Asked 11 months ago - Long Island City, NYFlag
I want to file a utility patent. There is an invention similar to mine that contains the same feature as mine, in addition to other features. I want to know if I will be losing money by filing one or if I should just go ahead and file one.
What you ask is not a trivial question.
You really need to consult a patent attorney who can review your invention, help you focus on what your "invention" really is (i.e. it might not be the whole thing, but rather a specific improvement). Then, you both can compare it with that "similar" invention and he can advise you regarding the potential scope of protection you might get (if any) over the other "similar" invention. For example, even if the "similar" device has the same features as yours, you may be providing those features using an approach or components that do so in a different way. Often, inventors consider their "invention" to be the overall product that would be sold, when in reality, it is a particular component or aspect of the overall product that is new and non-obvious over what cam before (the test for patentability). Once you have a sense of the scope of what you really invented, you can make the economic decision of whether it will be worth the cost to seek to protect it.
You will likely be wasting your money if you "just go ahead and file" without conducting some measure of the above analysis.
The answer needs to be based on a factual examination and comparison between your invention and the prior art. If you believe your invention encapsulates the existing patent, then your patent may issue but you may not practice it without a license from the patent owner. If your invention is similar, but does not encapsulate the prior art, then the existing patent may prevent your patent from issuing as it would be prior art.
The only to give you guidance is to refer you to a patent attorney who can take a closer look. Invest one hor and save yourself a headache and lots of money
It is possible to obtain patent rights on an invention that includes pieces or parts that are also protected by patents. But the devil is in the details, and you really need to have a more detailed conversation with your own patent attorney.
However, just because you might get patent rights in such an invention, does not mean that you can make and sell that invention without first getting permission from the patent-holders of the protected piece-parts. This is another conversation you need to have with your patent attorney.
Best of Luck!
I cannot tell based on the limited information in your question whether you should file for a patent. Depending on how your invention compares to the "prior art", you may or may not succeed in getting a patent. And even if you do get a patent, you may not be able to practice your invention without obtaining a license to use patents owned by others. One thing that is clear, however----you will be wasting your money if you file a patent application on your own without retaining patent counsel. I have clients contact me all the time to review patents that they obtained without counsel---and I regret to inform them that the patent is not worth the paper that it was printed on. Getting a patent is a complex endeavor, and you need to invest the resources necessary to get something worthwhile. Otherwise, you are wasting your money.
I think you may be asking two but related questions. Are you infringing and can you get a patent.
Infringement is determined by a comparison of the other's patent claims against your product. If all of the elements in the claims are found in your product, then there could be infringement. Therefore, even though your product may have fewer of more features than the patented product, you still need to make a comparison of claim elements against your product.
Similarly, even though another product may have more or fewer features than your product, such a feature comparison will not determine whether your product is patentable. You will need to determine whether your product is unobvious in view of the other product.
I interpret your question to be:
"I have made an improvement to a patented item. Can I get a patent, and should I try?"
Almost every patent is to an improvement of a patented item. Edison's light bulb was an improvement which took existing light bulb technology and replaced the filament with a longer life carbon filament to give it a commercially useful life. Fulton's steamboat was just an improvement of earlier designs. Bessemer's blast furnace was an improvement. etc., etc.
It may be that someone has an earlier patent blocking the basic concept which your invention improves. In that case you can't practice your invention because it would infringe them, but they can't practice your invention because you have that patented. So, use of the invention requires a deal or litigation to remove the blocking patent, if possible. Sometimes it is not possible, but usually economics result in some deal being struck.
Whether you will be losing money by filing or not depends on the value of your invention. Without knowing that, there is no way for us to reliably tell you. So, the thing you need to do is consult with a patent attorney and find out what, if any, coverage you can get (done by ordering a patentability search) and then evaluating the economic value of that coverage. This is not something you can do on your own, no matter what the invention promoters and discount firms tell you. To get decent patent coverage in a patent, you need your own patent attorney and you need to stay away from InventHelp and its ilk.
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