Patent and Invention Help Forum

Some IP questions

Some IP questions
« on: November 24, 2019, 07:52:04 AM »
Hello!

1)
There is a specific technology that has been realised in few forms (for example in the form of implant, contact lens, dermal patch etc).

All these forms have been proposed exclusively to use that technology for one specific purpose.

In one patent (e.g. an implant patent) they mention very briefly in the body of the application (and nothing in the claims) that their device could be used for a new different purpose as well but without giving any specifics.

Is it possible to patent this different purpose in an e.g. contact lens device?

So, the new purpose of this technology has been very briefly mentioned for an implant device and the same technology has been developed in various forms but there is no mentioning anywhere of a contact lens device to be used for this new purpose.

The new patent has some additional features that make it more novel and specific than the brief mentioning of the new purpose in the other patent.

2)
Is it possible to patent a device that utilises existing technologies combined together but without going through all the technicalities of these technologies? For example, the device utilises an electromechanical motor. Is it necessary to list all the possible technologies that have been used in electromechanical motors and also to go into detail on how the electromechanical motor will work? Or mentioning just that there will be an electromechanical motor doing this and that, will be enough?

Thanks!

Brad

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Re: Some IP questions
« Reply #1 on: November 24, 2019, 11:43:51 AM »
These are fairly specific questions that are impossible to answer properly without actually spending time getting into the details of each.

In general though:

1) If the prior patents mentions the new use you can bet that the patent examiner will reject your new application as being odviouss and point to that old patent as proof.   Ideally you have some modification or something different you can point to which was not found in that earlier patent and which would not be routine or odviouss.  If so, you 'may' have a shot of getting a patent but in my experience they can be challenging and expensive to fight.

2) You do not need to list out how prior inventions work.  You can just reference an "electrical motor" and people know what that means.   If there is some specific type of motor that works better you should mention that as a preferred type.

My free patent template: https://patentfile.org/free-provisional-patent-template/

Hire Me:  https://patentfile.org/packages/

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

Re: Some IP questions
« Reply #2 on: November 24, 2019, 04:29:36 PM »
Thanks that's very helpful.

Can I list several 'versions' of my device? They are slightly different but they are all based on the same fundamental technologies and do the same thing, apart from the structure and the design that slightly differs in each version.

Also, can I list more than one purposes for my device? I can have at least two major purposes where each of these two purposes can have numerous particular purposes. Is it enough to list few examples for each purpose? Will it cover me for the obvious rest?

As an example, a drug delivery device can have the purpose of delivering a drug into veins but also delivering the drug into the skin. These two major purposes can have multiple other therapeutic purposes depending on what drug you put in.


Brad

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Re: Some IP questions
« Reply #3 on: November 25, 2019, 09:08:00 AM »
Yes you can list as many versions and applications as you want.    The real question is what can you get approved by the examiner.

In practice the examiners will really want you to focus on the device itself and the physical (structural) components of the device and how they are different from similar devices.   If your hope is to get a patent on just a new use or new application (i.e. method of use claims) of an already known device those are extremely hard to get approved and you should be prepared for a challenge. 



My free patent template: https://patentfile.org/free-provisional-patent-template/

Hire Me:  https://patentfile.org/packages/

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.