Laguna Niguel, CA asked in Patents (Intellectual Property) for California

Q: I have an idea to modify a patent. Should I contact the inventor/assignee?

I'm wondering if a working prototype is required to patent my idea or if I can just provide a description and drawings.

1 Lawyer Answer
Walker Weitzel
Walker Weitzel

A: There are two important relevant pieces of law here. First, you are able to patent an improvement on an existing patent. There is no need to ask permission of the underlying patent-holder to file for that patent. Second, a patent merely grants the right to exclude others from making, using, selling, or importing the patented invention. It does not necessarily grant the owner of a patent those rights, it only grants the ability to exclude others.

Therefore, you can patent an improvement on another person's patent. However, if it is only an improvement, then you would need the underlying patent owner's permission to practice your invention. At this point, you would need to contact the owner or their representation to get permission through a license.

It would not be a good idea to discuss the idea with the owner before securing rights through at least an NDA, but a provisional patent application would be better still. If you share the invention with the owner before securing some sort of protection, you would risk losing rights over the invention.

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.