Is my idea patentable? Does it infringe another patent? Many people don’t realize that these are two completely independent questions, and that the Patent Office doesn’t consider the latter when examining a patent application. The purpose of this article is to clear up a common misconception. Let’s suppose that you have come up with an invention. Your invention is an improvement upon the patented product of another. Many people wonder if the other person’s patent prevents them from manufacturing the product or from obtaining their own patent. The question that they are really asking breaks down to the separate questions of patentability and infringement.
If a person obtains a “broad” patent on a new product, the patent will also cover variations, or improvements, on the product – as long as these alterations are still within the scope of the patent, and are covered by the “claims”. There is an age old myth, that all you need to do is make a few changes to a product to avoid infringing its patent. This simply is not true, unless these changes fall outside the scope of the claims.
If a patent is issued for an invention, or a printed publication fully describes the invention, then no one can ever obtain a patent on that same invention. However if someone improves upon the idea and makes a significant change, then patent protection may be available to prevent others from also making the improved product. The question will then be “is this a “novel” change”, and is it “non-obvious”. That is the Patent Office’s test for determining if the improvement is substantial enough to warrant a patent. If the improvement meets this test for patentability, a patent will be granted for the improvement.
1. If the improvement meets the test of patentability, a patent will be granted for the improvement. 2. If the improvement is covered by the claims on the existing patent it will also infringe that patent. How could this be? The answer is that a person can obtain a patent on a new feature for an invention, but they still might not be able to produce the improved invention because it would infringe upon the patent on the original product. A patent does not give the patent owner the right to produce their invention – it only gives the patent owner the right to exclude others from making, using or selling the invention. The inventor of the improvement would need a license from the owner of the original patented product in order to make, use and sell their new improved version. However, the owner of the original patent can’t himself make the improved version without a license from the owner of the improvement patent. Let’s consider an example:
Inventor A patents a two legged chair in 2005. In 2007 Inventor B invents a two legged chair having a special orthopedic cushion. Inventor B applies for a patent on his two legged chair with the special orthopedic cushion. The Patent Office considers the orthopedic cushion to be a new and non-obvious improvement over A’s patent and therefore grants a patent to B. - Inventor B’s patent will prevent any person from making, using or selling a two legged chair having the special orthopedic cushion. -Inventor A still has the broad patent covering the general idea of a two legged chair. Therefore, Inventor B cannot produce his chair without infringing A’s patent. If inventor B wishes to put his two legged chair with an orthopedic cushion on the market, he must obtain a license from inventor A. If inventor A wishes to sell his two legged chair, with the added feature of the orthopedic cushion, he must obtain a license from inventor B.
For most of the inventions conceived by individual inventors, the general concept being improved upon is quite old. In other words, the broad patent on the product has been long expired. Therefore, the technology being improved upon is in the pubic domain. So, following the example above, if Inventor A patented his two legged chair in 1940, the patent would have long since expired when Inventor B sought to bring his improved chair to market.
