Expert: Kacey Cahill - 7/5/2009

Question
Hi,

During my patent search i got a bit confused, after seeing some patents' claim containing prior invention as part of it's claims.

For example, some patents say something like "comprises of a rod attached to thin film solar cells", of which i am pretty sure the thin film solar cells' patent exist and has yet not expired.

My invention will contain a camera and an diffractive optical element. Let's say if these two objects are already patented, what should i do (if i decide to file a patent)?? What do people generally do? (For example, patent other parts and license them during commercial use instead??)

Thanks very much for your time and any advice.

Answer
Kanit,

Good question.  A patent that incorporates inventions that already exist and then add to it are improvement patents.  They are valid in that the cover the improvement.  You may even get the rejection in the examination process and then you will distinguish yourself as am improvement (you may need to modify the claim language as well).  Plenty (in fact most) inventions are this.  Think of a bike and then all of the improvements that have been made to a bike.  When the end person wants to practice the art, they will need to get a license from you and from the original (base) patent holder.  

So, just continue what you are doing and file your patent and word the claims indicating your improvement -- that becomes the limiting feature.  That is, a person cannot be violating your claims unless they have that claimed improvement.

I hope this helps, but please keep in mind that this is intended for educational purposes only and not as legal advice.

Kind regards,

Kacey Cahill
kcahill@kaceylaw.com