Newnan, GA asked in Patents (Intellectual Property) for Georgia

Q: Can a project be patented with similar outcomes ,but with new device eliminating claimed parts

Example: claims mention a seat. new project has no seat

2 Lawyer Answers
Peter D. Mlynek
Peter D. Mlynek
Answered
  • Patents Lawyer
  • Moorestown, NJ

A: You have two issues in your question: infringement and patentability.

If you make, sell, or use a product that is patented by another party without the right to do so, then you need to be concerned about infringing the other party's patent. Now, if the other party's patent claims to the product require a seat, and your product does not have a seat (or something that could function as a seat), then you'd likely not be infringing the other party's patent. So that is the good news.

For the second issue: is your product patentable, if your product is the same and does the same thing as the existing product, but you've eliminated a part from the existing product? That is a tougher question.

You certainly may get a patent for streamlining a process or a product. Re-engineering of a product which includes the elimination of parts that were considered to be necessary is inventive.

On the other hand, if you simply omitted a part from the existing product, and it would be working the same way as the old product without the seat in a way that you'd expect, then you would not be able to get a patent.

So, for example, if there is a patent on the airplane that requires a passenger seating, and your invention is a plane without seats (the passengers would be straphangers as in subways), then you'd probably not get a patent. Even if there are no standing room airplanes in existence, it would be obvious to install hanging staps in place of seats. But if you eliminated seats on a roller coaster, redesigned it by having passengers be held in place by centrifugal force in a standing/lying position, then you'd likely be able to get a patent.

Sorry that it is not a straightforward answer.

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

A: The answer by Mr. Mlynek was good. Another way to put the patentabiliity question is whether a person of ordinary skill in the art of designing your type of product would be able to come up with your solution as just a recombination of known principles rather than an inventive step given everything that has ever been done to make this sort of product or to solve analogous problems anywhere in the world, and throughout all of time.

In the US we talk about whether the solution was obvious or non-obvious but the inventive step language used in other systems seems a bit more natural to me.

Again this is a subjective test. Much of the work of a patent attorney is trying to judge where the line is between an obvious recombination and an inventive step. The debate often continues before the patent examiner and sometimes again during patent litigation. This is a difficult question and many smart people come out with different conclusions when looking at a particular invention relative to a set of prior art.

ASIDE--note that I sometimes "mention" nouns in my claim without requiring those elements to be in an infringing device. I might mention a battery but not require that a battery be delivered with the device so that someone cannot avoid my claim by selling the device without a battery. So you may need to have a patent attorney look at the mention of a seat to ensure that your product without a seat is beyond the scope of the claim.

If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at https://lawyers.justia.com/lawyer/kevin-e-flynn-880338

Kevin E Flynn

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