I am considering using a patented simple product in a complex invention and would like to patent it? Is this possible? 11 Answers as of July 18, 2013

Ask a Local Attorney. 100% Anonymous. Free Answers.

Free Case Evaluation by a Local Lawyer: Click here
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
Yes, it is possible to patent a device which, in its construction, uses another patented device. However, in order to manufacture, use, or otherwise practice your invention, you need to obtain a license from the owner of the patented device.
Answer Applies to: California
Replied: 7/18/2013
Barton Barton & Plotkin
Barton Barton & Plotkin | Maurice Ross
This requires a complicated analysis which call "patent clearance". If someone else's product is covered by patent, you cannot use it in your invention without obtaining a license to do so. Further, before proceeding with your invention, you need to retain counsel to determine whether your invention can be made, used and sold without violating patents owned by other persons. If you want to pursue this project, it is critical to retain intellectual property counsel to conduct the appropriate clearance analyses. And this is not easy or cheap. Companies often pay thousands and sometimes even hundreds of thousands of dollars for appropriate clearance analyses.
Answer Applies to: New York
Replied: 7/18/2013
Eminent IP, P.C.
Eminent IP, P.C. | Paul C. Oestreich
The statement of your question really begs two different questions: The first question is whether or not your complex invention patentable? And second, if you include "a patented simple product" in your complex invention, will you be infringing the patent rights of the owner of the "patented simple product"? As to the first question, the answer is a simple formula, but it's application may be difficult if not impossible to predict. Your invention is patentable if it is a new, useful, and non-obvious process, machine, article of manufacture, or composition of matter. Your statement of the facts tells us nothing about your invention other than it includes or uses "a patent simple product". By definition your inclusion of the patented product adds nothing "new" because the patented product came first. Perhaps there is some other feature of your complex invention that is "new, useful, and non-obvious". So, you need to conduct a patentability or "novelty" search based on an accurate description of your complex invention to determine whether or not it is patentable and even then, you can never be certain. For example, a novelty search cannot discover a prior pending patent application filed with a "nonpublication request" for your exact invention filed by another inventor here in the US, at least until it issues. As to the second question, if you do not have a license to the "patented simple product", either directly from the owner, or by having purchased it from the owner giving you such a right, you may be liable for patent infringement by including a "patented simple product" in your complex invention. Again, there is not enough information in your statement of the facts to render an opinion one way or the other. The patent owner's rights are detailed in the patent document itself, namely the claims. Accordingly, you should consult patent counsel to further explore these and other issues to best achieve your business objectives and to avoid legal liability for patent infringement.
Answer Applies to: Utah
Replied: 7/18/2013
Malhotra Law Firm, PLLC
Malhotra Law Firm, PLLC | Deepak Malhotra
Absolutely. Many inventions are combinations of existing parts. Just be aware that obtaining a patent does not give you a right to sell your product, only a right to sue those who infringe your patent. You may need to obtain a license to use the patented simple product to be able to sell your product.
Answer Applies to: Washington
Replied: 7/17/2013
Microtechnology Law & Analysis | Daniel Flamm
I understand your patent to concern the complex invention. An invention can be patented provided that it is novel, useful and is neither anticipated nor obvious in view of the prior art. The words "anticipated" and "obvious" are legal words taking on particularized meaning in the field of patent law. "Anticipated" generally means that all of the novel aspects in the claim of an application have previously been disclosed in at least one patent and/or publication, or are in a publicly available and/or known prior article/process, or general public knowledge (e.g. all in one place). Obvious generally means that that all of the novel aspects were known (each one as in "anticipated" above), but may have been scattered about (separately known from various different products, publications, etc.) and that a person having ordinary skill in the filed of the invention at the time when your application is filed would have known know to combine all of these aspects (i.e. elements, limitations) to make the thing or perform the process being claimed. That is it in a nutshell, although somewhat oversimplified. Please recognize that a patent enables you to exclude others, but it does not give you any right to practice the invention (e.g. another inventor or entity can have/own a patent on a component of the invention). If you believe your invention *may* pass these tests, AND you expect that the right to exclude others will be valuable, it may be worth filing a patent application. A good next step is to find a patent attorney who has deep expertise in your field. In principle, any patent attorney or patent agent can draft a patent application and represent you. Arguably though, you will have a better shot at not missing things and a surviving later challenges when your attorney has strong technical subject matter experience AND the necessary patent legal background.
Answer Applies to: California
Replied: 7/18/2013
    Gerald R. Black, Esq.
    Gerald R. Black, Esq. | Gerald R. Black
    Most Patents are a combination or an assembly of known components, either arranged in a different configuration, or used for an entirely new use not previously known. There is no requirement that every item in an assembly of parts be new and not previously known. Also, as long as you acquire the patented component from someone licensed to sell it, there is generally no Patent infringement, since once you acquire the component, you have acquired a license to use the part. In addition, if several component parts are new and not previously known, the inventor may be entitled to a number of Patents, one for each new component part.
    Answer Applies to: Michigan
    Replied: 7/17/2013
    Webb IP Law Group
    Webb IP Law Group | Jason P Webb
    The simple answer is, if you are buying it from the patent owner, then you can. It may be more complex than that, so you should talk specifics with an attorney.
    Answer Applies to: Utah
    Replied: 7/17/2013
    Law Office of Kirk Buhler
    Law Office of Kirk Buhler | Kirk A Buhler
    It is possible. Without knowing the patented simple product or the complex invention I can't give a more definite answer. If you consult with a patent attorney or a patent agent in your area they can give a more definitive answer on the chances of getting a patent. You should have no trouble filing for the patent, but getting a patent will take further review of your information and a search of the prior art.
    Answer Applies to: California
    Replied: 7/17/2013
    Tran & Associates | Bao Tran
    You should get patent application as soon as you can to prevent others from copying you.
    Answer Applies to: California
    Replied: 7/17/2013
    Banner & Witcoff, Ltd. | Ernie Linek
    Your patent would be directed to, and thus only claim, the "complex invention" that you have created. The fact that your invention includes one or more earlier "patented" component parts - does not prevent you from obtaining a patent on your invention. However - you can only obtain the patented "simple product" (if the patent is still active) from authorized sellers of that product. In other words - you cannot have that "simple product" made for your invention to save money - as the rights in that invention reside with the patent owner. Once the product is legally sold to you - you are free to use it in your product.
    Answer Applies to: Massachusetts
    Replied: 7/17/2013
    Sebby Law Office
    Sebby Law Office | Jayne Sebby
    You can patent your original work but not the parts that are already covered by patents. You will need to acknowledge the previous patents in your application.
    Answer Applies to: Nebraska
    Replied: 7/18/2013
Click to View More Answers: