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Lets say, there is prior art PA whose claim is a method comprising steps A -> B -> C -> D. The method is used in a complex system S, as a part along with many other different components of the S. I came across an idea where I can show that removing step B for a specific condition increases the overall performance of the S more than 40% and it has a great business impact.

Can my new idea be patentable?

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Can my new idea be patentable?

The answer is maybe. You clearly are distinguished from patent PA and as such don't infringe on that patent. What you don't know is whether there is any other prior art either in the patent literature or otherwise that makes your invention non-patentable. For instance there very well might already be a patent specifying only steps A, C and D. You would potentially infringe on that as would patent PA. Even if there is no prior art, you still have to convince the examiner that your invention is novel and non-obvious.

A good first step would be to read the patents cited by and that cite patent PA. If you find one that is close, then read the citations of that patent or application too.

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  • Thanks Eric S. But there will be question of my claims novelty right? If examiners say, its already invented, you just stopping/bypassing a step, so its not novel. Than what should be my counter argument?
    – Sazzad Hissain Khan
    Oct 14, 2021 at 2:46
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    @SazzadHissainKhan When there is a surprising advantage, you are more likely to be considered novel. So leaving out a part and pointing out it's cheaper isn't surprising. Leaving out a part and improving efficiency a notable amount might be.
    – Eric S ♦
    Oct 14, 2021 at 14:41
  • @EricS The existence of a surprising advantage does not influence the novelty analysis. Your A-C-D claim is not novel over a disclosure of A-B-C-D. Subtracting features from a claim, as opposed to adding features, makes your subject-matter less novel. A species (A-B-C-D) anticipates a genus (A-C-D).
    – the Europeist
    Oct 14, 2021 at 16:47
  • @theEuropeist Of course you are right. I should have said a surprising advantage was a defense against an obviousness rejection.
    – Eric S ♦
    Oct 14, 2021 at 17:40
  • @theEuropeist could you put an answer with your experience and if possible some justifications… thanks
    – Sazzad Hissain Khan
    Oct 16, 2021 at 5:17

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