0

Can generalization of a prior art be patented?

Let's say a prior art X exists claiming for only system A, B, C. Now I have come across an idea of making the prior art idea applicable for A~Z with some additional steps. Kind of generic approach to cover all unclaimed systems. To make it specialized of course, I need to add some more steps along with prior art steps as a core.

Can my idea be patented in such scenario?

2

As you describe it, the method would be a narrowing of the existing method but, due to added mechanism, would have broader use than the previous method. It is not really a generalization of the old method.

There are similar cases where patents are awarded for someone finding a sweet spot in an already known method. Maybe at a certain temperature range a process becomes, unexpectedly, much more efficient and therefore has broader applicability. But it is still a narrowing of method.

Separate from the issue of prior art is the issue of freedom to operate. If the prior art is subject to an in-force patent, then you will have a patent that you can't practice without the permission of the prior art patent owner. They have patented doing steps A, B and C, You have patented doing steps A, B, C and D but to practice your patent one is still doing A, B and C.

1
  • Thanks for your answer. We often fall in trouble when we need to trade off between over generalization vs. obviousness. How can I be sure that my proposed patent is at the sweet spot between maximally generalized and minimally obvious. – Sazzad Hissain Khan Jul 29 at 15:26
2

To be patentable an invention needs to be useful, novel and non-obvious. It might be hard to convince a patent examiner of novelty and non-obviousness if you just tweak an existing device. Even if you do manage to get a patent on an invention that builds on prior art by adding steps, your patent would only be on the system including the added steps not on the prior art system. To my mind this isn't generalization but specialization. Regardless, if the added steps you are conceiving of are truly new and not something a person skilled in the field would consider obvious, you very well might be able to obtain a patent. Just don't expect it would be applicable to any existing prior art.

1
  • @GeorgeWhite Thanks, I made a small edit to address your comment. – Eric S May 25 at 21:00

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.