A competitor patent has a certain implementation which is listed as an alternative embodiment in the detailed specification, although it is not covered in the claims.

My own invention comprises Feature 1, Feature 2, and Feature 3, where Feature 1 is identical to the alternative embodiment mentioned above. My invention kind of "accidentally" builds on the competitor's patent specification, in this particular respect.

Does this mean that I cannot patent Feature 1 even though the outcome, when combined with Feature 2 and Feature 3, is a different and enhanced invention?

1 Answer 1


If your invention requires features 1, 2 and 3 to function, then you have to claim all three features together. It's okay to include a previously disclosed feature in your claim so long as the invention described by the claim, as a whole, is patentable. By patentable I mean useful, novel and non obvious.

Feature 1, by itself is publicly disclosed so you would have difficulty claiming it by itself. However, if you are using feature 1, by itself, in a fundamentally different way than the prior art, you might be able to patent it separately.

This is where I strongly urge you to work with an actual patent attorney or agent to draft and prosecute your patent application. Doing so without an attorney or agent is very difficult. Even if you succeed in obtaining a patent by yourself it will invariably be weaker and narrower than if you employed a patent professional. The goal is not just to get a patent, but to get a good patent.

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