I was looking to patent an invention I feel to have novelty, but I came across this one pre-existing US patent while doing some research.

It was filed over 20 years ago and has since "lapsed". However, it was extremely broad with everything it claimed. Also, I've never seen or heard of a product on the market utilizing the idea.

Any way to get around this unfairly broad patent? Is there a chance I could file a patent for my idea, but be way more specific?

This is a utility patent by the way. It's nothing super complex or technology related. And sorry, I don't feel comfortable posting the publication #.

  • 1
    Without more information (about your invention and the previous one), this probably won't be answerable. I'm leaving it open in case someone wants to explain the standards of prior art and such, but realistically it sounds like you're at the point where talking to a patent professional might be your best option. Feb 23, 2015 at 4:20
  • It's worth noting that a patent, even an expired one, probably constitutes prior art. Thus, anything claimed in the expired patent could not be claimed as novel in your patent.
    – Dancrumb
    Feb 23, 2015 at 18:25

1 Answer 1


Short answer is no. Long answer is possible based on novelty and inventive step. It sounds like you need to spend $500-$3k and ask a patent agent or attorney to review your technology and your prior art search.

If you don't want to shell out the cash, here's what you can do yourself for free:

Information gathering phase:

  • Read the specification carefully. List out each embodiment with all elements, and all combinations.
  • Go on USPTO PAIR and review the prosecution history (click on Image File Wrapper). You need to read the rejections and understand why the technology was rejected.
  • Do another prior art search. It sounds highly unlikely that 20 years have gone by and there is no literature whatsoever on your topic. News articles, academic journals, books, etc...something exists.
  • list out the elements of your invention in its preferred embodiment. What are the key features to make your invention enabling?

Analysis phase:

Take each of your key features/elements and try to map a product, product feature, patent element, or prosecution history argument to your elements.


If you found that in the analysis phase, every feature of your preferred embodiment was "anticipated", aka someone else thought of it, then you can't patent it. If you found out through the file history review + prior art search that perhaps elements A+B+C were unpatentable because they were too broad, and that your idea includes element D, then you can patent it as A+B+C+D.

There's really not short answer to this question. Your question is too broad to answer in detail, so you'll have to do the legwork yourself and come to a reasonable conclusion if its worth your time to even pursue such a patent.

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