I would like to patent a new device that solves a new problem, which uses some components which are already patented. Can I file that patent?

In the case I licence it, do I need to arrive to an agreement with the owners of the patents of the components?

The question applies for Europe and USA.



Can I file that patent?

Query answer is subjective in nature, You have to check if combination of known elements yields more than just predictable results. In other words if your solution to new problem was achieveable by prior art.

As per MPEP:2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness

Exemplary rationales that may support a conclusion of obviousness include:

(A) Combining prior art elements according to known methods to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

For more information you can visit MPEP

Do I need to arrive to an agreement with the owners?

Again this question is subjective in nature, If product patent claims all components and there is no way to design around it you require a license to use it. In case you can exclude any component then you need not require a license for said claim. However there are many other ways to protect product e.g. method of making, using, arrangements, design patents etc.

  • Wow Pushpak you have answered a lot of my quedtions this week. How about the licencing bit? And in the case of Europe? – Escachator Feb 17 '15 at 13:29
  • I also appreciate your answers. Do you know what is the case for Europe? – Escachator Feb 17 '15 at 23:02

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