Legal Question in Business Law in Connecticut

Re: improvement pattents

Good question. Strictly speaking, no, the improvement patent does not give you the right to market the improved product without infringing on the rights of the patent holder for the original product. That said, there are several ways around this:

1. If there is no patent or the patent has expired on the basic product, you are in the clear. Check the patent info on the basic product to find this out.

2. You can negotiate a license with the holder of the basic patent, allowing you to use the basic product without infringing on his/her patent rights. You would pay a fee in return for being able to make and sell his/her product, and then you could market the product with your improvement.

3. Thirdly, the owner of the basic patent might want to get a license to make your product as well. In such a case, you could negotiate an exchange of licenses - you are allowed to sell the basic product and the basic patent holder can sell your product. In this case, you will want to make sure that you and the basic patent holder are not competing in such a way that would put you out of business. Consider the strength of the existing patent holder's business, his/her location, etc., in determining whether you would be shooting yourself in the foot by essentially giving your largest competitor a license to sell your products. Best case scenario here would be that the holder of the basic patent is located in a non-competing geography, is not an established company, or will not be able to market the product with as much success as yourself.

4. Lastly, if the basic patent owner is a strong competitor, you might consider simply licensing your improvement patent to him/her and forego the production of the item until his/her basic patent has expired.

You should talk to the patent attorney who helped you get the improvement patent about how to draw up the license agreement.

Good luck!

Diana