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All Questions in Patent Process >> re-patenting an expired patent

re-patenting an expired patent

Posted by Anonymous . updated on 2/26/2009
A friend of mine has several patents he worked on years ago.  
They have expired.  Technology today is much more sophisticated than 30 and 40 years ago.  One invention is an electrically powered tool (with a power cord).  It has never come to market, although several companies were interested.  How much revision must be done to the original concept to repatent the invention?  For example, if it was redesigned to be a cordless tool would that be sufficient to re-patent it?  Or if the housing was changed from its' current
heavy metal to today's impact reisistant plastic? Or if the cutting blade was changed to diamond/carbide type of blade?
Answers (10)
 
JimIvey
Both of those improvements are unlikely to be sufficient.  The improvement has to be non-obvious.  

In terms of using a battery to make it cordless, cordless power tools have been around for a long time.  I suspect there is literature out there touting the benefits of cordless power tools.  The literature would likely serve as motivation for one of ordinary skill in the art to adapt a corded tool with a known rechargeable battery.

Similar logic applies to replacement of a steel housing with a plastic one.

Now, don't take this as gospel.  It's possible that there are good reasons why these particular adaptations are non-obvious.  But you should expect rejections along these lines and be prepared with a good argument to overcome the rejection.

The most common formulation of an obviousness rejection is that all parts are known in the prior art and there is some suggestion in the public knowledge that the parts could be combined in the way you did.  

The best way around that type of rejection is to have a claim element which is in none of the prior art references or to combine elements in a way which is not suggested in the prior art.  Showing that the combination is counter-intuitive in conventional thinking is helpful.

I hope that helps.
 
 
westdene
IMHO you cannot pretend to have a granted patent about some technology already disclosed several years ago, just because you have made minimun changes like the material of the casing or the use of newly developed drilling tools. Neither you would get a granted patent for the mere fact of combining old technology with new technology, unless the result is unexpected or non obviuos by any skilled in the art.  I believe that making a wired device into a wireless device is an obvious result by any skilled in the art. So unless you make some techincal changes, like for example change the internal machine in a way that no ordinary skilled in the art can do, I wouldnt be filing a patent. Now, you are not banned from filing a patent about obvious technology if you need an application just to comply with some economical contract, but I wouldnt suggest that either, because the other part would analize the application before even paying you a dime.
 
 
M. Arth...
What you are describing sounds like the patents that Inven Tech and unscrupulous(sp?) patent lawyers get.
 
 
westdene
Quote
Dear Westdene,

What you are describing sounds like the patents that Inven Tech and unscrupulous(sp?) patent lawyers get.


You've said it not me Wink
 
 
M. Arth...
You can see my prior answers to your posts. It is my belief that it is easy to get a patent, it is not easy to have a patent earn.

What is more and I have posted this before, One of the very best patents I have ever gotten, and for a personal freind, was rejected by a Large Company, who afterward got a $50,000,000 industrial prize for someting not as good and not infringing that particular patent.
 
 
westdene
br>                    Im not a patent expert, but Im in my way to becoming one (several years from now). If a company rejected a patent and they got some profit out of something that is similar and is not infringing in any way, I see the merit on this company to use the original patent (your friend's) as a starting point in getting something (of lower or higher quality depends on the point of view) that make them earn money with out even have to pay a dime to no one.

On the other hand, maybe you could have previewed any modification by filing a broaden claim, where maybe this modification the company made could  be included in your friend's patent.

I don't believe in filing everything that looks like an invention before the eyes of the client. I believe in suggesting a prior art search, so the client can have an idea of where his "invention" is standing. Most of the clients, if not all, believes that if something is not in the market surely wasnt invented. Wink
 
 
M. Arth...
There are many dislcosures  that on their face are not even worthy of even a patent search.
 
 
Olive C...
Quote
IMHO you cannot pretend to have a granted patent about some technology already disclosed several years ago, just because you have made minimun changes like the material of the casing or the use of newly developed drilling tools. Neither you would get a granted patent for the mere fact of combining old technology with new technology, unless the result is unexpected or non obviuos by any skilled in the art. ?I believe that making a wired device into a wireless device is an obvious result by any skilled in the art. So unless you make some techincal changes, like for example change the internal machine in a way that no ordinary skilled in the art can do, I wouldnt be filing a patent. Now, you are not banned from filing a patent about obvious technology if you need an application just to comply with some economical contract, but I wouldnt suggest that either, because the other part would analize the application before even paying you a dime.

 
 
Stu
I have a similar problem. I have a major improvement in a device that was patented in 1981 in the USA. It involves a solar energy system. The original concept is actually being used in a few places now, but the efficiency is very low. I've got a design that raises the efficiency enormously, although still based on the original design concept. Being that this device has been in production by persons employed in the field, but my improvements have not been incorporated, I believe I can claim that the changes are nonobvious. But that's just my opinion
 
 
JimIvey
Well, if you're right and your improvement is non-obvious, it's patentable.  Whether it's worth patenting is an entirely different question.  

Regards.
 
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