District Heights, MD asked in Copyright, Intellectual Property and Patents (Intellectual Property) for Maryland

Q: When filing an patent; what are specific differences relating to an improvement on an invention vs. an invention?

I have made an invention that can simply be completed by altering any type of table; end result being a what I'd term as an improvement on dining and gaming tables. I did not invent dining, gaming, or the combination of the two. However, I did invent without using any prior as inspiration, until the prototype phase which use a small gaming table

Is there a legal reference for the improvement to invention threshold?

1 Lawyer Answer
Kevin E. Flynn
PREMIUM
Kevin E. Flynn
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: Great question.

Here are some points to consider.

1) It is extremely rare that someone submits a patent application for the first x (first transistor, first airplane, first telephone). We remember those folks as they are few and far between. Most patent applications are filed on improvements.

2) When you are the first to file a patent on X-- then you tend to get broader protection and have a stronger patent than someone filing the 100th patent on an improvement to X. There are still countless patents filed each year on telephones but they do not have the payoff of the first Bell patent. But they can still be very important and valuable.

3) There are several tests on the path to get a filter. The test of being new is the least difficult as it is a no-brainer that you cannot patent something that already existed. Here is the tougher test from 35 USC Section 103

"A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, [[ok so even after you establish that you are new you must show that you are not..]]

if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."

This is a highly subjective test but you need to think whether someone who has been designing gaming tables for years would think that you had just recombined some known tricks or whether that person would think that you had made a inventive leap. This is where the patent attorney comes in handy to argue to the examiner that this is inventive and not just good engineering.

BTW--with respect to the question of whether your improvement is obvious -- the patent office does not care whether you looked at prior art or not. If the prior art exists anywhere in the world, in any language, and even in some weird product line (dining tables in submarines or space ships), then it counts.

I have some links to slide sets that go into relevant topics such as searching for prior art. https://www.flynniplaw.com/resources/flynn-ip-law-links.

I hope this helps.

Kevin E Flynn

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