Patent Infringement

[hefele]

What is the name of your state (only U.S. law)? PA


I'm working with a client who has a patent on a medication dispenser. I'm told by some one that he may be infringing on other patents. My question is how can you receive a patent if it is infringing on another patent? Is that possible? What steps need to be taken to know my client is safe to market his invention? Thanks

[justalayman]

well, he was granted a patent so presumably it is not infringing upon another patent.

To assure yourself, you would hire a patent attorney to research this. If you have knowledge of whose patent your client may be infringing upon, that would make it less expensive.

[divgradcurl]

Originally Posted by hefele

What is the name of your state (only U.S. law)? PA


I'm working with a client who has a patent on a medication dispenser. I'm told by some one that he may be infringing on other patents. My question is how can you receive a patent if it is infringing on another patent? Is that possible? What steps need to be taken to know my client is safe to market his invention? Thanks

A patent is not a license to make something, it is a license to exclude others from making something. It is very possible -- even likely -- to have a patent on an invention which, if manufactured or practiced, would infringe another's patent.

To put it in an abstract form, assume that the combination A+B+C is novel, and someone obtains a patent on it. Another inventor finds that A+B+C+Z is novel, and not an obvious improvement over A+B+C, and therefore is entitled to a patent on A+B+C+Z. However -- if the second person wanted to manufacture A+B+C+Z, or practice the method +A+B+C+Z, by definition he has to also be practicing or manufacturing A+B+C as well (in other words, A+B+C is a more general case, A+B+C+Z is more specific).

The second inventor could keep anyone else from making A+B+C+Z, because he has a patent on it -- but, by the same token, he cannot make or practice A+B+C+Z without a license from the patent holder on A+B+C.

To be a little less abstract -- if someone had a patent on a box, and someone later invented a box with wheels and obtained a patent on the box with wheels, the box with wheels may still infringe the original box patent. Of course, the owner of the original box patent would not be able to produce a box with wheels without permission from the second patent holder.

This is a very common issue. A patent on something does not mean that the thing covered by the patent may not infringe another patent. Your best bet is to contact a local patent attorney to review the patents in question and the specific device, and to advise you accrodingly.