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Intellectual Property Issues of Interest to High Tech Companies
Vol 4 Issue 7 August 2004

in this issue

An ugly duckling or The Ugly Duckling?

If it walks like a duck...

Tip of the Month

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 IP Links of Interest
Welcome

What happens when you discover a new use for an existing technology? Many times I have heard an inventor say "If I don't patent [this application of an existing technology] then Big Inc. will start labeling their product for this new use and I'll never be able to penetrate the market!" Unfortunately for these inventors, patents cover (generally speaking) things and processes but NOT the purpose (application) for which the thing or process was created. Read how prior use for a different purpose may affect your patent in "If it walks like a duck..."


  • An ugly duckling or The Ugly Duckling?
  • Your newly hatched invention may grow up to be a beautiful swan, worth millions in the marketplace, but maybe it is just a funny looking duckling. How can you tell?

    Acting as your Director of Intellectual Property, TechRoadmap works with your patent attorney to separate the inventions from the also-rans. Visit our web site to review our services to see what works for you.

    Review our services
  • If it walks like a duck...
  • When you've just figured out how to do something, and you're pretty sure you're the first to do it, your instinct may tell you to file for a patent. Sometimes, however, you may find that the equipment you are using is very similar to what's already "out there", but that existent equipment was used for a totally different purpose. Basically, you've come up with a new application for existing technology. Can you get a patent to keep the market for your application from being swallowed up by the existing equipment manufacturers?

    As lawyers like to say, "It depends", but a good rule of thumb is if you can use existing technology (with only minor parameter tweaks) to execute your application then you probably can't (or at least shouldn't be able to) get a patent. Unfortunately, as the lawyerly response suggests, none of this is clear cut.

    In a recent infringement suit Toro was trying to assert its patent for an apparatus for loosening up subsurface soil by shooting high pressure jets of water through the turf at regular intervals against Deere & Company.

    Deere defended itself by claiming the patent was invalid because it was anticipated by an earlier patent for a liquid fertilizer injector. Deere did not argue that the prior patent expressly disclosed all of Toro's limitations; instead Deere contended that the patent explicitly disclosed most of the Toro invention and inherently disclosed the remaining limitation. That is, Deere contended that if you build a fertilizer injection system following the teachings of the earlier patent, it would inherently have all the limitations of the Toro patent. And this inherent anticipation applies even if the earlier inventor did not recognize what was going on. (Indeed, in this case the earlier patent touted not disturbing the soil as a benefit of the fertilizer injector.)

    Simply put, the Court of Appeals said, the fact that a characteristic is a necessary feature or result of a prior-art embodiment is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention. ("[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer.").

    The case is still being determined, but the lesson is clear; if your invention walks like a duck and quacks like a duck you probably can't patent it, even if you think it's a swan.

  • Tip of the Month
  • Avoid the trap of thinking a new application of an old technology is patentable:

    • Carefully evaluate the patentablility of your invention - Before investing too many resources in pursuing or defending a patent have an open discussion with your patent advisors to see if what you have is a new invention or a new use of an old invention.
    • Get a fresh perspective on your invention - you may be so focused on solving your problem that you are blind to other fields of use. If there's prior art, well maybe there's no patents, but if there's no prior art in these other fields you have a more valuable patent.
    • Do a prior art search - Check out what's gone before, and don't limit yourself to key words in your own field.

  • Disclaimer
  • Nothing in this newsletter should be construed as legal advice. TechRoadmap serves as an interface between companies and their legal counsel.

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