Can I Patent Something That Currently Exists That Isn’t Patented?

25 Jul Can I Patent Something That Currently Exists That Isn’t Patented?

Occasionally, someone notices that a product or concept currently on the market isn’t covered by a patent. This will often lead them to wonder: Is it possible to file for a patent on that product?

To clarify this question, first we have to look at the requirements for receiving a patent. According to U.S. Patent Law, an invention must be “new” or “unanticipated” in order to be granted a patent. This means that a product previously created at some point, or a patented invention (referred to as “prior art”) must not contain all of the elements of your invention, as described in the patent application.

The decision in Net MoneyIN, Inc. v. VeriSign, Inc. clarifies the meaning of this by stating that:

“[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.”

In short, in order to patent a collection of elements in a particular arrangement, that combination must not have been previously patented, or have been manufactured, offered for sale, used, or written about in any form more than a year before the date on which you file for a patent.

But, if your invention is comprised of multiple structures, prior art exhibiting one of those structures renders it unpatentable.

However, if there are multiple structures involved in an invention, and one of those structures is found in prior art, then the entire invention is considered to have been anticipated (and thus unpatentable).

The precursor to the Court of Appeals for the Federal Circuit stated in 1960, “a generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus.” To work within that metaphor, you can’t patent all cats if someone already created a tiger. The prior existence of an element of the invention disallows the entire patent.

An invention designed to avert Y2K-related computer clock issues is a seminal example of partial prior art invalidating a patent in its entirety.

Back in the 1990s, computer programmers recognized that there was a serious issue with old computer code used in banks, airports, military applications, business operations, and innumerable other environments: dates had been rendered in 2 or 3 digits (85 instead of 1985, 999 instead of 1999) in order to save program space.

This created a problem, as 2- and 3-digit methods of date-tracking assumed that the year in question was 19XX or 1XXX, respectively. But when the year 2000 rolled around, these programs would be in serious error. They would render the year 2000 as 00 or 000, and believe that these truncations represented the year 1900 or 1000.

This simple error would result in financial institutions failing, stocks not being traded, hospital databases crashing, airports and military bases seizing up, and so on. In the face of this digital and real world Armageddon, programmers around the world raced to fix the issue.

In 1997, a man named Roger Brown received a patent for a system in which a program could offset the clocks of computer systems that represented years with 2 or 3 digits so that they didn’t roll over into the year 2000 and succumb to the Y2K glitch, and then take the offset date and post-process it to render correctly. Computers would hum along in happy ignorance, while the Brown system would bridge the gap between computers’ limitations and the needs of the humans depending on the computer system. Because computer systems often simultaneously ran programs using 2, 3, and 4 digit systems, the Brown patent specified an ability to handle all of these date standards simultaneously.

Soon after receiving his patent, Brown discovered that the company 3M was marketing a software system which offered a more or less identical fix for computers, and which handled 2, 3, and 4 digit date systems. Brown sued, claiming that 3M’s system—which licensed a patent (the “TOCS patent”) predating Brown’s for a system which handled two-digit years—infringed on his patent. Brown argued that the TOCS patent was essentially an entirely different invention than his, and thus didn’t invalidate the broader claims of his own patent (which more closely matched what 3M’s system did).

However, a district court and the U.S. Court of Appeals both ruled against him for a simple reason.

If an earlier patent would have been considered to infringe upon a later patent if their order were switched, then the later patent is invalid.

Back in 1889, in the case of Peters v. Active Manufacturing Company, the Supreme Court offered a simple and elegant test for whether an earlier patent invalidates a later one.

Consider two patents: Patent A, granted in 1900, and Patent B, granted in 2000. If you were to reverse the dates of the two patents, so that Patent B came first, would Patent A be found to infringe upon it? If so, then Patent A anticipates Patent B, and thus invalidates Patent B.

The court ruling on the Brown case applied this logic. The TOCS patent handled 2 digit date systems. Brown’s handled 2, 3, and 4 digit systems. If the TOCS patent had been filed after Brown’s, it would have been found to infringe upon the 2 digit component of Brown’s patent. Thus, the TOCS patent anticipated Brown’s. An invention must be new or unanticipated in order to be granted a patent. Thus, Brown’s patent was void, and the case was dismissed.

This returns us to the question we started with: “Can I patent something that currently exists that isn’t patented?” To answer, ask the counter-question, “Would my patent be infringed upon by the existing product or concept which inspired my question?”

If you believe that this is likely the case, then you probably won’t be able to obtain a patent. But as noted at the opening of this post, patents relying on a single component are not anticipated unless a previously existing patent or product features all of the elements of that component, arranged in the same way.

But positively ascertaining whether the existing product would disallow your patent requires answering a lot of questions. You’ll need to do research on the existing device inspiring your question, disclose its existence to the USPTO, and determine whether your invention would be a substantial improvement upon that device. To better understand your options, you’re going to need to the services of an experienced patent attorney.

If you would like assistance in ascertaining whether you can patent an invention which bears similarities to an existing product or concept, the Law Office of Michael O’Brien can help. To make an appointment, call 916-760-8265, or send a message using our convenient contact form, and we will be in touch with you shortly.