obvious use of existing technology?

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What is the name of your state? NY

I have found an patent for a service my company is considering offering. We are certain we infringe the claims made by the patentee but have serious doubts about the validity of the patent.

Essentiall all the patent is claiming is the use of an existing technology for a specific novel purpose. I.e. they are claiming a patent on a advertising system that would allow a person to send a SMS text message containing a code relative to a specific product (such as a car plate number) and then instantly receiving back a message to their phone with some more details about the cars specs.

My questions
1. can this sort of thing be patented?
2. Isnt it just an obvious way of using an existing technology?
3. How do you measure obviousness?

Surely you cant protect the way somone uses an already well established technology?

Thanks for your help

 

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1. can this sort of thing be patented?

If they have a patent, then the answer is almost certainly yes. Invalidity arguments made based on 35 U.S.C. section 101 (patentable subject matter) invariably fail.

2. Isnt it just an obvious way of using an existing technology?

Again, if they have a patent, then either the USPTO felt that it was nonobvious, or the patent holder managed to overcome any obviousness arguments.

3. How do you measure obviousness?

Obviousness is defined in 35 U.S.C. section 103: http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_103.htm#usc35s103

A couple of things to remember -- obviousness is measured at the time of invention, not at the time the patent was issued. It is quite common for the state of the art to change such that by the time a patent is issued, the patent is indeed "obvious," but that at the time the patent was invented or filed, the invention was nonobvious. Basically, the invention had to have been "obvious" to one with ordinary skill in the art at the time of the invention -- some of the ways that nonobviousness is shown is by showing that other patents or art "teach away" from the invention, that the invention "met a long-felt need" or was otherwise commercially successful, etc.

Surely you cant protect the way somone uses an already well established technology?

Sometimes. It is generally possible to patent something otherwise unpatentable in certain cases. For example, a collection of items, like a first-aid kit, is not patentable subject matter. But if the collection of items was novel, and the collection displayed unexpected properties, such as a first aid kit that was also capable of curing cancer, then it is possible to patent such a collection for the limited purpose of protecting the unexpected properties.

If the other guy has a patent, and you believe that it is possible that you may be infringing, then you will want to take steps to protect youself -- one was is to obtain an opinion of counsel on noninfringement -- basically if you take everything down to a lawyer, and he looks at it and believes that you are probably not infringing, then you are at least protected from being slapped with damages for willful infringement.