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SA Upgrading Pre-Existing Products - Issues with Patent?

Discussion in 'Intellectual Property Law Forum' started by majed, 10 December 2016.

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  1. majed

    majed Member

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    I do not know why everybody warns me when I speak about upgrading the prior art/ pre-existing/ previous products...although I found a lot of examples of upgrading such as:

    A method for upgrading a crutch.
    A method for upgrading a pre-existing fixed bed hydroprocessing system.
    A method and system is disclosed for updating/modifying/upgrading the system configuration of a stand alone non-network connectible device.

    Please draw the lines between the acceptable and the non-acceptable for such method under patent law.

    Thanks
     
  2. Leonard Mancini

    LawTap Verified Lawyer

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    The issue with improved methods is that they are still capable of infringing the older method.

    A patent granted for process ABCD will still be infringed by an an improved process ABCDE.

    Same for improved products. So long as they have the same base features that are claimed in a patent the patent will stop improvements from being able to be sold. Eg product with features ABCD would still infringe a patent for product with features ABC. If the new product had features ABD (i.e. removed C) then it would not infringe.

    You have to look at the claims of the patent to determine what improvements would infringe it.

    Leonard Mancini, IP Lawyer: Book Online | LawTap
     
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  3. majed

    majed Member

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    Thanks, I want to file a provisional application to USPTO EFS because I do not have money now. I did not include claims with it. My invention is an improvement for some features and adding others so I wrote it is a method for improving (or making new improved products) by implementing at least one of the following features.

    Is this right or should I cancel the improvement idea and speak about new products only?
     
  4. Leonard Mancini

    LawTap Verified Lawyer

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    Hard to tell without seeing what you filed but so long as you fully describe the improvements in an enabling manner you could claim the date of filing of the provisional as a priority date and then seek to refine what exactly you claim as an invention in a complete patent application filed within 12 months of the provisional.

    Be very careful however about disclosing it within those 12 months to the public as self filed provisionals often do have issues that result in a loss of claim of priority with all that comes with that.
     
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