Patent question

Wondering if someone who is familiar with what you can and cannot get a patent on can answer the following question. Situation--the item is currently being manufactured and has been for over a 100 years and there are no valid patents existing on it. It is made from one piece of solid bar stock. It is proposed to make the same item in three parts, each of different modern materials and then all three joined together by silver soldering or tig welding. Can you patent this process as making a new product? Thanks for any comments and thoughts.

Generally you can't patent something that is obvious to someone "skilled in the art". So patenting "welding three pieces to make one" isn't likely. The patented idea generally get's looked at for "prior art", which would mean that trying to patent a design that has already been produced/demonstrated won't generally be accepted as a protected invention.

That said you never know what a skilled patent attorney can create as far as claims.

tjs42 said:

Wondering if someone who is familiar with what you can and cannot get a patent on can answer the following question. Situation--the item is currently being manufactured and has been for over a 100 years and there are no valid patents existing on it. It is made from one piece of solid bar stock. It is proposed to make the same item in three parts, each of different modern materials and then all three joined together by silver soldering or tig welding. Can you patent this process as making a new product? Thanks for any comments and thoughts.

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To be patentable, an item or process must be:

1. NEW - Not previously known by others or previously available in the
public domain
2. USEFUL - Must have practical utility to accomplish a useful purpose
3. NONOBVIOUS - The invention must be considered not obvious to one of ordinary skill in the art

The item itself is not new, but the process to make it is what you feel is new. So folks could continue to make the original design. Of course, if you've already made the thing in this manner and sold it to anyone, you have a very limited time (one year?) to try and patent the process. But I would think that making something of three parts and fabricating rather than making it from a single piece is pretty obvious, no? I mean, if a machinist would look at the original piece and say "I could make that easier using three parts", a patent would be hard to get and to defend.

If the reason for the three part construction is not simply cost reduction, but gives some practical advantage to the new design, and is not obvious, maybe patentable.

Bosleyjr is on the money when he separates the issues of 'getting' and 'defending' a patent

Even if you get a patent, it's up to you to defend it, and the fact that it was granted does not provide you with an automatic claim against someone who infringes it; the burden of proof is still on you to prove that it is new and nonobvious (ie you can't just say 'well it must be or the patent wouldn't have been granted ')

All the patent really does is formalise and publicise what you are claiming, it's not really a vote of confidence in the validity of your claims.

The Patent Office will take superficial steps to reassure themselves it has not already been patented, but that's about as far as it goes, and if they turn out to be wrong even about that, they'll shrug that off.

A little OT

Reminds of a story I heard in the 80s. A gentlman who was pretty well educated in the patent process would spend hours looking through patents that were unused/for sale. The catch was those patents were being used unknowingly by some companies. He would buy the patent dirt cheap then cash in on the companies that were using them.
I never knew if the story was true or not or even legal for that matter. Maybe some here knows?

Sorry didn't mean to hijack the thread, but the question always plagued me.

As far as I can tell from your post you'll not be able to get a patent due to all the good reasons posted by above posters.

What you might want to look into however is a design protection. ("Design patent"). It will prevent others from copying your exact design - ie others might still copy your three part overall concept and so on, but they will have to change enough to not be visually alike. That might force them to a less optimal or more expensive design. (Or as some has discovered - to an even better solution).

The basic process/design probably is not patentable.

But the WAY YOU DO IT may be, if you have a new way to lock the bits together before brazing, etc.

That can be just as good, if the method is essential or very helpful in producing the part.

And, by clever wording of the claims, IF you can sneak it by the patent office (not so hard any more) you may be able to "appear" to patent the whole system, which discourages some folks from copying.

Yes, a patent is not absolute protection.... you have to defend it, which usually means issuing cease and desist letters to infringers as a minimum. people will rarely attack a patent, they are more likely to ignore it.

This is because attacking puts the onus on them, while ignoring puts the responsibility on YOU to file a case in court, which will cost you a couple million, potentially, which you do not have. So by ignoring you , they have a costless use of your patent, and after a while they nullify it because you cannot/do not defend it.

if you DO defend it, they begin the attack on validity, IF your court district actually WILL strike down patents. Some simply do not, making it easier, but not cheaper.

