Can I patent the same embodiment with one functional difference?

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Let's say there is a patent for a gear covered in gasoline where the gasoline is explicitly mentioned to be used for the lubrication of the gear. Can I patent the same gear covered in gasoline embodiment where gasoline is explicitly used for cooling as it evaporates? Or let's say there is a patent of a gear covered in sugar which is explicitly for protection against hear. Can I patent the same gear covered in sugar where sugar is explicitly for protection against oxidation? Another example is, an antibody coated eye contact lens to prevent infection but also an antibody coated contact lens to lubricate the eye (supposedly that both functions of antibodies, i.e. infection prevention and lubrication are known).

PCT-user

Posted 2021-02-01T12:40:51.523

Reputation: 93

Answers

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No. First - you can't patent the same structure under a different theory of why you are doing it. Some claims (device, machine, system, apparatus, etc.) are to a thing. Your "new" thing is exactly the same, structurally as an old thing so this is 100% out.

In the other example, if your antibodies are different antibodies then you have a different thing and are potentially OK.

Second - Patents are also given for methods or processes. You could write a claim for a method of cooling a gear by immersing it in gasoline. It would be, in your hypothetical, rejected as not new in the U.S. becasue of inherency. The steps of the method have been performed before, just for a different reason.

If you could patent something old due to recognizing unknown inherent properties you could stop the making and using of something that pre-dated your application and that is taking something existing away from the public, a very big no no.

George White

Posted 2021-02-01T12:40:51.523

Reputation: 21 648

I do not agree with your statement about anticipation based on the doctrine of inherency. Inherency relates to implicit disclosures of documents; if something necessarily takes place in a prior art system yet it is not explicitly taught, then said document also teaches that something implicitly. That does not mean that performing a certain task is known from a document if disclosed for a different purpose. A document about fuel tanks anticipates a gasoline container for cooling gears, but not cooling a gear by immersing it in gasoline. – the Europeist – 2021-02-02T14:35:00.053

Maybe we understand the hypothetical differently. As I understand the hypothetical the exact same system has been done previously. The fact that the gasoline cooled as well as lubricated was not appreciated but was, inherently, occurring. Can one get a patent that prohibits something that was previously being performed? – George White – 2021-02-02T18:42:05.667

1No, you cannot get a patent in that case. I guess the example of OP is not the best because it refers to a single action rather than a sequence of actions. – the Europeist – 2021-02-02T19:14:15.890

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To get a patent, an invention needs to be new, useful and non-obvious. New means no one knows about it. Useful means the invention must work. Non-obvious means someone skilled in the art wouldn't find the invention readily apparent.

A snarky answer to your question is that because you have publicly disclosed your inventions they are known and not now patentable. However, in the US there is a grace period and I'm assuming these are just examples and not real inventions you want to patent.

One thing to remember is just because you might get a patent on something doesn't mean you have a right to use the invention. There might be another patent that covers the invention. I think this is the problem with several of your ideas. For example lets consider your gear using gasoline. You might attempt to get a patent on the use of gasoline to cool a gear. I'd say this would be obvious since evaporative cooling is well known and cooling a gear train is also well known. However, even if you did get a patent the original patent with covers a gear using gasoline to lubricate would be infringed. You might say "I'm using the gasoline to cool", but the gasoline doesn't magically lose its ability to lubricate. If you implement all the aspects of a patent's claim, you infringe it. Similarly if sugar prevents wear and oxidation, you might get a patent on the oxidation prevention, but the sugar doesn't lose its anti-wear properties so you are probably infringing on the existing patent.

Similarly using antibodies for infection control and lubrication. Assuming the antibodies actually have both properties, if you make contact lenses with antibodies and claim to use them for lubrication, they still prevent infection. However, you might work around the infringement if you devise a particular antibody that can be proven ineffective as an infection control but still has its lubrication properties.

This all boils down to patentability versus freedom to operate. I am not a lawyer and patentability and freedom to operate analyses are highly dependent on the particulars of the invention. I highly recommend working with a patent attorney or agent with experience in the specific field.

Eric S

Posted 2021-02-01T12:40:51.523

Reputation: 7 963

Thanks, I do not publish here ideas that I want to patent, I only mention hypothetical examples. Would there be an issue with patentability and freedom to operate if I want to patent a self-cooled gear rather than a self-lubicated gear which was already patented? Or if I want to patent a self-lubricated lens rather than an antimicrobial lens? – PCT-user – 2021-02-01T18:22:19.303

@PCT-user What aspect of my answer is unclear. I attempted to answer exactly that. – Eric S – 2021-02-01T19:04:41.027

@EricS I agree with your answer. Something that is worth considering with regards to the third paragraph of your answer is whether you are claiming an entity or a method. In a method you are more restrictive with features in the sense of "I'm using the gasoline to cool" than in entity claims. It could be that the method is patentable and the entity is not (with analogous features I mean). There are a number of reasons why claiming a method is useful, and OP's issue is one of those reasons. – the Europeist – 2021-02-01T19:19:51.587

@theEuropeist Please add an answer with that information. Alternatively, I’m quite happy to let you edit my answer. – Eric S – 2021-02-01T20:36:59.743

@EricS George White covered it in his answer. – the Europeist – 2021-02-02T14:01:29.723