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Ask Alex Reese Your Own Question
Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3427
Experience:  Experienced in intellectual property law
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My question is similar to a new use existing product but

Customer Question

My question is similar to a new use for an existing product but made for the opposite use and made slightly different whereas my product is a permanent fix and the other product detaches. Do I file a patent for a new design or can it be a utility patent since it is a new use for an old product?
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Alex Reese replied 1 year ago.

hello. you cannot simply take an existing product and find a new "use" for it, that won't be enough to get a patent, you need to add to or modify the existing product in a new & non-obvious way. A mere "application" of something that already exists will not be patentable because it's merely an idea or use of something already known.

Customer: replied 1 year ago.
I did modify it for this particular use and method
Expert:  Alex Reese replied 1 year ago.

if you modify an existing product, you can get a patent on the modified version IF that modification is (1) new (not previously publicly known/disclosed) and (2) not obvious to one of ordinary skill in the art (i.e. that field)...the main hurdle is usually the "non-obvious" requirement.

Customer: replied 1 year ago.
If someone in the field of the invention has not used the method and design and it is obvious or should have been. I can still get a patent right? Can you give me an example?
Expert:  Alex Reese replied 1 year ago.

The examiner at the USPTO that is assigned to your patent decides whether it is "obvious" or not to one of skill in that field. you can argue about it and try to convince them otherwise but ultimately it is their decision.

Expert:  Alex Reese replied 1 year ago.

the fact that it has never been done is not relevant to whether it is obvious....it can still be obvious

Customer: replied 1 year ago.
In other words the examiner call the shots, whether obvious to his satisfaction or vice-versa. Therefore I would be chancing it right?
Expert:  Alex Reese replied 1 year ago.

that's right. it is based on his opinion, you (or more appropriately your patent attorney) can debate it but yes ultimately it is the PTO's decision

Expert:  Alex Reese replied 1 year ago.

so you need a patent attorney to argue on your behalf (this is not something to do yourself)

Customer: replied 1 year ago.
I am presently with edisonnation an invention firm who is suppose to be reputable. They had their attorney's to look at it however they said it is a niche product that is not mass productive. Should I go with that opinion? I am six month into a provisioanl patent status. I am under contract with them if they can find a manufacturer that will execept my product for licensing. I am filling a bit uncomfortable with the situation. What shall I do at this point>
Expert:  Alex Reese replied 1 year ago.

I do not trust and do not recommend ANY invention firm. The commercial success/market for an invention may be a business consideration, but has nothing to do with whether it is patentable. So whether it is a niche market etc. may be useful to your economic decision making and whether the patent would be worth pursuing, but has nothing to do with whether it is patentable. I would not pay them anything further and would seek out a patent attorney or agent, which you will need anyway to prepare & file a utility patent before the provisional expiration date.

Expert:  Alex Reese replied 1 year ago.

please rate me thanks

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