Patentable #2

[det]

What is the name of your state?NC

Let's suppose product A performs a certain function and product b performs a second and different function. If these products are patented, could one patent a single product that performs both functions but is merely a combination of the two products? For example, if someone combined a tongue depresser and lollipop where the new design is the combination of the two, is that considered a new product? That may not be a good example but hopefully you know what I mean. Thanks.

Det

 

[divgradcurl]

Let's suppose product A performs a certain function and product b performs a second and different function. If these products are patented, could one patent a single product that performs both functions but is merely a combination of the two products?

It is possible that such a combination can be patented, and in fact it happens all of the time. However, there are basically two bars to hurdle with respect to patentability, and another bar even if a patent is granted.

The two bars to hurdle to try and get a patent on a combination are "obviousness" and "anticipation." "Obviousness" occurs when a combination is determined to be "obvious" to "one of ordinary skill in the art." So, even if your combination is not patented, and indeed maybe not even done, it can still be found to be an "obvious" improvement or combination, and therefore not entitled to a patent.

"Anticipation" exists when there is some sort of written documentation -- either another patent, or a paper, or even an advertisement -- that suggests or describes the combination or improvement in sufficient detail so that "one of ordinary skill in the art" could have created the combination or improvement themselves after reading the document. If a combination or improvement is "anticipated" it is also not entitled to a patent.

Generally, those are pretty big hurdles to overcome, especially when you are talking about a combination of existing products. As I noted in your other post, you really need to have some "unexpected" outcome in order to get a patent on a combination of existing products. There are some other ways around these barriers as well, but most are too detailed to really go into here.

Finally, even if you do get a patent on your combination or improvement, if the underlying "parts" of your invention are patented themselves, you may not be able to build, manufacture, assemble or sell your own invention -- or "practice" your invention -- without infringing on the underlying patents.

"If you have such an invention, you would be well-advised to sit down with a local patent agent or attorney (agent will be cheaper, generally) who can review your invention and advise you on the patentability of your invention.

 

[det]

Another Example

NC

Thanks again.

Advice from someone else. Back in the 19th century someone who set out to patent a pencil (known item) with an eraser (known item) attached to it lost out on the grounds that his construction was a 'mere agglomeration' -- i.e., both pieces retained their original functions and there was no new function created.

I that a correct assessment in your opinion?

How about if the two items combined were patented but the patents ran out?

Thanks

 

[divgradcurl]

that a correct assessment in your opinion?

Although the language is different, it would appear to use the same logic as my explanation above -- today we would say that the combination was either "obvious" or "anticipated."

How about if the two items combined were patented but the patents ran out?

Whether or not the patents are still in force is irrelevant as to the question of obviousness of anticipation. It doesn't even matter if the underlying objects were ever patented, or even patentable. As long as they were in existance at the time the application was filed, and that the "obviousness" or "anticipation" also existed at the time the patent application was filed, the invention based on the object would be unpatentable.

However, if a patent WERE granted, then having the underlying objects being unpatented or having expired patents would allow the patent owner of the new invention to practice his invention without intereference.

 

[det]

Thanks

NC

Thanks