Legal Question in Intellectual Property in Florida

Re: Invention using patented components

Yes and Yes.

Think about it. Every invention is a combination of known parts. Edison's original phonograph had a cylinder, pens, diaphragms, wires, etc.

The Supreme Court has used the words "everything under the sun" to describe the things you can patent. New uses for known items are new methods. Method claims are found in a large percentage of patents.

While you can patent improvements to or new uses of a patented product, your improvement or new use may be "dominated" by the patent and may even infringe the patent. You can patent an infringing product if it meets the statutory requirements of utility, novelty, and nonobviousness.

Time for me to dust off my cartwheel story to explain. John invents and patents the wheel. Mary invents and patents the use of the wheel on a sled and calls it a cart. Who can make a wheeled cart? Answer: No one unless they have permission from the patentees John and Mary. John's patent dominates Mary's and prevents her from using a wheel at all, but Mary's prevents John from using his wheel on a cart.

Now change the facts: John invents but snoozes and DOESN'T patent the wheel. Mary invents and patents the use of the wheel on a chart. Now who can make a wheeled cart? Answer: Not John, but Mary alone does cartwheels because she was smart enough to get a patent. Moral: You snooze, you lose. Get a patent.

Re: Invention using patented components

Endorsing Bruce Burdick's reply, with some minor additional notes:

1. The patent application process is expensive, and the manner in which claims are stated is extremely important. While quoted legal fees do not always indicate the quality of services, be very wary of cut-price outfits. Also, be aware that some outfits run what essentially is a bait-and-switch by filing futile applications for utility patents, and then, upon rejection, urging the hapless inventor to convert to a design patent (which is worthless in terms of protecting the functionality of your device).

2. Corollary to (1) -- unless you are independently wealthy and have no concern about a return on your investment, be sure that there is some commercial exploitation on the horizon that would justify the expense of the patent application.

3. Related to (2), beware that a one-year clock starts running from the first sale of the fully-developed product. You cannot wait longer to file, and sometimes it is hard to decide whether to proceed with a patent application based upon initial sales results.

Best wishes,

LDWG