Matching claims and patent infringements.

[toddzwife]

What is the name of your state?What is the name of your state? VT

It is my understanding from reading past questions on this website that if I have an invention that is similar to an existing patented invention, I may be infringing on this existing patent if even one of it's claims matches my invention. But it has to match EVERY element of the claim. Am I correct?

If I have invented something that is similar in many ways (including it's function and purpose), but does not "infringe" upon any of the claims of the already patented article, do you feel it is safe for me to pursue a patent?

Some background....I invented this "thing", only to find a similar "thing" on the US Patent website already patented (this was an idea for an item which I came up with all on my own. I did not steal anyone's idea). My invention differs in many ways, but is basically the same in many ways, also. After looking at the claims, I notice that in Claim 1 of the already patented item there are 5 parts (a,b,c,d, and e). Parts c,d, and e differ from my invention, in that the patented article has a part that mine does not include. Parts c,d, and e refer to this part. So, to my understanding, my invention is not a perfect match to claim 1 of the already patented item.
Further observation of the other claims shows me they are all pretty much dependant on claim 1. Some are dependant of other claims, which are dependant of other claims that eventually are dependant of claim 1. For example, claim 16 refers to claim 15, which refers to claim 14, which refers to claim 13, which refers to claim 1. Does that mean claims 14-16 are ultimately dependant on claim 1? If parts of my invention match claims 14, 15, or 16, which are all dependant on claim 1, which does not completely match my invention, am I safe to pursue a patent without infringing? I understand you don't offer legal advice, but could you advise me whether it would even be worth bringing before costly legal cousel, having things so similar in design?

How close is too close to infringing upon an existing patent? I just want to avoid the hassel of being sued before pursuing a patent for my product.

By the way, I don't know if this information would be helpful, but the existing patented item has been designed for public use and appears to have been designed to sell to large manufacturers of "something" the public uses.
My invention, though it functions in basically the same manner, is for personal use, and would be sold in stores for any one to purchase for personal use which is much more sanitary than the existing patented item.

I know I have asked a ton of questions and I hope I worded my queries in a way that isn't confusing. Thanks for your advice and the time you put in to helping those of us who feel in the dark about many issues concerning patents.

 

[divgradcurl]

It is my understanding from reading past questions on this website that if I have an invention that is similar to an existing patented invention, I may be infringing on this existing patent if even one of it's claims matches my invention. But it has to match EVERY element of the claim. Am I correct?

Yes, you have to infringe every element of one claim for infringement to extist.

If I have invented something that is similar in many ways (including it's function and purpose), but does not "infringe" upon any of the claims of the already patented article, do you feel it is safe for me to pursue a patent?

If it is truely not infringing, then it is probably safe to build your invention. Whether or not it is infringing has nothing to do with the separate question of whether or not it is patentable -- people get patents on inventions that infringe other patents all of the time. If your invention is otherwise patentable, the fact that it may infringe another patent has no bearing on whether or not a patent will be issued.

Some background....I invented this "thing", only to find a similar "thing" on the US Patent website already patented (this was an idea for an item which I came up with all on my own. I did not steal anyone's idea).

That's irrelevant -- you can infringe whether or not you know it, and whether or not you intend it.

My invention differs in many ways, but is basically the same in many ways, also. After looking at the claims, I notice that in Claim 1 of the already patented item there are 5 parts (a,b,c,d, and e). Parts c,d, and e differ from my invention, in that the patented article has a part that mine does not include. Parts c,d, and e refer to this part. So, to my understanding, my invention is not a perfect match to claim 1 of the already patented item.

If you've read other questions and answers on this site, you know that you cannot rely on a narrow reading of the claim language in isolation. Proper interpretation of the scope of the claim requires reading the claims in light of the specification (the written description), along with a reading of the prosecution history of the patent, at a minimum. Claims are not limited their exact wording -- they may have broader interpretations as well. But they may not, which is why it is oftentimes useful to hire an expert -- an attorney or patent agent -- to review all of the relevant paperwork, and advise you accrodingly.

