Patenting something when a similar concept is already patented

[kindafishy]

Okay, so here is the scenario:

A new inventor has an idea for making a device that makes it very easy to connect a laptop to a car. You can already connect a laptop to a car, so the focus here is on the device as a new way to do it.

The inventor figures out the full set of technologies that he wants to use to create the device.

Before creating the prototype, the inventor does a US patent search and finds that within the last two years, someone has patented 'a device that allows a person to connect a laptop to a car'. There are obvious similarities, but this includes things like 'the laptop handles the input for the device' and 'the device passes input from the laptop to the car'. The hardware to handle the interaction is different and the software controlling everything is different, so one could argue that the underlying technologies used to create the devices are different, although both can be defined as 'a device that allows a person to connect a laptop to a car'.

To a consumer using one of these things, it would look and behave pretty much the same.


So, there are a couple questions that fall out of this:

1) Are the devices different because the technology is different, or are they the same because the concept is the same?

2) Assuming the devices are deemed to be different and a patent is granted to the inventor, would the holder of the original patent have any grounds to sue the inventor, especially in light of the fact that a reviewer, who was aware of the original patent granted the new patent?

Note that getting sued or otherwise blocked by the original patent holder is actually a very likely scenario since this patent holder's company doesn't actually build anything, but holds several patents and has a history of suing others who actually try to take a product to market.What is the name of your state?

 

[divgradcurl]

1) Are the devices different because the technology is different, or are they the same because the concept is the same?

There is no way anyone can answer this question without reading the patent(s) in question, and fully understanding the new invention.

2) Assuming the devices are deemed to be different and a patent is granted to the inventor, would the holder of the original patent have any grounds to sue the inventor, especially in light of the fact that a reviewer, who was aware of the original patent granted the new patent?

Potentially. It is not uncommon at all for a patent to be granted on a new invention, but in order for that new invention to be "practiced" (made, built, operated, etc.), it relies on or infringes on other patented inventions. In legal terms, a patent is a property right, it is a license to exclude, not a license to practice a patent. Consider a piece of property -- if you buy a piece of property, you can fence it and "exclude" trespassers, but you can't build a hotel or anything on it until you get permission from the state or country.

A patent is similar -- if you obtain a patent, you can keep others from practicing your patent, by filing an infringement lawsuit. However, you cannot practice your patent legally without obtaining licenses from any other patents that practicing your invention might infringe upon. A patent gives the holder the right to keep others from making, using, or selling the patented invention, that's it.

Note that getting sued or otherwise blocked by the original patent holder is actually a very likely scenario since this patent holder's company doesn't actually build anything, but holds several patents and has a history of suing others who actually try to take a product to market.

That does seem to be a popular business model these days, unfortunately.

 

[kindafishy]

Thanks for the reply!

There is no way anyone can answer this question without reading the patent(s) in question, and fully understanding the new invention.

The question is really a general one. For any invention, is it the concept, or the implementation that is important? If party A and party B both create 'a wristwatch that can show family pictures' (hey, that's a good idea), but both use totally different technology, is it the same device because the concept is the same, or is it a different device because the mechanics behind it are different?

Potentially. It is not uncommon at all for a patent to be granted on a new invention, but in order for that new invention to be "practiced" (made, built, operated, etc.), it relies on or infringes on other patented inventions. In legal terms, a patent is a property right, it is a license to exclude, not a license to practice a patent. Consider a piece of property -- if you buy a piece of property, you can fence it and "exclude" trespassers, but you can't build a hotel or anything on it until you get permission from the state or country.

A patent is similar -- if you obtain a patent, you can keep others from practicing your patent, by filing an infringement lawsuit. However, you cannot practice your patent legally without obtaining licenses from any other patents that practicing your invention might infringe upon. A patent gives the holder the right to keep others from making, using, or selling the patented invention, that's it.

Okay. So, will the patent reviewer inform you as to which other patents you must obtain license from before you build a product, or do these patent holders just end up finding you at some point in the future?

That does seem to be a popular business model these days, unfortunately.

It is so unfortunate. I have something that I want to take a chance on and bring to the market. I think it is awesome, inventive, fun and will be a great thing for people to have. I am passionate about it because of what it is, not because I think it will make me money, but in the end, I might not go forward because I am afraid of getting sued and losing it all. It is sad, really. Not afraid of taking a risk and going for a dream, afraid of litigation.

 

[divgradcurl]

The question is really a general one. For any invention, is it the concept, or the implementation that is important? If party A and party B both create 'a wristwatch that can show family pictures' (hey, that's a good idea), but both use totally different technology, is it the same device because the concept is the same, or is it a different device because the mechanics behind it are different?

It will depend entirely on the way the claims of the patent are written. If the claims are written to cover the concept, then it is the concept that is covered; if the claims are written to cover the apparatus, then the apparatus is covered. This is not me trying to be sarcastic -- the fact is, without knowing the scope of the claims, you can't really tell what exactly the patent covers. Further, it is possible that the scope of the patent can reach beyond the plain language of the specification in some cases.

That said, the specification (written description) of the patent is important as well. The specification may disclose an invention far broader than the claims. In this case, the patent only covers what is claimed, but the broad disclosure may prevent someone else from obtaining a patent on an invention disclosed (but not claimed) in the earlier patent.

I hope that make sense. The point is, there really is no generic answer to this question.

Okay. So, will the patent reviewer inform you as to which other patents you must obtain license from before you build a product, or do these patent holders just end up finding you at some point in the future?

By "patent reviewer" I assume you mean the patent examiners at the USPTO. In that case, no, the USPTO will only determine if you are entitled to a patent, and will not determine or investigate for you the broader question of what is necessary for you to do to practice your inventions.

If you are working with a patent agent or patent attorney (adviseable), then that person can help you to determine what licenses, if any, will be necessary for you to legally practice your invention.

And yes, if you start practicing an invention that infringes on another's patent, they may very well find you.

It is so unfortunate. I have something that I want to take a chance on and bring to the market. I think it is awesome, inventive, fun and will be a great thing for people to have. I am passionate about it because of what it is, not because I think it will make me money, but in the end, I might not go forward because I am afraid of getting sued and losing it all. It is sad, really. Not afraid of taking a risk and going for a dream, afraid of litigation.

I don't know why it is sad -- it's just the way the system works. That said, maybe you should consider working with a patent attorney to see what types of things you can do without raising the question of infringement, or at least help you negotiate licenses if necessary.

 

[kindafishy]

Thank you very much for your thoughts and advice. I will consider it all carefully.

I don't know why it is sad -- it's just the way the system works.

I guess that I am using the word 'sad' to describe my feeling that it restricts innovation in some cases.

The statement is particular to the scenario that I am describing. A system that allows a person to 'reserve' an idea for the purposes of suing someone who later has a similar idea and has the drive and desire to invest blood, sweat and tears in bringing it to the market seems flawed.

I just don't like the idea of patent squatters, and it would be nice if there was some limitation that stopped people from doing this. None of this would bother me if the person who holds the original patent was actually bringing it to the market - I would have just walked away in that case. I just want to see the device built. I want one!