Your goal is to make it look cheaper to license the patent than to attack it or ignore it.

Get a copyright (if applicable) and a "design patent". Copyrights are tons better and cheaper easier to defend.

One other thing. Suppose you do get a patent. Another company starts to make something you think infringes your patent. You can sue for treble damages, right?

Nope. Not as I understand it (though I'm not a lawyer - check this info with someone who is).

If your patent is even close to be "obvious" to one skilled in the trade, or similar to something that is not new, then that infringing company will likely have gotten an "invalidity opinion" from a lawyer. Once they have that, even if you win in court, you only get straight damages. Plus, once the existence of an invalidity opinion becomes public, it sets the stage for anyone infringing on your patent. You could only get straight damages.

Less lawyer's fees. Meaning you'd probably lose money unless the item has huge sales. And if that item has huge sales, and that company has deep pockets, be prepared to put tens or hundreds of thousands of dollars into your legal effort, over several years, before you get a judgement.

If you are a big company, can afford legal pit bulls, and are willing to spend a significant amount of your money in pursuing infringers, patents may be worth it. If you are a small shop, and your taking 60% of your time to pursue legal action against infringers would harm your business, maybe not.

J

doug8cat said:

Reminds of a story I heard in the 80s. A gentlman who was pretty well educated in the patent process would spend hours looking through patents that were unused/for sale. The catch was those patents were being used unknowingly by some companies. He would buy the patent dirt cheap then cash in on the companies that were using them.
I never knew if the story was true or not or even legal for that matter. Maybe some here knows?

Sorry didn't mean to hijack the thread, but the question always plagued me.

Click to expand...

Doug,

What you are thinking of are called, pejoratively, Patent trolls or, less pejoratively, Non Practicing Entities (NPE). It is not always a bad thing to collect unused patents. Some companies have as their primary business collecting groups of patents in order to make the licensing more efficient by having them all in one basket, so to speak.

-DU-

The bar for new, useful and non-obvious is so low that in effect almost anything is patentable.

The important question isn't whether it's patentable. It's whether it's of any value to patent it.

Lot's of good advise above.

Patent the previously distributed, ("Public Domain") item? no. But there are "Proccess patents" where the specific item is unimportant.

In your instance, joining the several pieces in a truly unique manner might be pattenable but we're pretty far along technologically for there to be any unkown processes of joining metal, from furnace brazing to friction welding and everything in between.

It's possible to whittle say a block of wax, spray it with an electrically conducting paint and have any one of many different metals plated over it, then melt out the wax, I've done it and so have thousands of others. Very useful for highly convoluted shapes of very thin wall.

If you substitute liquid refractory for the conducting paint, dip several times, melt out the wax, you can pour in any molten metal that suits your fancy. Sturm Ruger uses molten SS that way to make pistols.

Aerospace now glues everything together. It's come full circle from when I was a kid 60 years ago and glued my airplanes together, missed a good patent bet there, huh? Ah but, that patent would have run out 40 years ago......

You "kids" are lucky now days, perusing the contents of the patent office online is free! For most of my years as a would-be mad inventor in California, that took a very costly patent search by a local Washinton DC guy and "he" wasn't always reliable. You can now discover if your idea is unique, all by yourself but caution, enthusiasm has a tendency to blind, you've got to be honest with yourself. When you discover prior art that seems to parallel your idea in some ways, ask yourself, "if that was my patent and some guy tried to push this similar idea around it, would I cry foul? Is there truly something unique in my design?"

Being dishonest with yourself can make lot's of money too, for patent attoneys!

Bob

Just a couple of comments.

I don't know the rules in Switzerland, but here, at least when I was dealing with patents regularly, you had one year from the first sale or public demonstration to apply. If the Timex and Seiko watches appeared before a year after the show, he could have put in an application. They would have been able to sell watches until the patent was actually issued, which usually takes a couple of years. Then he would have had to sue them.

