I have been designing a device and acompanying software and recently found an extremely broad utility patent that has a claim that is very similar and covers the some of the general functionality of this.

  1. If the original artwork has a claim on a sensor that reads data and relays it to a computer, would a the use of multiple similar sensors and accompanying software be considered new / novel enough to be patent-able in itself or would it fall under the original patent?
  2. If the original claim explicitly states a sensor that has an "internal power source," would using an "external power source" be a difference that would allow a work around?
  3. If the dependent claims outline specific operation that is not repeated in my design, does the independent claim still cover it or do all of the dependent claims have to be met? For example if a dependent claim states an audible alert, but this provides visual information is that a difference that could be worked around?
  4. Finally I think the strongest part of my design is in the software. If the software applications I am attempting are not outlined in this patent, is it possible that the software could be novel enough to warrant it's own utility patent?
  • 1
    Please provide a link to the patent. There is no substitute for reading the actual claims. – Eric Shain Aug 8 at 14:03
up vote 2 down vote accepted

You will probably not like the answer to your questions, but most of them are answered with “maybe“.

1: If the original claim contains one sensor, in most cases more than one sensor will still infringe, because if you have many, you also have one. That wouldn't be the case if the claim said “exactly one sensor“, but that's very improbable.

More than one sensor could be novel/inventive, but only if there is a good reason a person skilled in the art wouldn't have considered more sensors or they had an effect the one sensor hasn't for example.

There are other possibilities for inventiveness, but it's hard to guess without exact details. Which you cannot publish here because they'd be prior art for your application then.

Important to note is, your invention can be novel and inventive and still infringe the other claim.

2: That might be a way around, but it's not answereable generally, only for specific cases. Equivalents can be covered by the claims, but specific limitations like that one often have a reason in the prior art which would exclude equivalents.

3: Infringing any claim is enough, you don't need to infringe the dependent claims to infringe the patent.

4: Yes, that's very possible.

an extremely broad utility patent that has a claim that is very similar

What you did not say is if this patent is available for licensing. The fact that your product is already covered by a broad patent can be good news, if you obtain an exclusive license to the patent. Often investors are forced to invest in a company which only has patent application(s), so the scope of protection is unclear, reducing the company value.

If, on the other hand, you can obtain an exclusive license to this patent, you leapfrog ahead and now have proven broad patent protection, which can add significant value to the company. Such a patent owner, if not in direct competition with you, can also have technology or business know how they can sell you giving you further value and reducing your risk moving forward.

  • Another aspect is that people new to patents are not good at assessing the broadness of a patent. They often see a long claim and think that makes it broad when in actuality that makes it narrow. – Eric Shain Nov 5 at 20:29

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.