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Patent Law Application filing questions.

Oakland, CA |


I posted this question before but can't see to read some of the responses.

Anyways. I have a product that I wish to patent. After an attorney conducted the search he said item is patentable.

However this product has been on the market for 5-6 yrs now and others are selling it.

I was told that I can not patent it. But my attorney disagrees and said I can patent it because no one has file a patent on it.

I'm not trying to run others out of business just wanting to stop new-comers.

With everything in consideration I'm not sure what I need to do.

Plus he said that the patent office only searches their own database to make sure there isn't anything similar which there isn't. So he said I can get it. He has 20 yrs exp.

Any suggestions will be greatly appreciate.

Thank you.

Attorney Answers 11

  1. Hi,
    You need to talk to a patent attorney about this product instead of just any attorney. Only someone who is the first inventor to file a patent application can get a patent for this product. To be an inventor, you must have been the one who came up with the idea. Also, one of the requirements to get a patent is that the product must be new or novel. If the product has been on the market for 5-6 years, it can't be patented. Any patent attorney on Avvo can advise you on all of these matters.

  2. Unless you have some improvement that is not already known or on sale, your attorney is wrong. The limit for any grace period is a maximum of 12 months from a first publication or sale.

    This comment is NOT LEGAL ADVICE. The question asker and any third-party reading this comment SHOULD NOT RELY UPON this comment. Regardless of the information provided in this comment, any reader of this comment should CONSULT AN ATTORNEY to confirm the accuracy of this comment.

  3. The only way you could get a patent in this situation would be if you and your lawyer violate your duty of disclosure to the patent office. You have a duty to disclose all known material information which the examiner may want to consider in evaluating whether you should get a patent. You and this patent lawyer know that the product has been on sale for five to six years, which means that you guys know that your patent is not novel. The fact that a prior art search might not reveal this products does not excuse you from disclosing them. Indeed, the patent lawyer who gave you this advice, in my view, is engaging in unethical and illegal behavior.

  4. If this product has been on the market for several years, it can't be patented, although perhaps you can patent non-obvious improvements. Doesn't matter if the product is covered by a patent or not. And, if you don't disclose the product to the Patent Office, you will have committed fraud, and your patent will be worthless.

    Disclaimer: This answer does not constitute legal advice and does not create an attorney-client relationship.

  5. Your attorney is right - but only partially. When you file a patent application you have a duty to disclose prior art to the patent office. That includes prior sales of the invention.

    Therefore, if you comply with your duty of disclosure, the patent office will know of the prior products and use them to reject your application.


    The answer provided is only for general information purposes and does not constitute legal advice.

  6. I agree with my colleagues. I would add that you need to get yourself a new patent attorney. The advice you have received is dead wrong - if what you want to patent has been on sale for as long as you say, you cannot get a patent. In addition, the Patent Office does NOT only search its own patents. Patent examiners search them, but also search foreign patents, published literature and conduct web searches.

    I commend you for following up because, unless you completely misunderstood a correct explanation (which seems doubtful), no reputable patent attorney would have given you the advice you recounted here.

    This information is intended to be general and educational in nature. It is not intended to be specific legal advice or establish an attorney-client relationship. I require a signed retainer agreement from a potential client to establish an attorney-client relationship and before I will provide specific legal representation.

  7. Is "an Attorney"= Patent Attorney? I seriously doubt it, as a 102 rejection is the abc of patent law.
    You need to talk with a USPTO Registered Patent Attorney, which are highly specialize in this matters and will save you money, time, and put your hopes into a realistic goals.

    USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in create an attorney-client relationship with you. You may accept or disregard my free advice in at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.

  8. Assume that the Product-In-The-Marketplace contains elements A, B, C, and D. It's been on sale for a long time. You come along and ADD to the Product-In-The-Marketplace some new elements that aren't simply obvious additions to the product -- in fact, in the consumer's mind, those new elements are improvements on the product. So Your-Improved-Product contains elements A, B, C, D, E and F. That product may be patentable. And, if it is, that patent would preclude everyone else from making, using, selling and importing Your-Improved-Product. Everyone, however, may still sell the Product-In-The-Marketplace -- just not your improved version.

    The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

  9. This question shows the confusion that novices have when they rely on "I was told" to question what their patent attorney tells them and the confusion novices have about improvement inventions and dominant and subservient patents, and the problem that overuse of pronouns like "it" and "he" and "someone".

    What I decipher your question to say is that some non-attorney told you that you can't patent an improvement to something that has been out for 5-6 years. That is utter BS and wrong. Almost every patent is an improvement to something that has been out. The wagon is an improvement on the wheel, the buggy was an improvement on the wagon, the car was an improvement on the buggy, the hybrid car is an improvement on the car, the all-electric car is an improvement on the hybrid (although the first cars were often crude electric cars). You get the idea.

    So, I think your patent attorney is likely right that you can get a patent on your improvement. That patent may be quite limited, even to the point of being worthless, but he can get it if you are willing to pay him to do so. My concern is that a patent may not be what you need. You may need just to get to market first with the product and establish a brand name and perhaps file a provisional patent application so you can put "patent pending" on your labels and keep would be copyists wondering if they can really safely copy and forcing them to pick a lesser known name to compete with your better known name. With the new "Forced to File" (First to File or First to Futility) system big software lobbyists pushed through the best Congress money can buy, it is not clear that patents are a good investment, and note that I am a registered patent attorney saying that. You might want a second opinion if a patent attorney is pushing you to file a patent. I imagine your patent attorney is not "pushing" you but rather just telling you he can get one if you want to pay him to do so, and in that he is likely right.

    Here is a suggestion you will appreciate if you follow it: Go to your library and check out and read Stephen Key's book "One Simple Idea." You need to know what a successful inventor who has licensed a number of inventions sufficient to do it full-time says about how he got there, and it was not so much through patents as it was through paying attention and moving faster than his competition.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

  10. Short Answer: You can't file a patent on something that is already in public use. Your attorney may have found aspects of your idea that are different than what is on the market. If that is the case, then those aspects may be patentable. Good Luck.

  11. Good Morning. If the same product, without material differences, has been on the market for 5-6 years, you, most likely, cannot patent it under current patent law. An inventor is barred from patenting an invention that has been known within one (1) year of the date of the patent application. This statement does not constitute legal advice and does not form the basis for an attorney-client relationship and it is being given based on a very limited set of facts provided.

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