By: Mark R. Malek
This is yet another article in the series of “questions that Mark Malek gets all the time when playing attorney at Zies Widerman & Malek.” Every now and again, I get the phone call from a very creative person who has really gone above and beyond what most inventors do initially. This person has laid out their invention in great detail, then has taken the time to do a little bit of prior art searching and, the following is the best part in the world – has actually taken advantage of a quick, free consultation that most patent attorneys offer (at least the ones at our firm do) to determine if they can move forward.
The details of the call are quite interesting, generally. Normally, the client has identified a piece of prior art, and has figured out that their invention has every element identified in the patent that they have located, but that their invention adds a little bit more to it. Now what? Recall my article a couple of weeks ago where I indicated that it is perfectly acceptable to design around a patent. There is a discussion about the steps you need to take to design around a patent during our conversation. The thing is, however, that you can’t design around a patent by simply adding to it.
For example, let’s say that there is a patent out there for a chair that has four legs, a seating surface, and a back. Let’s now say that the invention in question is a chair that has five legs, a seating surface and a back. Let’s also assume that there is no other prior art out there that is at all related to this technology. As my movie-quoting partners would now say “and then the space ship lands.” Yes – that is a quote from one of the best comedies of all time, “City Slickers.” Back to the story, however, the question to be answered now shifts around where does the inventor on the phone stand? Has this inventor come up with something patentable? Does this new invention read on the patent for the chair with four legs that the inventor uncovered? The answer to both is YES!
Big help I am, right. Here is the thing about it. The invention for the chair with five legs still incorporates all the limitations of the patent on the chair with four legs. Therefore, one cannot make the chair with the five legs without infringing on the patent on the chair with four legs. Here’s the real rub – the invention on the chair with five legs may still be patentable. Put your self in the Examiner’s shoes for a second. The Examiner may have on his/her desk a patent application for a chair that has five legs. During the Examiner’s prior art search, the only thing that shows up is a patent for a chair that has four legs. The Examiner cannot seem to find any related prior art that is related to any five-legged device. Therefore, the Examiner may decide to allow the case.
The next two articles that I will put up are related to this situation. The first will be an analysis of the situation where you have a patent, but you may still be infringing on another patent – does having a patent gives you the right to manufacture the device that is covered by the patent? The next article that I will post is directed to options when your patentable invention infringes a patent.