Recent Posts

1

Patent Questions and Advice / Re: Is it novel if the same part/material is used in a different way?

« Last post by Brad on August 07, 2020, 01:32:20 PM »

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.

2

Patent Questions and Advice / Is it novel if the same part/material is used in a different way?

« Last post by iper on August 07, 2020, 12:26:08 PM »

Hello

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?

Thanks!

3

Patent Questions and Advice / Re: Is it possible to claim something in a broader way than the description?

« Last post by Brad on August 06, 2020, 08:17:58 AM »

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.

4

Patent Questions and Advice / Is it possible to claim something in a broader way than the description?

« Last post by iper on August 06, 2020, 06:04:51 AM »

Hello

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?

Thanks!

5

Patent Questions and Advice / Re: Micro Entity Status

« Last post by rrmusakaev on July 31, 2020, 10:52:33 PM »

Thanks!

6

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 https://www.uspto.gov/web/offices/pac/mpep/mpep-9020-appx-r.html

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

7

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?

8

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.   

9

Patent Questions and Advice / Re: Extremely difficult situation with PCT

« Last post by iper on July 30, 2020, 04:33:59 PM »

Thanks Brad.

May I ask why would it be risky to add the alternative version of the invention at the national phase? Won't I have priority from the date of the PCT filing? If not, I have filed a new application few days before the publication of my PCT, could that be used to offer priority if the material is to be added to the PCT?

I am also worried whether the addition at the national phase is considered 'added matter' and raises objections (especially at the EPO). Is there a way to find that out early?

Thanks!

10

Patent Questions and Advice / Re: Micro Entity Status

« Last post by Brad on July 29, 2020, 05:55:31 PM »

Here is the USPTO form that each inventor must sign:
https://www.uspto.gov/sites/default/files/forms/sb0015a.pdf

FAQs
https://www.uspto.gov/patent/laws-and-regulations/america-invents-act-aia/america-invents-act-aia-frequently-asked#type-fees