Further observation of the other claims shows me they are all pretty much dependant on claim 1. Some are dependant of other claims, which are dependant of other claims that eventually are dependant of claim 1. For example, claim 16 refers to claim 15, which refers to claim 14, which refers to claim 13, which refers to claim 1. Does that mean claims 14-16 are ultimately dependant on claim 1? If parts of my invention match claims 14, 15, or 16, which are all dependant on claim 1, which does not completely match my invention, am I safe to pursue a patent without infringing? I understand you don't offer legal advice, but could you advise me whether it would even be worth bringing before costly legal cousel, having things so similar in design?

A dependent claim includes all of the limitations of the claims it depends from, so if claim 16 depends from claim 15, it has all of the limitations of 15 as well as the stuff added in 16 -- and if 15 is dependent on 14, well, you can see where things are going. To infringe 16, you need to infringe ALL of the limitations included in ALL of the claims 16 depends from.

How close is too close to infringing upon an existing patent? I just want to avoid the hassel of being sued before pursuing a patent for my product.

"Too close" is a question that can only be answered by fully understanding your invention, and fully reading the patent in light of the specification and prosecution history, at a minimum. There is no way anyone can give you a meaningful answer to your question without knowing all of these facts.

As far as pursuing a patent, as I noted above, a patent is entirely different from buidling and selling your invention. If your invention is otherwise patentable, you can obtain a patent even if the invention is infringing. Of course, you con't be able to build and sell your invention , even if the patent does issue, without infringing (unless you get permission) -- but you can still obtain the patent.

Remember, a patent gives you the power to "exclude" -- in other words, the power a patent grants is to keep someone else from practicing your invention without your permission. A patent does NOT give you the right to practice your invention yourself -- only the power to keep someone else from practicing it.

What you really need to do is hire a patent agent or patent attorney (agent will likely be cheaper) to give you what is essentially a "noninfringement opinion." You could try and educate yourself, but honestly, nobody is going to be able to give you any meaningful or accurate advice without a full knowledge of your invention, the patent in question, and the patent's prosecution history.

 

[toddzwife]

Prosecution History

Thanks so much for replying. Your information was extremely helpful. I was aware that many patents are issued that infringe on other patents. I'm hoping to avoid all of the possibilities of infringement before going down the patenting road.

Is the Prosecution History available to me, like the patent info is, or is this something only a patent attorney or agent can get ahold of?

Thanks again for you help.

 

[divgradcurl]

Thanks so much for replying. Your information was extremely helpful. I was aware that many patents are issued that infringe on other patents. I'm hoping to avoid all of the possibilities of infringement before going down the patenting road.

Is the Prosecution History available to me, like the patent info is, or is this something only a patent attorney or agent can get ahold of?

Thanks again for you help.

The prosecution history of an issued patent is a public record, so anyone can get a hold of a prosecution history. For more recently-issued patents (issued in the last few years), much of the prosecution history may be available via the USPTO website -- go to www.uspto.gov, click on "Status & IFW" under "Patents" (IFW stands for "Invention File Wrapper," BTW), enter the patent number or appication number, and then click on "Transaction History." If any documents from the prosecution history are available for download (PDF), there will be hyperlinks. If no hyperlinks show up, then the prosecution history is not available for download.

Even if the prosecution history is not available for download, it is still a public record -- you'll just have to pay some one to make a copy of the actual file wrapper in DC. If you live in the DC area and have free time, you can go to the USPTO itself and make your own copy for a minimum cost. However, it's probably easier to order a "certified" copy fo the history directly from the USPTO (there will be a link on the page where the transaction history is found), or go through a service like Metropatent, http://www.metropatent.com/. There are probably other services available as well, just use Google to see what's available. My firm uses Metropatent mainly, but, to be honest, I don't know what they cost. They are fast and accurate, I know that.

If you do work with an attorney or agent -- and you probably should, this type of analysis is complex -- they can order the prosecution history for you. But if you want to give it a go alone, hopefully that's enough info for you to get a copy of the relevant prosecution histories.

One more thing -- typically you can order a prosecution history with or without references -- it's a lot cheaper to order without references, and you probably won't need the references anyway, and if you do, they are usually available from other sources (most of the references are usually other U.S. patents anyway, so you can get them for free from the USPTO if you need them).