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After several searches across several days, i finally stumbled upon one patent, in Chinese, that resembles what i have invented. The (google translated, i suppose) claim is very broad, the purpose of the invention is also somewhat different as the invention itself is somewhat different, although, given the broad claim, it might actually cover a lot. The patent is also expired.

What i wonder is: how to get an authoritative opinion that could be worth something, like if my patent, should it be accepted, could be enforced in court provided this related prior art? Would the PTO officer opinion suffice? I read of plenty of granted patents that aren't enforceable, but i do not know if the reason is only very narrow or limiting claims, or simply claims that won't be deemed as valid in court.

Theoretically, if i restrict the claim A from the previous patent to be A + B, should my application and claim be fine? (I happen to know that just A is not useful). In essence i would be teaching a different use for a slight modification of the prior art.

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  • Are you applying for a Chinese patent? Can you link the Chinese document you are concerned with?
    – Eric S
    Commented Feb 19, 2021 at 13:38
  • I was considering to apply for a chinese patent as well, but i suppose i could live without it, if thats not possible but the rest is.. I just don't know how much chinese patents are considered as prior art in rest-of-the-world courts. As for the specific patent, i'd be happy to share it in private (i was also looking for a draft reviewer btw, should you be willing to share your contact info in your profile..)
    – Pa_
    Commented Feb 19, 2021 at 13:51
  • Many if not most people asking questions here completely misconstrue how broad a patent is. In fact most mistake applications for patents. You are obligated to tell the patent authorities of any prior art you are aware of so linking to the document you found should have no negative impact to you.
    – Eric S
    Commented Feb 19, 2021 at 15:07
  • You refer to the Chinese document you found as an application and then say it expired. Both of these statements can not be true.
    – Eric S
    Commented Feb 19, 2021 at 15:08
  • Sorry, i meant a chinese expired patent, not simply application. As for the linking, how would simply link that patent help here without knowing the scope of my invention?
    – Pa_
    Commented Feb 19, 2021 at 15:16

2 Answers 2

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You might be confusing infringement with patentability. They really are very different issues. In your car analogy, if someone had a claim on a car with four wheels and an power train and you invented the hybrid car your hybrid car would presumably infringe their patent since it has all the elements.

Importantly, you could get a patent on the hybrid car becasue they did not teach a hybrid car. You couldn't make. sell, etc. your hybrid car without their permission but no one could make a hybrid car without your ok.

A M+F claim is a different way to claim a physical thing than a normal structural claim. They both are ways to claim a thing. If you have a thing that is too close but its use is very different, then M+F is no help. You would consider a method claim. To complete the picture, there is such a thing as a Step+Function claim that is analogous to M+F but for methods. ". . . a step for polishing . . ."

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  • Thank you for the explanation. I wonder, though, what kind of protection would a methods claim offer? provided, of course, that the goal is to prevent competitors from marketing products having the same specific function as mine.
    – Pa_
    Commented Feb 20, 2021 at 8:45
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    The relationship between what you have invented and the Chinese prior art is very unclear. In the extremer case they have a small rake and you have a back scratcher that looks very similar. You could try for a claim that structurally defines your back scratcher. The fingers are more flexible and the handle is longer. It might work. Or you could have a claim that says "scratching your back by holding [describe a little rake loosely] over your shoulder . . . " People could make little rakes but if they packaged and advertised it as a back scratcher they would be inducing infringement.
    – George White ♦
    Commented Feb 20, 2021 at 17:09
  • thanks for clarifying this! btw i contacted your firm for a quotation. I think, at this point, i need more than what i requested so I will contact you again with an updated inquiry..
    – Pa_
    Commented Feb 20, 2021 at 17:29
  • @Pa_ I have retired but have not updated my website to reflect that.
    – George White ♦
    Commented Feb 20, 2021 at 17:30
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    Most applications I have filed had both apparatus and method claims to start with. Sometimes I withdrew one or the other type as part of a restriction requirement response. It is sometimes possible, after a notice of allowance to get the withdrawn claims back in. Otherwise you can file a divisional,
    – George White ♦
    Commented Feb 27, 2021 at 23:23
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Since you decline to share the Chinese prior art with us, some of what I write is speculation. Many, if not most, people posting questions here assume patents cover much more than they actually do. They see long complicated claims and assume they are broad when in actuality they are narrow. The first and most basic question is whether an expired Chinese patent (or even a published application) is considered prior art. The answer is absolutely yes. It doesn't mean that the patent examiner would have found this prior art, but since you found it, you are legally required (at least in the US) to tell the patent office of its existence.

What i wonder is: how to get an authoritative opinion that could be worth something, like if my patent, should it be accepted, could be enforced in court provided this related prior art?

The only way I know of to get an authoritative opinion is to hire a patent attorney. You are asking for a legal opinion and only a licensed attorney can provide that.

I read of plenty of granted patents that aren't enforceable, but i do not know if the reason is only very narrow or limiting claims, or simply claims that won't be deemed as valid in court.

I'm only speculating, but my guess is the main limitation on enforcing a patent is narrow claims. Many people who write their own patents rather than hire an attorney do a poor job of claim construction or else don't do an adequate job of defending those claims with the examiner. There are some bad patents that get granted, but my guess is those are fewer than many think. In any case you state the Chinese patent you found is expired so it isn't a problem for infringement. It is still prior art.

Theoretically, if i restrict the claim A from the previous patent to be A + B, should my application and claim be fine? (I happen to know that just A is not useful). In essence i would be teaching a different use for a slight modification of the prior art.

Maybe or maybe not. It depends on whether A + B is legally obvious. Also, there might be another patent which covers A + B. The best you can hope for will only be protection for A + B. This is where working with an actual patent attorney is most important. If you are asking this question, then you really don't know how to construct claims. Since you don't understand claim construction your specification probably isn't written so support those claims. What all this means is you are probably saving money but not getting what you want which is an effective patent.

I am not a lawyer and this is not legal advice. I do, however, have 90 patents to my name so I've been through this process before.

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