ANSWER from Donald Grant Kelly, CEO of Academy of Applied Science (formerly Director Technology Center 3700 Mechanical Engineering, Manufacturing and Products U.S. Patent & Trademark Office Washington, DC 20231).
You asked: "What is the best way to protect a new technology? The use of a device for a purpose for which it was not designed, and theoretically would not work?" Here is my answer.
A new use for a known device can be patented. But, this is true only if that use (or method of use) is, indeed, new and not obvious, and if all other legal requirements are met.
Yours is not an uncommon situation. The Patent and Trademark Office (PTO) grants thousands of "new use" process patents every year. However, you should take steps to ensure that you are not infringing on any pre-existing patents that cover all or part of the "known device," itself. Your use of someone's patented device, even if your own process is patented, could pose serious legal problems.
To further answer your question, a patent may not be the "best way to protect" your invention. Maintaining your method as a trade secret could be an option, depending on the nature of the invention.
You should seek the advice of a specialist in intellectual property law, someone registered to practice before the PTO. Let me know if you wish to have a list of registered patent attorneys and agents practicing in your area of the country. My email address is Dgrantk@aol.com
Good luck with your invention.
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ANSWER from Bob Bell, patent attorney
A new use for an existing product is patentable, however, such claims might not cover the product itself! In other words, people still have the right to buy the exisiting product for its old use; you can only protect the method of using the product for its new purpose. Such method claims can be somewhat difficult to enforce. However, it is possible to argue *contributory infringement* in some situations. For example, if a manufacturer sells the product (which is not patenable) along with a set of instructions as to its new use (which is patentable). Rather than sue all the consumers, you may be able to sue the manufacturer for *contributory infringement* in such situations.
Remember, a U.S. Patent needs to be filed within one year of the date of first sale, offer for sale, publication, or public use of your idea. In order to protect foreign rights, you need to get your patent on file before any of those events take place. Otherwise, your invention falls into the public domain.
Document your invention conception date by retaining all notes, notebooks, sketeches and schematics. Sign and date an invention disclosure and have someone withness it with the notation "reviewed and understood by me" and have them sign and date it. Such evidence can be used to prove you were the first to invent the idea.
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ANSWER from Ed Tutle, inventor and licensing expert
To protect an inventive idea you must disclose the idea to others who have some expertise in the subject matter, but only under a confidentiality agreement. ("Others" does not mean immediate family members who, if they are made aware of the inventive idea, must understand that they should keep it confidential.)
If the idea has utilitarian aspects, it may be patentable as a utility patent in the US. If the inventive idea already exists, it is not patentable as is, however if the idea is used with some unique modification the combination may be patentable. First, however, prove to yourself that the theoretical "it can't work" assumption is false. Also be prepared to spend some time and money in developing the invention. The market for undeveloped ideas is practically zero. However, remember the need for a confidentiality agreement in all cases because an idea can be purloined and developed by others, who can do so and have no obligation to tell you about it |
