There is a product I want to create, but noticed there is a patent for it. However the first claim is compromised of 5 components. I am wondering if it's possible to be granted a patent that takes away one or two of those components so I would claim just 3 out of the 5, basically simplifying the list of components or would I only be granted a patent for having a different component instead of taking one away?
prior-art-request
1 Answer
There are two different aspects of dealing with the existing patent. First is infringement. You infringe on a claim if you implement each and every aspect of the claim. Thus if a claim has steps 1 through 5 and you only implement steps 1, 2 and 4, then you don't infringe on that claim. You need to avoid each and every claim separately to avoid infringing on a patent. Be advised that just avoiding infringement of the patent you identified isn't enough. You need to determine if other related patents exist. A good first step is to look at the prior art cited by the patent and art that cite the patent.
The second aspect is whether your implementation is separately patentable. To be patentable your implementation needs to fulfill all the requirements of patentability which are it needs to be novel, non-obvious and useful. Novel means new. If there is some earlier patent or publication that describes your product then you won't be able to obtain a patent. Non-obvious means someone skilled in the field would not find it an obvious thing to do. In other words there needs to be an inventive step. Useful is usually not an issue. I often see poorly written patents where the claims are too specific and have more steps described than necessary. These are often written by inventors who didn't hire patent attorneys to draft and prosecute the patent. The claims may be narrow, but the body of the patent may describe what you want to implement and thus represents prior art.
