1

Isn't the basic premise of a utility patent to be unique and at the very least show innovative improvements over prior arts and usefulness in the current arts?

To explain from my point of view and experience.

In specific categories if you have a unique design, that is something for the first time used in say the automotive industry, then I do not have to specifically address cited references because they are only being used as like design examples to validate the design's abilities.

However if I am improving on every prior art that is cited as a reference with a unique design approach to a already existing design problem that was to date not completely solved than I must address why my design is an advancement over every prior related design to validate my complete design's solution.

My first question is a patent stronger, more defendible, if it specifically addresses why it is in an improvement over related prior art?

My second question is it easier to obtain a patent if the application includes references cited by the inventor and the inventor addresses the improvements?

... Before answering please read this patent first that I researched, wrote, and argued and included why my design is an improvement to all design features over every like design in all 22 prior arts cited and understand so far at least one attempt by others to patent a design for this intention was denied a patent grant because they could not show improvement over US7721837B1. https://patents.google.com/patent/US7721837B1/

  • It is really confusing to me why you are asking this question. Apart from the grammar, you have an issued patent. Are you worried about defending it? How does the patent relate to your questions? – Eric Shain Mar 5 '18 at 16:34
  • @EricShain read this users other question and especially the comments under my answer. This seems to be the follow up question. @ op Imho apart from telling people to read your patent, which is kinda unrelated to the general question, it's a good question. – DonQuiKong Mar 5 '18 at 22:12
  • @DonQuiKong Mostly, I found the question very different to actually read. Maca did a good job of answering it. – Eric Shain Mar 5 '18 at 23:32
3

Isn't the basic premise of a utility patent to be unique and at the very least show innovative improvements over prior arts and usefulness in the current arts?

No.

The patent system exists to incentivize the creation and disclosure of inventions that meet the criteria for a patent. Those criteria include novelty, non-obviousness, and utility.

There is no requirement that an invention be an improvement over anything. Being an improvement is one facet of non-obviousness, but alone it's not enough. If my improvement is to use 8mm screws instead of the 6mm screws of the prior art, since that holds the components together more reliably, that's an improvement. But it's also dreadfully obvious (since that's the basic and well-established concept behind screws), and therefore unpatentable.

Simply being a unique (that is, novel), useful improvement is not enough, because you're failing to consider non-obviousness.

However, what you're describing is more-or-less the premise of a utility model system, for countries that have them. That is, improvements per se should be protectable (though at a lesser level of protection than patents).

Is a patent stronger, more defendible, if it specifically addresses why it is in an improvement over related prior art?

No.

If you're at the point of defending your patent (presumably because you're suing someone for infringement), then you will have a well-motivated opponent who will exploit your gaps. If you've said in the description that the different is X, and the opponent then finds another piece of prior art to supplement that difference, you're reasonably prevented from arguing that actually Y is the difference. In other words, by laying down your non-obviousness arguments before you know what prior art the opponent will rely on, you're limiting yourself to one argument.

Is it easier to obtain a patent if the application includes references cited by the inventor and the inventor addresses the improvements?

Not necessarily.

Some practitioners would argue that mentioning the prior art at all is asking for an obviousness rejection. Because if you set out what has happened in the prior art, you often inevitably frame the difference in such a way that it seems an obvious modification to make. While this should not change the approach taken by examiners, the USPTO in particular is notorious for doing so.

However, there is a balance. You can simply note the prior art, and possibly disclose its problems or weaknesses without reference to how it compares to your invention. This does however necessarily mean you are precluded from stating what your improvement is.

  • Maca, Thank you very much for your time to clarify this for me and help in expanding my understanding. I would also apologize for over use of my patent as a reference, but it was because I did not appreciate some of the other's answers in my first part of this question that implied I knew nothing at all about the patent system. – David DeVeau Mar 6 '18 at 16:03
  • @DavidDeVeau No problem at all. If you found my answer helpful, please do feel free to accept it by clicking the tick mark by the top of the answer. Of couse, it may pay to wait a few more days, in case other (better) answers come through too. – Maca Mar 6 '18 at 19:57

Your Answer

By clicking "Post Your Answer", you acknowledge that you have read our updated terms of service, privacy policy and cookie policy, and that your continued use of the website is subject to these policies.

Not the answer you're looking for? Browse other questions tagged or ask your own question.