what mindef should have considered before building:\
Arnold B. Silverman
The term "basic patent" is frequently used to refer to a
pioneering type of patent, such as a patent for the first laser or
other comparable earthshaking technology. For the purpose of this
article, however, a basic patent may be considered to be any prior
patent. An improvement patent is one which adds to the technology
of the basic patent.
In comparing a basic patent and an improvement patent, one may
consider whether the improvement technology is patentable over the
basic patent. If a third party owns the basic patent, it may also
be determined whether the improvement patent can be practiced
without infringing the basic patent. In the technical patent
context, the word "improvement" generally means technology that
builds directly upon a basic patent. In a broader sense, an
improvement may be considered to be something that modifies
portions of the technology of the basic patent as distinguished
from merely providing an alternate approach to achieving the same
result.
Different approaches are taken to determine patentability and
infringement. In considering the patentability of an improvement
over a prior patent, compare the complete disclosure of the prior
patent to determine what it would teach one skilled in the art and
then compare that teaching with the improved technology. In
evaluating infringement, focus on the claims of the prior patent
and compare them with the improvements.
When considering patentability of an improvement, the entire
disclosure of the basic patent is reviewed in order to ascertain
whether there are meaningful technical differences between the
disclosure of the basic patent and the improvement. If there are
technical differences, the improvement has requisite statutory
novelty. The next question is whether the differences between the
improvement and the disclosure of the basic patent are such that
one skilled in the art to which the improvement relates would find
the differences obvious at the time the invention was made. If such
differences are obvious, then the improvement is not patentable.
For example, consider a basic patent that discloses a metal alloy
consisting of a base metal and alloying constituent A, which is
present in a specified range of weights. The improvement relates to
the addition of alloying constituent B in a specified weight to the
basic alloy. The central issue would be whether the addition of B
would be obvious over the basic patent and any other relevant prior
art. In making this evaluation, not only must the obviousness of
the use of B be considered, but also whether the amounts employed
and results obtained would be obvious. Were any unexpected
beneficial properties obtained? Are there any economic, process, or
environmental advantages achieved through the use of constituent B?
These differences and others can contribute to patentability.
U.S. patent law enables the inventive entity (i.e., the same
inventor or same group of inventors) named in the basic patent to,
under certain circumstances, avoid the basic patent being deemed
prior art, which is citable against an improvement patent
application. If the same inventive entity named in the basic patent
files an application on the improvement within one year after
issuance of the basic patent, the basic patent is not prior art
citable against the improvement application. This is because the
statute requires that prior art of this type be invented by
another. The identity of the inventive entity in this example means
that the basic patent was not issued for the invention of another.
If, however, the patent application directed toward the improvement
is filed more than one year after the basic patent issues,
regardless of inventorship, the basic patent will be a prior art
reference that must be considered in evaluating patentability.
Thus far, this article has centered on the evaluation of whether
a patent can be obtained for an improvement invention as compared
with a basic prior patent. Another issue of importance is whether
someone obtaining an improvement patent can practice the
improvement without infringing the basic patent.
There is a common misconception that obtaining a patent gives
the right to practice the patented invention. A patent grants the
patent owner a negative right (i.e., the right to prevent others
from making, using, or selling the patented invention); it does not
give the patentee the right to practice the invention. In many
instances, a patented improvement cannot be made, used, or sold
without infringing the basic patent.
A simplistic example: a basic patent is obtained for a chair
having three legs. Another may decide that a chair would be more
stable if it had four legs and obtains a patent for a chair with
four legs. The improvement patent would give the owner the right to
keep others from making, using, or selling chairs having four legs.
As the original patent claimed a chair with three legs, making,
using, or selling the four-legged version would infringe the basic
patent. The presence of an additional leg permits the inventor of
the improvement to obtain a patent, but does not avoid infringement
of the basic patent for a chair with three legs.
The analysis between a basic patent and an improvement patent,
therefore, involves an initial inquiry as to whether the issue is
one of patentability over the basic patent or infringement of the
basic patent. The factual determinations and legal evaluations are
different depending upon which type of evaluation is being
made.
In evaluating patentability in comparing a basic patent with an
improvement patent, not only the technology involved but also the
identity of the inventors can be important. If there is common
ownership or if a license has been granted by the owner of the
basic patent to the owner of the improvement, infringement would
not be a problem.
Arnold B. Silverman is a partner in the law firm Eckert
Seamans Cherin & Mellott, 600 Grant Street, 42nd Floor,
Pittsburgh, PA 15219; telephone (412) 566-6000; fax (412) 566-6099;
e-mail [email protected].
