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[teamaryan]

Hi,
Trying to understand how patent registration works for different countries.

Example: A invention has been patented in US and granted 3 years back. Whereas same is not registered in other country like EU, HK, WIPO, etc... Now the another Inventor part of EU came-up with same design idea that he would like to patent in that region. He applies for Patent in EU but not WIPO or US. Questions are:
- If 2nd inventor files a patent application today in EU, does it qualify for patent (assuming that first inventor has not filed any application with EU)
- What happens to the First inventor who got patent in US, can he still claim patent application in EU with priority date as back as 3 years if he comes to know the patent being filed by 2nd inventor in EU

Appreciate any help
Thanks

[Wiscagent]

As soon as the US patent was granted (or the patent application was published) it was too late for someone else to apply for and subsequently be granted a valid patent on the subject matter that was disclosed.

[teamaryan]

Thanks Richard for the input.

By searching web sites found that many inventions that has been patented in a particular country only and it's got published also. Whereas other contries can copy these invention to make and sell product since it's already published. and no sign of patent registration in other countries. Is it true? I understand that this would be riskier approach.
Can't we get improved version of existing patent in EU without referring to the existing patent. For example, first inventor has used certine Materials and Bill of Materials of 5 units, whereas 2nd Inventor concept uses 3 units and achives improved or equal performance. Advantages over the first design is since BOM is less, cost also scaled down accordingly. In both cases 90% of the claims will be similar with few modifications in design style? How does this work.

Thanks

[CriterionD]

In both cases 90% of the claims will be similar with few modifications in design style? How does this work.

Thanks

It can hypothetically work.  It doesn't matter whether the claims are similar (or at least look similar) - as long as they are not identical.  In the US (and things at least work similarly elsewhere), relative to all prior art, the invention(s) described by your claims have to be considered novel and non-obvious.  For the novelty requirement - novelty is novelty - a slight bit different equals different.  The non-obvious requirement is less clearcut.  If it is perceived that it would have been obvious to someone in your field, in light of this prior patent, that a similar concept using only three units would lead to a better product, then you wouldn't be able to patent this.  There is technically a usefulness requirement as well, but usefullness is subjective and you more than likely get the benefit of the doubt there.

Do note however, that your patent protection is limited to the differences between your invention(s) and the prior art.  Along these lines, note that hypothetically, depending on the claim structure of both patents, its possible that you could acheive patent protection, but still be infringing on the other patent if taking your invention to market (although if you are talking about a US patent, obviously you can't infringe it in the EU).

[teamaryan]

Thanks, A invention has been patented in one country with few functions having claim errors including descriptions. Also could not bring-out (this useful product which has high market value) for morethan 6 years since he got patent granted and he has only 14 years for his patent.
Now new invention of same device by other person where he has fully functional formula and demonstrable, can he still file a patent in the same country and claim entire device.
Per my attorney, though it was patented in one country with out PCT or complete application in any other country, we can still make/sell our product available to public. However we will not be having monopoly which would lead to competition market. Is this normal or can we go with trade-screte route along with patent application filed for complete device.
Thanks much.
TeamA

[CriterionD]

Per my attorney, though it was patented in one country with out PCT or complete application in any other country, we can still make/sell our product available to public. However we will not be having monopoly which would lead to competition market. Is this normal or can we go with trade-screte route along with patent application filed for complete device.

If I understand correctly, per your attorney, your invention is not patentable (at least in one country), but you wouldn't likely be infringing on someone else's patent, so you could still take the product to market?  The right to sell your product exists aside from patent law, if no one else holds a patent that is in your way then you can sell your product no problem.  Not holding a patent yourself just means that you cannot have the exclusive right to the product's commercialization that a patent could potentially afford.  Thats normal - many products on the market all-over are not patented

Now, if you have reason to believe that your invention is patentable, you can file for patent protection.  However, if it is not patentable in one country, its sounds to me that there's a good chance its not patentable period. Going the trade secret route simply involves taking relevant steps to ensure that certain information stays secret (and/or that you have legal remedy in the evennt your secret is spilled). 

[teamaryan]

thanks for the clarification and this data helps me.
Related Question: What should I expect When asking for Patentibility Search Report from attorney. Is it that search all patents office and publications for given key-words and provide any known art data? Or is it expected that report to include any advice on how to overcome our patent application based on search report previously published art?

example: given set of components and method patented for one set of function with few claims, Whereas using same set of components and applying different method to obtain completely different function than the known art. In this example, is search performed based on set of components or is it function based?
Thanks,
A

[CriterionD]

Any patent search report, most importantly should ideally include any priort art located which is seen as hypothetically preventing the patentability of any aspect of your invention.  It is impossible for a search to be 100% thorough, it should be reasonably thorough.  Looking primarily over simple keyword searches will be at best less than prudent, and at worst completely useless, although some of the lower priced search firms on the net won't do much better than that.  By market standards, a patent searcher or search firm should at the very least look over all the patents / apps in the most pertinent patent subclasses pertaining to your invention - although relying only on classification searching is also less than ideal.

Any advice or analysis can always happen after the fact, and hopefully whoever prepared your search can answer relevant questions for you.

If you would like to look over sample patent searches prepared by Criterion Dynamics, just click the link in my sig and visit the Patent Search Services page...

[teamaryan]

Thanks Criterion for the data. I did go thru the website noticed very good info.
Related Question: the search report I received seems to be citing many patents that are closest to my device. But what I observed is that search is done based on components being used in the system rather than going thru claims and description itself which slightly differs.
I have also noticed that some patents have been issued in one country for one inventor and where other inventor submits his application in different country for the same device principle. In this situation, can first inventor submit application in different country? I understand that first inventor can not submit the application in any other country after the publication of his patent application in his own place as his patent itself acts as prior art citation in other country? Is this true? This is under assumptions that he has not filed any PCT application before patent publication.
Thanks
-TA

[CriterionD]

But what I observed is that search is done based on components being used in the system rather than going thru claims and description itself which slightly differs.

I am not completely sure what you mean here in the sense of do you feel that the searcher did not look through the claims and/or description of any patents?

I have also noticed that some patents have been issued in one country for one inventor and where other inventor submits his application in different country for the same device principle. In this situation, can first inventor submit application in different country?

Possibly assuming a PCT was filed by the first inventor within a year of his application, and the new national app submitted within an allotted time frame.

I understand that first inventor can not submit the application in any other country after the publication of his patent application in his own place as his patent itself acts as prior art citation in other country? Is this true? This is under assumptions that he has not filed any PCT application before patent publication.

Generally