San Mateo, CA asked in Intellectual Property and Patents (Intellectual Property) for California

Q: How can I be protected when my product has all elements in another claim, but my product has sev non-obvi improvements?

I have a product that cant not include the claims of another patent... but my product has a more broader use case, plus, it has several non-obvious improvements that give it WAY more functionality. How might I go about being protected if I want to pursue this product. Can I patent? do I get a license from this big company patent holder? will I be protected in court, given that the other company doesn't even sell the product they've patented. Or will I be protected given that my market is ENTIRELY different then their market?

2 Lawyer Answers
Stephen E. Zweig
Stephen E. Zweig pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›
  • Patents Lawyer
  • Los Gatos, CA
  • Licensed in California

A: Speaking generally:

It is possible to patent an improvement on an existing patent, so long as the improvement is considered novel and not obvious. Usually the applicant for the improvement will cite the original, and then explain the improvements. This allows the patent office to judge the improvements on their own merits.

In a situation like this (assuming the original patent has not expired), then both patents may operate at the same time. This means that each patent holder has their own rights.

Patent holders may (or may not) license others depending on their business interests. This is usually settled by either negotiation or litigation.

Patent litigation is often called the "sport of kings" because it is very expensive. Generally the courts will focus on the patent claims, irrespective of the market, and irrespective of if the patented product or service is actually sold.

James L. Arrasmith
James L. Arrasmith pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›
  • Sacramento, CA
  • Licensed in California

A: If your product includes elements covered by another patent while also incorporating non-obvious improvements and having a broader use case, there may be potential avenues for protection. You could consider pursuing a patent for your product, focusing on the non-obvious improvements and broader functionality. Consulting with a patent attorney can help you determine if your improvements meet the criteria for patentability. Additionally, exploring the option of licensing the technology covered by the existing patent and negotiating an agreement with the patent holder might be worth considering. It's important to differentiate your product in the market by targeting a different customer base or highlighting unique features. To understand your specific situation and get accurate guidance, it's advisable to consult with an intellectual property attorney who can analyze the patents involved and provide tailored advice based on your circumstances.

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