1

I would like to get some clarification regarding how method claim works. I’m developing a diagnostic system in the line of invention described in http://www.google.com/patents/WO2014201088A1?cl=en .

That is, I am creating a detection system that would require me to follow four steps in the method described in claim 1. However the diagnostic method described in claim 4 that follows claim 1 is different in my case (i.e. a different physics to detect same particles). My question is will I be infringing claim 1 of the patent if I use the same steps but on step four use different tool? Does claim 1 cover all possible type of diagnostic method including these four steps? Also, what if I add a step in between step 3 and 4 in claim 1 ? Will that be considered as a new method? Or what if I use only 3 of the 4 steps? I’ll appreciate any response/advice on this matter.

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WO2014201088A1 is not a patent. It is a published international application, which can never issue as a patent. It has entered the national stage in the US as Application No. PCT/US2014/41863, and is currently pending.

I think your situation is this. Claim 1 of the prior art reference gives a method of 4 steps. You perform all 4 steps in your method. Claim 4 of the prior art specifies how the fourth step is done; you do it differently in your method.

Assuming your judgment that your steps are identical is correct,

1) Generally yes, you will be infringing claim 1 of the prior art. If their patented method comprises 4 steps, then any other method comprising those 4 steps as recited would infringe claim 1.

2) Yes, every method which includes the 4 steps recited would infringe claim 1.

3) If you add a step between 3 and 4, but still perform steps 1, 2, 3, and 4, then you will be infringing claim 1.

In this case, you may be eligible for a patent if your new step makes a novel, non-obvious method; however, if you do get a patent, the prior art (assuming the application issues as a patent) would block you from using your method without a license. (If the prior art inventors wanted to practice your method, they would also have to obtain a license from you in this case.)

4) Yes, if your method adds a fifth step to claim 1 which is not disclosed in any prior art reference, then your method would be considered new.

5) If you use only 3 of the 4 steps recited in claim 1, then your method would not infringe the prior art reference. In this case, a patent issuing from the prior art reference would not block your patent or require you to take a license, since your invention is outside the scope of their broadest claim.

You can't not infringe a patent by taking the invention and adding something else to it. If you improve it, you may be eligible for a patent yourself and will be able to block others from using your improvement, but you're still practicing the original invention - just in an improved form.

Think of patent rights like property rights, where you have a right to keep others from trespassing, but not necessarily a right to walk on your property. If you own a piece of land (a patent for your new and non-obvious invention), someone else who owned a ring of land surrounding yours could block you from access to your land - it's yours, but all paths to it lead through private property. You cannot access your property without their permission (getting a license) to pass through their property. Similarly, if they decide they want to cut across your land (use your improvement to their invention), you can block them or force them to take a license.

Good luck!

-Aldo

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