No….It is not true…

Great!!!! I feel much better about that whole situation!!

Lesia
Generally speaking: if someone comes up with a modification to your patented invention…and can convince the USPTO that the modification was not obvious to someone with ordinary skill in that invention field, they can obtain a new patent. In fact, most patents are granted on modifications of inventions that already exist. The new (modified) invention must meet all the patentability requirements (new, non-obvious, useful…). But there is no change to the original “patent” itself. Hope this helps.

Lesia,

What Don says below is absolutely true. I personally do not know about the 15% question, but do know that I worked for a company at one time that was a “Me too” company meaning that they rarely came up with new ideas, but were constantly improving on or modifying other existing ideas much like Don says below.

Unfortunately they didn’t want to pay anyone any licensing fees so some of that involved higher ups saying “I want to make our version of one of those” and then it was our job to “work around the patent”.

If the patent used a latch, we used a catch, if theirs was round ours was square and 9 times out of 10 we had pretty much the same product under our own patent without having to pay the original inventor a cent. It’s very sad, but that is how some businesses operate.

To elaborate on what has been said, making a very tiny modification to an existing, patented product can potentially allow you to patent a modified version of that product. Of course, the notion that your product is patented is arguably misleading, since your patent protection only really applies to your minor modification.

And, it is also possible that you could not market your modified version of the product without infringing the original patent. Patentability is a separate issue than infringement.

Phillip, out of curiosity, when you guys were busy designing around patents, were these patents brought to your attention by individual inventors seeking a licensing arrangement, or were these just miscellaneous patents filed/owned by competition?

Phil,

In addition to answering Criterion Dynamics’ question, can you please tell us the name of that “me too” company? Create a fictional avatar, if necessary. BTW, your soul-purging honesty proves that I’m not paranoid – someone really is Out To Steal My Idea.

Thanks for sharing. (;^)

(Private note to Criterion Dynamic: Typing Criterion Dynamic takes too long. You need a nickname. Howabout “Critter”?)

I’m not afraid to post the truth so no need to make a fictional avatar. I did not agree with what was being done at the company, but know all to well it’s done all the time at many companies.

The patents were mainly those of direct competitors making similar products. They would design around us and then we would design around them back and forth until someone decided to sue the other one which happened quite a bit when you work that way.

I will say that the company honestly never ripped off anyone that sent ideas in independently. We worked with many inventors and did market a few things that were introduced to us from the outside totally on the up and up. The company’s policy was to buy the inventor out if at all possible as opposed to having ongoing payments and percentages.

I was just a graphic designer there so I knew what was happening, but fortunately was not the one doing it so no need to “Purge my soul”.

The name of the company is the Lehigh Group and is a Jarden Corporation company. They have been downsized and re-organized beyond belief so I have no idea if they still do this or not but during my stint there is was pretty common practice.

Just make sure if you submit anything to anyone that you have the sign a non-disclosure.

That was interesting,Phil.I think I read somewhere that litigation,or the fear of litigation,was a real innovation blocker,and cost a lot of company money each year.

Don, there was a thread,a while ago,talking about innovating existing products,whereby the innovated product could not be sold without a license from the IP owner of the existing product.Is that correct?

If an innovation relies on the functioning of an existing product,does this not invalidate the claim of the innovated product as being an invention?

If an innovation is novel,non-obvious,new,but does not significantly change or enhance the central functionality of an existing or patented product,can it be patented.

Are you saying,CriterionD,that a new product idea on the market,which innovates an existing patent or patented product,may/will infringe on the existing product or patent?

Abacus asks…>

>>Don, there was a thread,a while ago,talking about innovating existing
products,whereby the innovated product could not be sold without a license from the IP owner of the existing product. Is that correct?<<

DonKelly says~ If you mean “modifying existing patented products,” the wording of the pre-existing product patent claims are controlling (assuming the patent remains within term and maintenance fees have been paid). In other words, if Brit inventor Joseph Swan’s light bulb patent had been a US patent, Edison’s later US patent on a modified version almost certainly would have been blocked. Edison would have to pay royalties to the earlier patentee (unless Swan didn’t want Edison in the business and refused to license, in which case we might be chatting on swannation.com)
– Moderator…that’s just a joke.

AC>>If an innovation relies on the functioning of an existing product,does this not invalidate the claim of the innovated product as being an invention?<<

DK~ No. Reliance on function of other technologies/devices has nothing to do with it. The test is this: Was the “modification” itself inventive? In other words, would the change in the existing (patented or not patented) technology have been obvious to one of ordinary skill in the “art” (field of technology)…and does it otherwise meet the legal standards for patentability (mentioned in your next question).

