Legal Question in Intellectual Property in New York

Re: Patent Law - Existing Product, New use ''discovery''

Hello, Ralph,

This sounds like something where the principles of U.S. patent law would come into play. This is a hypothetical discussion based on the generic question you have asked, and not necessarily legal advice as to your specific situation, which might involve details you haven't included.

First question: is the existing product currently subject to a product patent? If so, the company with the patent (provided that the patent is "valid") can properly require that IT be the only source of the product, regardless of use.

Second question: is the new use non-obvious from whatever is currently known publicly? If so, then in general you should be entitled to get a patent having claims that recite the non-obvious new use. If the product has to be specially formulated to be appropriate for that use, it could also be possible to include claims in the patent to the re-formulated product as well.

If you obtain such a patent, it would not give you the right to market your product if the other company holds a valid patent in the jurisdiction (e.g. the USA). But it would give you the right to prevent anyone else, including the other company, from marketing the product with instructions for performing the new use you have discovered. In that event, it would be likely you could arrange a deal with the other company. Perhaps they would market the product with revised formulation/labeling for this use. Alternatively, they might sell you the raw material for your repackaging or licensing to a third party. That would depend on their expertise and market strategy, and whatever deal you might bargain for.

So it would be appropriate for you to consult a lawyer specializing in intellectual property to examine your alternatives.