Adding on to a patented item can be infringement in some cases
The best route for a patent holder is to keep adding your own improvement patents.
BY DON DEBELAK
The area of improvement patents, either product or method, is one of the most misunderstood categories of patents.
With an improvement patent, you add improvements to a previously patented invention. If you are not the owner of the previous patent, you might be able to get a patent but not be able to sell the product related to the patent because you would be infringing on the original patent.
It is important for patent holders to understand this area of patent law.
Know what rights you have
People get a patent by having something that is conceptually different from what has already been done (or described in a published document), and not obvious in light of what has already been done or published. However, getting a patent does not give you the right to make something; it gives you the right to try to stop somebody else from making something.
Infringing on a patent means making, selling, or importing something that falls under the definition of a patent as expressed in its claims.
If an invention does not need an element that is set out in
another patent’s independent claim, there is probably not infringement. If you “add on” an element to something that is patented, presumably your product has all of the elements of the patented item and therefore infringes on the original patent, even though you have patented the improvements.
Sometimes, an improved product can only be sold with a license from the patent owner of the original item.
How to stay safe
Pharmaceutical companies get a lot of criticism for their add-on patents because they keep extending the life of their patents. But that is the only way a patent holder can prevent someone else from patenting an improvement to the original product.
The best route for a patent holder is to keep adding your own improvement patents. Thinking that your original patent provides all the protection you need is dangerous.
What does this mean for an inventor who has a product improvement idea for an existing, patented idea?
First, see if you can eliminate an item in the independent claims of the existing patent. That might allow you to get a patent and sell your product or process without infringing.
If you can’t eliminate something, you can patent your idea and hope the original patent holder will license or buy your patent.
Another case is where the patent holder’s expiration date is approaching. Then you can patent your concept—and when the original patent holder’s patent expires, you can introduce your product without
worrying about infringing.
Stay vigilant, aggressive
The United States’ first-to-file patent orientation is a factor that plays into both patent holders and individuals with a product improvement idea. The first person to file has the right to patent an improvement.
That means patent holders with a successful or promising product or method need to have an aggressive posture on patenting product or method improvements. They also have to disregard the one-year grace period to file for a patent, because the grace period is not safe with a successful product.
Patent holders can’t afford to introduce or disclose product improvements in any way without first patenting the concept.