AC>>If an innovation is novel,non-obvious,new,but does not significantly change or enhance the central functionality of an existing or patented product,can it be patented.<<

DK~ US patent law entitles anyone in the world (with 1 exception**)to a US Patent Grant if she/he creates a novel (new), non-obvious, useful invention (including modifications or changes of any pre-existing technology). There is no requirement that the change be large (significant) or small (insignificant)…no requirement that the “new” invention be better, more efficient, enhanced, prettier, funnier…whatever. [**USPTO employees]

AB>>Are you saying,CriterionD,that a new product idea on the market,which innovates an existing patent or patented product,may/will infringe on the existing product or patent? <<

DK~ I’ll leave this Q to CriterionD to answer (probably “yes”)…
but will add that this is not necessarily a bad thing. See next post.dk

I know, you’ve heard enuff from me…but please let me add…

You shouldn’t lose sleep about your invention and/or your patent
possibly infringing a pre-existing patent. Not a happy thought, but
may have a silver lining. I’ll explain.

If the “other guy’s” patented product (OGPP) is already on the market, he/she should be the first person you approach about
licensing your patent rights (even if they’re still pending). After all, every product has to evolve to keep the fickle consumer’s attention. Your “improvement” (or innovation, as Abacus says)in the OGPP is likely to find an instant home with an established customer base/distribution/yada yada.
And if the OGPP is not on the market, maybe your brilliant improvement will fix what’s broken. In either case, the OG can’t make/use/sell/offer for sale/import your patented improvement without your consent. Love at first sight.
Lastly, be sure to check whether the earlier patent is still breathing. Two things to check immediately.
(1)Has the OGP’s term expired? (not easy to calculate…lot’s of mistakes made here) (2) Has the patent lapsed due to non-payment of maintenance fees (fairly easy to get from www.uspto.gov )
Happy inventing.
dk

Hi,Don,

Thnks for the info.very useful.

can I ask you to clarify.

So anyone can get a patent if it meets the criteria.And if someone tweeks an existing patent or patented product,they can still patent it[if it meets the criteria]

BUT if they turn that invention into a product and try to sell it,in order to sell the tweek,they have to license the underlying other guy’s patented product,or else they’re infringing?

I think that’s what you said.If so,it is an sstonishing bit of information,in more ways than one.

It seems to mean that if an inventor innovates an existing patent or patented product,patenting it is possible,but bringing such an innovated product to market could be really problematic in terms of infringement,or non-co-operation of the patent owner.Is that sort of right?

If it is,it’s a big deal,and clears out a swathe of misinformed considerations for me.

And of course,the OG can’t make/use/sell/offer for sale/import the patented improvement without innovator’s consent.

“Are you saying,CriterionD,that a new product idea on the market,which innovates an existing patent or patented product,may/will infringe on the existing product or patent?”

Its possible, and really I guess it could be probable. That is all I am/was saying. But, its like, if you invent an add-on accessory for an iPod, and somebody buys an iPod and then buys your accessory, there is no real infringement there since the iPod was legally purchased. Of course there could be complications in rare situations, and Apple tends to be litigous I believe…but anyway…

And I agree with Don that this type of scenario isn’t necessarily a bad thing.

Linda….“Critter” works fine. Or you can just call me Bill. It is an objective to subtly get the company name out there, and technically the handle is reserved for the company, and not me as an individual. That said, at least for the foreseeable future, it is me posting…

Thanks for that,CriterionD,
I was thinking more in the context of Phil’s comments where that company would make something round that was square etc.,patent it and presumably sell it,or Lesia’s question of changing a patent by 15%,and then selling the resultant previous patent-derived patented product
If a square thing of a patented product was made round,and it met the criteria,it could be patented,but could the derived product be sold with out infringing the originating patented product?

“If a square thing of a patented product was made round,and it met the criteria,it could be patented,but could the derived product be sold with out infringing the originating patented product?”

It depends what is claimed. If A+B+C+D is claimed, where D is the square thing and connot be made round and the new round thing is clearly not the old square thing, then the answer is yes.

If A+B+C is claimed at all in and of itself, then the answer may very well be no.

“It seems to mean that if an inventor innovates an existing patent or patented product,patenting it is possible,but bringing such an innovated product to market could be really problematic in terms of infringement,or non-co-operation of the patent owner.Is that sort of right?”

It can definitely be a problem, but it often depends on whether the new element is there to enhance the previous patent or to work around the previous patent. The example I often see used is with pens:

A patents a ball point pen. B patents a felt-tip pen. The different elements result in different patents, and the products can be sold without infringing each other.

C modifies the pen to add a retractor mechanism that works with either a ball point or a felt tip and patents the modification. His retractor isn’t very useful without the underlying pen, though, so he has to license A’s and/or B’s patent to make the whole product. On the flip side, if A or B want to sell pens with the retractor, they have to license that from C.

