A Patent Attorney Shares IP Insights
I often get the question, "There is a product on the market similar to my invention...how different does mine need to be?" This can be a really gray area, so I went to an expert, Stuart J. West, Founding Partner of Intellectual Property Law Firm West & Associates, who shares his insights on the matter:
To start with, there are two different questions here.
- How different does my idea have to be in order to get a patent?
- How different does my idea have to be in order not be infringing somebody else's patent?
There's also a third question inherent in all of this: Even if I get a patent, how strong will it be?
1. How different in order to get a patent?
The statute says that an idea must be "novel and non-obvious" in order to be patentable. What this means is your idea cannot be a direct duplication of anything that already exists ("novel") and it cannot be "obvious" based what products already exist.
Novelty is a simple test: Do your patent claims describe something that already exists. If yes, then your claims are not novel. If no, then your claims are novel.
Non-obviousness is a much more complex test: The key to obviousness is the following--if I were a developer in the same field as your product (so I know about all the existing products and patents— patent specifications (the whole body) often describe more than the actual product that you see on a shelf) would your idea just be a combination of those existing products or patents. There are some legal limitations on what can be considered products in the same field and there must be some "motivation to combine" the existing ideas, but that's the basic test.
"Obviousness" is almost always a major sticking point between patent attorneys and patent examiners. Most patent applications are rejected by examiners as being "obvious" over existing patents. A skilled patent attorney can usually provide legal and/or technical reasons that will convince the examiner otherwise, but sometimes examiners are stubborn or right.
2. How different so I'm not infringing?
This is a slightly easier question. To answer this question, you have to look at the claims of the patent that you might be infringing. For the most part, it really doesn't matter what the rest of the patent says -- only the claims matter with regards to infringement. Even though they are in English, it takes some skill to read patent claims and you might want to get some help. However, if you care to spend the time, in theory anyone can properly interpret the claims.
To begin interpreting the claims, you must give each word its broadest possible meaning -- don't just look at the pictures (the figures only show one way of making it). The claims may describe something completely different!
To infringe, your invention must contain all the elements listed in the claim. For example, if the claim says A, B and C and your invention only has A and B- -You Don't Infringe. However, the converse is not true. If your invention has A, B, C and D--You do infringe, because your idea has A, B and C (even though it also has D). Here's where it gets confusing: Just because your idea infringes another patent, doesn't mean that your product (A, B, C & D) isn't patentable.
Once again, claim interpretation is difficult and if you have questions you should seek help from a qualified patent attorney -- a patent agent is not qualified to provide advice regarding claim interpretation.
3. How Strong Will My Patent Be?
The general saying among Patent Attorneys is "Any half-way decent patent attorney can get you a patent." However, unless you want an expensive wall hanging, you want to ensure that you can get a patent that is, at least, somewhat broad in scope.
Two bottom-line rules: 1) The greater the differences, the stronger the patent. 2) The claims determine everything when you are concerned about infringement.
By Stuart J. West, P.E., Founding Partner of Intellectual Property Law Firm West & Associates 888.IPLAWHELP (475-2943) www.westpatentlaw.com
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Youre a real deep thinker. Thanks for siahrng.
I agree. Unlike the The Washington Times, the Charlotte, North Carolina publishers would probably see it the same way. You deserve gratitude for this.
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how do you get a protype made of your invention? , what are the names of some of the companies who would make a prototype so that you can try to market your invention, and do you need to have a provisional patent first?