain a patent for a broad inventive concept that encompasses a narrower concept embodied in a previously issued patent?

It might be possible to obtain a patent on a multi-legged chair if the method of stabilizing the chair used a completely different principle than do the prior art chair legs.  (Perhaps your chair's legs might employ anti-gravity leveling devices and don't actually contact the floor, and the number of legs is not even critical).  But you'd have to recite the structural differences between your chair legs and the prior art chair legs in your claims.

Depending on how different the stabilizing method is, you might even be able to avoid infringing the existing patent.  Even though a naive reading of the original patents claims might read on your chair.  A court might find that the original patentee did not show possession of your invention thus creating a written description issue when he tries to assert his claims against you.

Of course my made up "facts" are not anything like your hypo.  I agree with Jim regarding your hypothetical.  I also don't believe you could patent a five legged chair that's just like the patentee's four legged chair plus an extra leg, unless the claims of the original patent are limited to chairs with only four legs.

[ManOfManyBadIdeas]

Thanks. So a patent could conceivably be obtained for the broader concept, but the claims would have to be drafted in such a way that they exclude the existing patent, correct? Then anyone producing a chair with 4 legs would have to obtain a license from (only) the first patent holder, and anyone producing a chair with any other number of legs would have to obtain a license from (only) the holder of the new patent.

From my limited understanding it's correct. If any of the existing patents/products infringe on (is covered by)
your claim, that claim is invalid.

In a case like this, would the existing patent work against the person trying to obtain the broader patent because of obviousness issues, or could the fact that the original patent didn't make a broader claim be used as evidence that the broader concept wasn't obvious? I know it would depend on the specific details of the case, but do you have any thoughts about the likely outcome in an abstract/generic sense?

Again, in my limited understanding, for getting a patent it's sort of irrelevant what the previous patent claims. It's important
what it teaches (describes in the specifications). Of course there such things as self enabling claims, but I would say that
those are both the claim and the spec at the same time. And it's not just patents that count, industry publications and known products
count too. I do not think you have to prove that the broad concept IS NOT obvious (although many examiners
would like to make you, judging by the info on these forums ). It's the examiner's job to prove that either
a) the broad concept you are describing IS obvious or b) each the inventions that are enabled by this concept and that
you are trying to claim would have been obvious to arrive to without the benefit of knowing your broad concept.

It's possible that after your patent is granted that your claims and the other patent claims overlap for some products. In that case
somebody making the product would have to either get licenses from both patent holders, or one of the patent holders would have
to invalidate the other's claim in court.

[ECmax]

That which infringes if after anticipates if before.

That helps clarify my thinking.

Depending on how different the stabilizing method is, you might even be able to avoid infringing the existing patent.  Even though a naive reading of the original patents claims might read on your chair.  A court might find that the original patentee did not show possession of your invention thus creating a written description issue when he tries to assert his claims against you.

This sounds like what Slusky refers to as "invention-irrelevant" prior art, i.e., prior art that anticipates the elements of the claim without actually anticipating the inventive concept. I'm still trying to get a firmer grasp on the implications of that situation...

Again, in my limited understanding, for getting a patent it's sort of irrelevant what the previous patent claims. It's important what it teaches (describes in the specifications). Of course there such things as self enabling claims, but I would say that those are both the claim and the spec at the same time. And it's not just patents that count, industry publications and known products count too.

So, when assessing potential infringement, only the claims of prior patents are relevant; but when assessing potential patentability, the specifications must also be considered (along with non-patent prior art). If my idea is not covered by any prior claims but is anticipated in a specification, I would be free to practice my idea but I couldn't patent it, right?

Thanks to all for your comments and insights.