How can you patent a known process that is used in a unique way?

Question

I was reading about a known retail process that was interesting. However, there are industries I feel it could be uniquely applied to and solve multiple problems.

I googled application of other retail processes and patents and found Priceline, which uses a 'reverse auction' system which has been patented to use in their specific areas.

I was going to take the steps of drafting a provisioning patent application then use SCORE to find a lawyer who would look it over for me before submitting.

How does this sound? Is it worth pursuing?

Answer 1

In principle yes.

First, you can't patent a known process in a new area if it's an obvious way to use the known process. For example, you likely couldn't patent a method of providing a supermarket-style self-checkout system in a pet store, because there's no real underlying invention. You're just using the prior art system from a supermarket in a known way, exactly in the way you would expect it to work, just in a slightly different type of shop.

However, if in the process of porting the method into the new field, you have to solve some difficulties, this can support some patentable invention. For example, if you had to adjust the system to allow for puppies without barcodes to be scanned on the self-checkout system in the pet store, this goes beyond an obvious use of the prior art, and becomes potentially a non-obvious invention in its own right.

As to drafting the provisional yourself, I would strongly advise not doing this. If you have an invention you want to protect, then you want to protect it properly, so you need a patent attorney. Doing it yourself will almost certainly result in you not getting a useful patent, because there are far too many snags that can catch you out (and that you may not find out about until years down the track, when it's too late to fix). In this respect, having an attorney review it is more or less a waste of money: they may pick up some things, but it's more likely that they would need to rewrite it anyway. Incidentally, because of this, every firm I've worked for has a policy of refusing to review applications drafted by individuals, since it never ends well (and the income doesn't justify the liability).

Answer 2

I've drafted my own provisionals for years and it didn't pose a problem -- but I'm also a lawyer. Self-drafted provisionals often create problems by accidentally hitting a third rail of patent law, like saying "In one obvious application of this invention...." or "while people have done this using pencil and paper, this invention automates it...."

As for the patentability question, you need to check with your lawyer, as a high level and vague description like you posted may well miss a point of patentability. You should be aware that there are two ways that prior art can be a problem: Obviousness and novelty.

Obviousness asks "knowing what people skilled in the art knew at the time of invention, would it have been obvious to combine other stuff that is well known to create the invention"? If the new use of a known process wouldn't be obvious, you don't have an obviousness problem.

Novelty asks "has this thing existed or been done before"? Normally, something that not novel is also obvious, but there are exceptions -- and this may be one. For example, I can't patent a jet engine that already exists just because I propose we attach it to a boat instead of a jet. Or using a real world example, Amazon's "one click" patent covers keeping somebody logged in and then buying and shipping it based on a single click. If I proposed using the same invention in a car's console to order gas while parked at a gas station, the one click portion would not be novel even though it might not be an obvious use of the one-click invention. Of course, actually implementing it in a gas station might create new twists that are novel and non-obvious, such as where you also determine fuel level and capacity and trigger an automated pump to open the gas cap, extend a fuel line to the car, and fill the car. But the baseline "this already exists, but look, I'm using it in an unexpected way" would normally present a novelty problem (although with processes the new way you use it may be part of the process, so that may get around the novelty issue).