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Concrete Example re: Novelty Requirement
descartes's Avatar
Ed Smith

For the sake of simplicity I will post a hypothetical invention in order to see what all the experts out there think about this scenario. Thanks in advance for any contributions to answering this question

Lets say that a particular lawn mower design is patented. I come up with the great idea to attach a thatching rake to said lawn mower creating a lawn mower that not only cuts grass but also de-thatches your lawn. I however like the design of the original lawn mower so much that I do not change any of the elements other than attaching my thatching rake to it. Both the function and design of the machine are now different from the patented lawn mower that the current invention is based on. Is it patentable? Am I infringing? What if any other issues does this example bring up? any yes this is a fictitious invention. lol

posted September 26, 2011 12:56 (
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criteriond's Avatar
Criterion Dynamics

Kind of. You have it mostly right, at least, if I read you right. I’ll elaborate and seek to clarify to be safe.

What you can claim depends on what would be considered novel and non-obvious relative to the original patent, and any other prior art – it doesn’t matter whether or not a patent exists and others’ claims are actually besides the point. The concept of attaching a thatching rake to a lawnmower, if novel, might or might not be considered obvious. But even if so, there is probably something you could change to obtain a patent, i.e. there’s probably a decent chance that you could not obtain a patent that would prevent someone else from marketing any random lawn mower / thatching rake combo, but you could more than likely still obtain a patent.

What you can manufacture/market without infringing depends on the original patent’s claims, and not at all on whether or not you can or will obtain a patent. I should clarify that if the original patent has not expired, and you are doing nothing more than attaching a thatching rake to a completely identical lawn mower, you are most likely infringing once you do it (although it’s possible you are not, due to how the original claims are written). But depending on the claims, hypothetically it’s possible that you can avoid infringing the original patent by, say, removing the blade and replacing it with a different blade. Or not. That might be besides the point, because as Julie mentions, you can sell your attachment separately. In that case you should be conscious of any trademark related concerns, and it’s hypothetically possible that the manufacturer of the lawnmower could give you some legal headaches even if there is no legitimate grounds for them. I know that Apple is known for that.

The other possibility is that you could license the original patent from the patent holder. It is worth noting that if you buy a lawn mower @ Hope Depot per se, generally it is considered that you have a license to do what you want with that lawn mower. But if you tried to add your attachment and re-sell, you would have to very conscious of potential trademark issues which would likely arise if people could confuse your modified mower as being manufactured by or sold by or otherwise endorsed by the manufacturer/brand of the original mower. That could actually still be an issue even if you were to manufacturer your own similar lawn mower.

posted September 28, 2011 14:01 (
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descartes's Avatar
Ed Smith

“the fact the lawnmower is “patented” generally just means that at least some small aspect of it is or was subject to patent protection)”

Thanks for the reply. So if I hear you correctly, you are saying that yes it could probably be patented, but the protection that I receive from such a patent would be limited to what is claimed. And what is claimed would be limited to what was previously claimed in the other guys patent? Therefor I could use but not claim the aspects from the original patent. Do I have that right? Thanks again.. I just found EN and I am loving it!!!

posted September 27, 2011 06:59 (
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criteriond's Avatar
Criterion Dynamics

The current invention is different than the patented lawn mower, so at least relative to the patented lawnmower, the current invention is novel. If it would also be considered non-obvious (more complicated), it would also be patentable. Truth be told almost anything is patentable with minor changes and/or the right patent drafting, so I am going to say that the current invention is probably patentable.

What is un-answered: a.) whether the resulting patent would be meaningful at all (either because the approved claims would protect something meaningful, or because you needed to impress investors, or what not), and b.) whether you are infringing the lawnmower patent or some other patent (this depends on the patent’s claims, the fact the lawnmower is “patented” generally just means that at least some small aspect of it is or was subject to patent protection).

posted September 26, 2011 16:16 (
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descartes's Avatar
Ed Smith

This is a fictitious example, but the real product in question is only marketable when the two things are joined together.

posted September 26, 2011 13:27 (
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sleepyhead's Avatar
Julie Brown

Is there a reason the attachment cannot be sold separately? A patent just for the attachment? Maybe sell the de-thatcher to the lawn mower company?

posted September 26, 2011 13:01 (
)



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