If you become aware that someone is infringing your patent, you must take timely action. This is to prevent someone from seeing that a company is infringing, but waiting until they have a big investment in the product or sold a large amount, then holding them up for a large payoff. Notifying them immediately gives them the option to drop the product or make a deal with the patent holder. A famous case is the Rollin White patent for a bored through revolver cylinder, which Smith & Wesson had to buy before they could continue with their guns. Waiting after you realize they are infringing is called "granting estoppel". Estoppel - Wikipedia, the free encyclopedia

Bill

I think Mark Thomas is right. A crane dealer in Houston( can't remember the name) has a patent on a modification for Link Belt cranes. He sells a kit to replace the roller chain drive to the draw works, which is expensive and requires lubrication. All it consists of is a toothed belt and corresponding sheaves. It's all taper lock, off the shelf parts. Seems to me like a patent on the wheel. Of course it's not defendable , you can buy every piece from any power transmission dealer. But as long as he doesn't try to defend it he can make the claim that it is patented, leading many to buy his kit instead of going to their local dealer. All he really offers is convenience.

Some things may be patentable but not be worth the effort, even if they could be good money makers. Getting plating to bond to beryllium copper can be very difficult. I developed a process that makes a strong bond and is simple to use, but there is nowhere to go with it except to specialize in that type of plating and try to keep it a secret. Since the process would be used in house, I would virtually need to get search warrants for every facility I suspected was using it. The process leaves a fingerprint on the part, but proving that it was left by my process would be hard. Selling the chemistry wouldn't work because a second semester qualitative analysis student could crack it in an hour. Besides, I would not be a bit surprised that some shops presently plating beryllium copper are already doing it that way and keeping it proprietary, so they would instantly invalidate a patent by showing they had been using it for years. I would just spend a lot of money to make it public domain.

Bill

As for the "what do you gain?" question as far as defending a patent is concerned.....

1) you gain the stopping of an infringer.

2) you gain the income if the former infringer licenses the patent, as well as potentially, back license fees an all he has sold.

3) you gain a lever against any OTHER infringers, who now will be told by their lawyer that teh patent was successfully defended, and that they are better off to license..

JST said:

As for the "what do you gain?" question as far as defending a patent is concerned.....

1) you gain the stopping of an infringer.

2) you gain the income if the former infringer licenses the patent, as well as potentially, back license fees an all he has sold.

3) you gain a lever against any OTHER infringers, who now will be told by their lawyer that teh patent was successfully defended, and that they are better off to license..

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Actually, you gain those things not by (just) defending, but by winning.

Big difference between merely having a patent, and successfully enforcing it.

mark thomas said:

Actually, you gain those things not by (just) defending, but by winning.

Big difference between merely having a patent, and successfully enforcing it.

Click to expand...

If you defended it, you won.

if you didn't win, then you did not defend it, you failed to defend it, you were defeated.......either before the trial, or during it. Either by force of argument, or by lack of money.

JST said:

If you defended it, you won.

if you didn't win, then you did not defend it, you failed to defend it, you were defeated.......either before the trial, or during it. Either by force of argument, or by lack of money.

Click to expand...

I was really just trying to emphasize that the defense itself is the big issue (ie, difficult, costly, time-consuming.) There is no easy straight line from something being patentable to it being defensible. People often naively assume that a patent is defensible by virtue of the fact that it was issued. They think the granting of the patent constitutes some sort of useful proof that the item is novel, useful and non-obvious, but that ain't so. The patent itself is just the claim. If/when you want to take legal action against others, you then have to prove the claim. That is usually a lot more difficult than getting a patent.

But I would also note that the word "defend" does not necessarily imply successful outcome. It is valid to use it that way, and context can make that intended meaning clear, but it can also refer to the process, not the outcome. For example, American Heritage dictionary lists one definition of "defend" as as "in Law: To attempt to disprove or invalidate (an action or claim)."

My thanks to everyone who responded! You provided the information I was looking for and now I understand the patent process much better than I did before. tjs 42