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Author Topic: Can one Patent for existing product AND for future production?  (Read 1327 times)

Demiurgic

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Here is a situation I find a bit complex as a small business ownerwho is just getting into understanding patents. 

We import an extract of herb X and mix it into our proprietary blend, creating an herbal dietary supplement which we have just started to market locally, to test the waters.  We would like to patent this product. All we do is write up our recipe and call a patent lawyer and take it from there right?

There is a part two to this situation which is of minor significance right now but can pose a problem in the future. 

This specific extraction method of Herb X has a U.S patent from 5 or so years ago (How do we find out if this patent is paid for and up to date?)

Now, because this particular extraction is complicated, we can surely alter the process in some ways to make it our own unique production technique in the future, when we have the money to buy the machinery to actually do this.

My second question is if we can write up our own unique production and manufacturing process now before actually manufacturing it, to secure rights to make this product from start to finish in the future. Does that make sense?
 

It's important because our product is totally unique in it's genre and even it's various applications (We are developing various products from herb X )  and we would someday like to produce it from start to finish whenever the market responds to our efforts.

Any clear thinking is appreciated. If you get technical, please give me a lead, so I can research it since I'm a patent newbie.

Thanks!
« Last Edit: 10-11-11 at 01:54 pm by Demiurgic »
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NJ Patent1

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"We import an extract of herb X and mix it into our proprietary blend, creating an herbal dietary supplement which we have just started to market locally, to test the waters.  We would like to patent this product. All we do is write up our recipe and call a patent lawyer and take it from there right?"

Well, that's a really good start.  But further communication with your attorney will probably be necessary.

"My second question is if we can write up our own unique production and manufacturing process now before actually manufacturing it, to secure rights to make this product from start to finish in the future. Does that make sense?"

Yes, it makes sense.  But you have to be able to describe your process and give enough instruction in the application so that someone could pick-up the application / patent and carry-out the process w/o so-called "udue experimentation".   Applicants use "prophetic examples" all the time.

Sorry, I'm not well-versed in the "quote" feature here  :(
 

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Demiurgic

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Sounds great and this future production we are not yet doing, is something we can possibly write out.
Hope the following question is not rude to the forum.

How does one go about picking the right patent lawyer for their product? Are there some basics to follow here? We are a small company and just trying to get on our feet, so that plays in as well.

Also, are there patent lawyers who specialize in dietary supplement patents for instance?

Thanks everyone!
« Last Edit: 10-13-11 at 03:03 am by Demiurgic »
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klaviernista

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How does one go about picking the right patent lawyer for their product? Are there some basics to follow here? We are a small company and just trying to get on our feet, so that plays in as well.

Also, are there patent lawyers who specialize in dietary supplement patents for instance?

There are a couple of threads on the board re: choosing a patent attorney.  I'll try to look one or two of them up for you, but in the interest of time I won't rehash what they have to say here.  I will say, however, that I would choose a patent attorney based on the following factors:

1.  Technical background. A patent attorney with a chemical background might not be right for a software related invention)
2.  Ability to communicate. Does the attorney speak and write clearly, or is he/she a bumbling mess?.  I would ask the attorney to provide examples of his work product (e.g., patents that issued from applications he/she wrote).
3.  Price/Reputation tradeoff (i.e., bang for the buck).  Speaks for itself.  Is the attorney going to give me a quality product and quality services at a price that I am comfortable with? 

As to your question re: specialization in herbal supplements, I do not know of any attorney that focuses their practice on that specific area.  That said, there are attorneys (like myself) who consider themselves specialists in "composition" patents.  And within that group there is a subset of attorneys that specifically focus on patents covering products that are intended for therapeutic use and which will go through the FDA approval process (e.g., orange book listing). 

By the way, I just sent you a PM.  You can see it by clicking on "my messages" in the upper portion of your screen.

« Last Edit: 10-13-11 at 09:52 am by klaviernista »
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This post is not legal advice.  I am not your attorney.  You rely on anything I say at your own risk. If you want to reach me directly, send me a PM through the board.  I do not check the email associated with my profile often.

NJ Patent1

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Demiurgic:  Per my previous post, you can “write-up” the process as you presently conceive it.  I, and I believe other practitioners here, have drafted claims to prophetic processes.  What are the novel and non-obvious differences btw your process and the already-patented process?  “Process variables”, like temperature and time, don’t usually contribute to patentablility, unless there are unexpected results (i.e. a “wow”) concerning efficiency, purity, efficacy etc.  Is a chromatographic step involved?  What are the stationary and mobile phases and why are these not so-called “routine optimization”?  You would have to take some minimal position on such options.  An atty / agent can help you with this.  I simply (and appropriately) don’t know enough facts of your case.  My prior post concerned only the possibility of patenting a yet-not-practiced process, not the ultimate patentability of such process.  The latter depends on the facts. 

In my experience with “nutraceuticals”,  process claims can sometimes be as valuable as product claims.  Everybody (maybe) knows this or that flavonoid, flavone, oligopeptide - or whatever - is/are in the plant.  Your process is more “efficient” in the broadest sense.  It (unexpectedly) gets the important stuff in high yield and purity at low cost.  Eventually, if the product (the nuraceutical) is successful, somebody in China or India WILL rip-off your process.  35 USC 271(g) (process patent protection) at least gives you the possibility of blocking knock-off imports made by your process. 

Picking an attorney - in any field - is like picking a new physician.  Per Klavernista, it requires some research. 
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