0

Do I have to claim future applications of an intervention? Do I need an application at all?

In this article it is written:

Zwar wird in Patentanmeldungen üblicherweise nur eine Erfindung beschrieben, jedoch werden in den Patentansprüchen (englisch: claims), speziell wenn eine grundsätzliche Idee beansprucht werden soll, oft alle möglichen Implementierungen und (auch erst in Zukunft entdeckte) Verwendungen der Idee beansprucht.

Although patent applications usually describe only one invention, claims, especially when a basic idea is to be claimed, often claim all possible implementations and (even future discovered) uses of the idea.

I thought only for medical applications like the use of drugs it is possible to claim an existing patent for a different application. But for a, let's assume some mechanical component or whatsoever, I have to foresee all possible applications? Otherwise it is free to use (for a specific non-claimed application) for everyone?

Improve this question
2

I'm not a lawyer, but here is my take. A patent only protects what is in the claims. If you don't claim it, you don't own it. Thus, it is usually a good idea to attempt to claim useful permutations of the invention. This doesn't mean you will get every claim awarded, but you certainly won't get what you don't attempt to claim. Now the rest of the application needs to support the claims which is why some, if not most, patent attorneys draft the claims first when writing an application.

But for a, let's assume some mechanical component or whatsoever, I have to foresee all possible applications? Otherwise it is free to use (for a specific non-claimed application) for everyone?

If someone finds a use for your invention that isn't protected by a use/method claim and you do not have a device claim, then that application may be free for them to use. With a device claim all uses of the device would be protected. They might even be able to get a patent on that new use and keep you from using your own invention in the new way. Having a claim publish in an application, even if it doesn't get granted might help protect against this. This is one reason I always council inventors to work with a patent attorney or agent, especially with inventions that have potentially a wide range of uses. Patenting often is best pursued with strategic thinking which might mean several patents that complement each other.

Improve this answer
13
  • Specifically related to a mechanical device or other physical thing - a use claim and an apparatus claim are two separate things. One patent might include one, the other, or both. If you have an apparatus claim, any use of it necessarily includes one of your devices. Where did they get it - from you or your licensee or there is an infringement of your device claim.
    – George White ♦
    Sep 2 '20 at 3:25
  • @Eric: Thank you for your answers! I realized that a patent has to be an (applicable) solution for a problem, so, yes, it should contain at least one possible application. Nevertheless, as you elaborated, I'm quite surprised that, e.g., I invent something and couldn't foresee everything. Sure, on the other hand, there is a certain achievement when others see possible applications I didn't, but getting prevented from using my own invention is kind of weird. However, thanks for clearifying!
    – Ben
    Sep 2 '20 at 5:03
  • @GeorgeWhite I'm a bit confused now. Does that mean that when having an apparatus claim (is that US law?) would involve all applications like I assumed in the first place?
    – Ben
    Sep 2 '20 at 5:05
  • @Ben Lets say you invent the laser. You own that and no one can use lasers in the way claimed by your patent without paying you. If someone patents the use of a laser to detect vehicle speed, you can't use your laser to detect vehicle speed without licencing from that person. He still might need to license from you depending on your patent's claims. You can still use your laser for all the purposes claimed in your patent. The new patent doesn't change that.
    – Eric S ♦
    Sep 2 '20 at 13:54
  • @EricS - I think this comment misses the distinction between a claim to a thing and a method claim to the use of a thing.
    – George White ♦
    Sep 3 '20 at 20:23
3

The comments have gotten confusing. First, something fundamental that often gets misunderstood. Your patent doesn't entitle you to do anything at all. Patent owners can only (attempt to) stop others from practicing the patent. Patents are a right to exclude, not to perform. There may be patents of others that would be infringed by practicing your patent or even laws that would be broken in the process.

Second, there is a difference between a claim to a thing, a device for example, and a particular method of use of a thing. If you claim the device as a thing then any future system that contains that device will infringe your device claim regardless of the purpose/use of that future device. This is the case in all patent jurisdictions. If you patent a widget then no one can make, offer for sale, sell, import or use a widget without your OK.

A granted apparatus claim might be - "I claim a device that has the following structure . . . ". That claim wording does not claim any specific method of using the device but the physical device itself. Anyone with a novel use of the device in the future might get a patent on that novel use. But, in using it, they need to physically have a device. That's how you get them.

A different claim type is a method claim. "I claim the method of (a) putting a widget under a board (b) balancing on the board . . . " this does not protect making, selling, importing the widget or protect uses of a widget in general - only the specific use.

If you patent the thing and someone later patents a specific novel use for your thing they can't practice their patent without your OK if your patent is still in force becasue it involves a use of your thing. Neither can you practice their patent.

Improve this answer
4
  • I would only clarify your last paragraph a little bit: what you stated is right, but the method can be invented later on, either during the 20-year period or even later, so the patent for the apparatus will be expired at that point in time. And regarding the question, this clearly shows that, whenever possible, you should protect all the possible applications, when applications is understood as procedures.
    – the Europeist
    Sep 3 '20 at 21:12
  • 1
    thanks - i added "if your patent is still in force".
    – George White ♦
    Sep 3 '20 at 23:55
  • would a novel use of a "prior art" physical thing/device be a valid patent then? (even more interesting if the prior art patent is even expired) Example: shoes with springs have been already patented by nike. I patent shoes with hydraulic suspensions for riding a windsurf (assuming that this is a thing and has an advantage). This could be seen as a prior art, or close enough, but the use, stabilizing the riding of the surf instead of absorbing walking/running impacts with the ground (so likely with some modifications compared to the original patent) would be new?
    – Pa_
    Jul 16 '21 at 22:17
  • 1
    This should be a new question. The patent state of something proposed as prior art is completely irrelevant.
    – George White ♦
    Jul 16 '21 at 22:28

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

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