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Patent Questions and Advice / Re: Novelty outside preferred embodiment
« Last post by Brad on August 11, 2020, 03:21:57 PM »
There are two (2) issues you have to worry about here:

1) If you make and sell a product will that violate their patent.

2) Is your product different enough to get your own patent approved.

For item (1), if there claim is broad enough to cover your product then you could likely infringe, even if their description suggests something else.   I understand this seems unfair but it sounds like they had a good patent attorney claim this broad enough to cover different variations.

For item (2), usually changing the invention and including something that is not found anywhere in their patent is enough to get your own patent approved.  However, if you are removing a step or component that is harder to get approved.   

Remember, even if you get your own patent approved that does not mean you are free and clear to start making the product as you could still be infringing on several older patents.   I wrote a post on this here:
Patent Questions and Advice / Novelty outside preferred embodiment
« Last post by iper on August 11, 2020, 12:43:26 PM »

In a patent, I read 'in a preferred embodiment, we have this characteristic [...]'

This particular characteristic is not explicitly claimed in the claims.

Could the same device be claimed with explicitly not having this characteristic?

In other words, when their description mentions something about 'a preferred embodiment', would it be novel to claim another embodiment without that specific characteristic?

Their claim is so broad that really prevents any other invention in the wider sector of this invention but they clearly have something specific in mind as they mention it as 'a preferred embodiment'. That specific thing that they have in mind is completely wrong and my invention does not have that (it is a property of a material and my invention may have the same material but definitely without that crucial for its function property).

In theory you can get a patent on a new use of a known device.   In practice these are near impossible or very expensive to get approved.   I have never really seen it done successfully.   So trying to get a patent on the device itself may be difficult even if you have a new use for it.

You can also try to write your patent as a method/process instead of as a device.  You can get method and process patents approved as long as they are new and the non-odviouss.  If it would be somewhat routine or odviouss to use the old device in the way you are suggesting then that would also make this challenging.

No idea if you would owe royalties or not but in general if they have an issued and valid patent on the device and you are making or selling that same device (even for a different purpose) you are likely violating their patent so be careful there.


A device I invented is unfortunately the same as another one that had been patented.
I am trying to differentiate myself but it is a rather simple apparatus and it is quite difficult.

However, there is a major difference in the function of the device and I wonder if I can claim a novel apparatus based on its function and not its composition.

For example, let's say you have a device that has specific molecules A inside. My invention is pretty much the same device with the same molecules A.

However, in the first device, the molecules are used to bind other molecules B while in my device they are used to convert the other molecules B.

The apparatus cannot be differentiated but the function is different. Would that be a novel patentable device?

If yes, would that be claimed as an apparatus patent or a function patent? And would I need to pay loyalties to the earlier investor for selling such device?

Yes you can try but if you do not have support for the broader claims in your text the patent examiner may not allow that claim .

For example, if your description teaches a chair with 4 legs and you want to claim a chair with an unlimited number of legs the patent examiner may limit you to just 4.   If you think its possible to have a chair with 8 legs or 10 legs you should at least try to mention that in your text and figures.


Is it possible to have a claim that is broader than what the description mentions?

Will this protect you against all the alternative embodiments that fall within that claim or your protection will only be limited in what the description says?

Patent Questions and Advice / Re: Micro Entity Status
« Last post by rrmusakaev on July 31, 2020, 10:52:33 PM »
Patent Questions and Advice / Re: Micro Entity Status
« Last post by Brad on July 31, 2020, 01:24:19 PM »
There is no standard form for making an amendments to the claims but any changes should follow the rules outlined in the manual of patent examination 1.121 at

If you need free help I would call the USPTO and ask them how to respond:  800-786-9199

Patent Questions and Advice / Re: Micro Entity Status
« Last post by rrmusakaev on July 31, 2020, 12:21:11 PM »
Thank you. Could you please explain the situation? I filed the NPPA 20/07/01. Got the Notice to File Missing Parts - I need to make a change in the claim. Is there a standard form and/or cover letter to respond to the notification?
Patent Questions and Advice / Re: Extremely difficult situation with PCT
« Last post by Brad on July 31, 2020, 09:02:21 AM »
I cant answer any questions about the EPO as they have their own rules and guidelines that I am not very familiar with.

In the US you could wait and just add the new material at the time you file the national stage (assuming its still secret or was made public less than 12 months from the date you file the national application).   This is risky because you will NOT have priority to the new material because the new material was not included in any earlier application.  It is rare but I have seen cases where someone else publishes something on the new material before you get your national stage application filed and that publication can serve as prior art to the new material you are trying to claim.

As you suggested one solution may be to file the new design now in a US provisional application.   Then, at some point within the next 12 months (and before your PCT expires) file your national stage application that links back to both your PCT and your US provisional application.    This should work in the US but not sure if it works in EPO or other places. 

You would likely have to hire an EPO attorney to run through all these questions with and they are not cheap.  I dont know any that would work directly with an inventor.   

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