It’s a bit weird for me having force fed myself patenting concerns to suddenly realise the infringement dimension.It definitely seems to be a dimension rather than a consideration.

When I was going for a patentability opinion,it was not acccompanied by an infringability opinion.
From what I’m gathering,and it’s a bit late in the day to aquire this information,patentability by itself is not really what you need.

You need patentability and non-infringeability too,optimally.

This is amazing.That I didn’t know this.

I can see this aspect reducing or aggravating anxiety.

I need to find out more.

Thanks,Don,CriterionD,and Blake for useful stuff.

One example of an improved product that is patentable and that infringed the patent it was improving on is the antihistamine Allegra (fexofenadine). I believe Hoechst Marion Rousell held the composition of matter patent on terfenadine (Seldane). Later Merion Merrill Dow held the rights. It was a blockbuster drug for a while, but pulled after issues with toxicity (arrhythmia) developed. If I recall, a metabolite of terfenadine, (fexofenadine) was actually the active ingredient produced in the liver after taking terfenadine, and was also covered by the original patent. Sepracor developed the patented process to produce fexofenadine as a pharmaceutical ingredient, only they couldn’t sell it on their own because it would infringe. As typically happens in these kinds of cases, a win-win licensing deal was reached. MMD couldn’t sell Seldane because of toxicity, but couldn’t make Allegra without infringing Sepracor’s patent. Sepracor couldn’t sell Allegra without infringing MMD’s patent.

Keep in mind that Edison didn’t invent the light bulb. There were various light bulb inventions ahead of him. He held over one hundred “improvement” patents to the light bulb. Personally I think Tesla’s bulb (flourescent) was far superior.

I have a patent – a very ‘tight’ patent down to the point of what it is made of. I had another ‘brilliant’ idea and decided to get a Provisional Patent for a year just to see what I could do with the revision. Well, it turns out that I can’t even infringe on my own patent: I would have to change its construction in order to get a Provisional Patent. I would think that, as a patent holder, I would be able to make changes – but, no.

Anyone have any additional information? I would appreciate an education – maybe an education which would allow me to infringe on my own….

Hi Julie
As an aside, a patent can be too tight, just like shoes and jar lids. In PatentSpeak “tight” typically means “narrow.” If you want to have a tight conversation about this feel free to contact me off-forum. I’m easy to find.

Getting back to your question…There’s is a lot of erroneous info floating around this forum concerning the term “infringe.” It certainly does not apply in the context you’re addressing.

It seems to me that your concern is with your existing patent being “prior art” against your revision. In a nutshell, herein lies the rub. Patent law (Google> 35 USC 102) ensures that you can patent a new/non-obvious invention “UNLESS” certain conditions are present. Among those conditions is the invention is not patented or described in a printed publication (by ANYONE)more than one year before the filing date of your “revision” patent application (RPA). Even if your RPA invention is different from your own previously patented invention…the difference must include a non-obvious change to avoid rejection.
In other words, yes, your own patent can be used to reject your subsequent patent applications on similar inventions…if you have not executed your application filings in a “chain” (meaning that a subsequent application is filed during the pendency of the earlier patent…e.g. as a continuing application)…or if there were no publication of your earlier patent application or patent more than a year prior to filing on your revised invention. Cheers dk

Thank you, Don.

I printed out your reply so I can digest it – again.

You wrote, “Patent law (Google> 35 USC 102) ensures that you can patent a new/non-obvious invention “UNLESS” certain conditions are present.” Did you mean CAN’T rather than ’can"?

j

Julie
Hey, you’re no sleephead. You’re certainly more awake than I.
While I meant to say “you CAN patent…UNLESS” – - but did not mean “NOT” in the next line. Apologies to all for any confusion. Knocking out the “not,” here’s how it should have read:

Patent law (Google> 35 USC 102) ensures that Julie Brown is entitled to a patent on her new/non-obvious invention “UNLESS” certain conditions exist. Among those conditions (which can be relied upon by a patent examiner to prevent the issuance of her second patent) is where the invention claimed in her Revision Patent Application (let’s label it “RPA”) is found to be patented or described in a printed publication (by ANYONE – including Julie B. herself)more than one year before Julie B’s RPA. Even if her RPA invention is in fact different from her own previously patented invention…that difference must represent a non-obvious change to avoid examiner’s rejection. (re: “obvious,” Google 35 USC 103)

As an aside~ Note that, sometimes, claims in RPA’s are rejected on the ground of Double Patenting where the Examiner concludes the invention revisions are obvious. In such cases, the second patent may be granted IF the Applicant agrees that a second patent (which reflects merely obvious changes in the earlier patent’s claimed invention)will have the same exact term as the earlier granted patent..and that the patents remain under common ownership. Thanks for your sharp eye, Julie.