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Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3425
Experience:  Experienced in intellectual property law
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My question is about field of use when making a patent

Customer Question

My question is about field of use when making a patent application for an innovation that is a method of doing something. I think of it one way and someone I've been talking to about patenting an innovation thinks about it another way. Example-- is like nondestructive testing (NDT) of x-ray, ultrasound, dye-penetrate, etc. The actual innovation has something to do with applying particular analytics a certain way and I consider the "field of use" to be the particular NDT method the innovative analytics are applied to--let's say the innovation is applied to ultrasonic testing. The other fellow says field of use for the innovation is not only the NDT method but also the thing being tested: for example, automobile bodies or wood or medical use or agriculture. That narrows it down pretty far and makes it not very smart to try and protect the IP with a patent--rather just keep it a trade secret. Once the innovation is revealed by patenting it is really so narrow as the material used on (in the example), it wouldn't be worthwhile. I think I'm missing something. Can you help me understand or perhaps tell me how broad "field of use" really can be?
Submitted: 7 months ago.
Category: Intellectual Property Law
Expert:  Alex Reese replied 7 months ago.
Hello, are you trying to write your own patent application? I strongly advise against that, but nevertheless....If you are asking in order to write the "field of invention" section of the patent then it simply does not matter the way you think it might, that section is just a one-liner stating the general field of the invention and it is almost meaningless....it is a general statement of the field like "the present invention relates to ultrasonic testing methods, particularly ultrasonic testing of load-bearing structures" (with the second part being optional). If it's a patent on an improved bicycle brake you would just say "the present invention relates to bicycle braking systems." So the concerns in your questions are mis-placed, it's just not something you need to think about or that will bind you in some way, it is very high level, not specific to your actual invention. The important part of the patent is the figures, description and most importantly the claims.
Customer: replied 7 months ago.
The "field of invention" section is high level, yes. I was thinking about the term "field of use" (use, not invention) because this second phrase comes up in my discussions about what may be covered by an existing patent already issued. I have access to use the already issued patent--and it is a method patent not a device btw--so I'm really looking at how I can use the IP. I read the "field of invention" which is indeed broad and a lot of the non-limiting language in the specification in an issued patent as well as the claims that are also broad and think "it's sufficiently broad that my particular desired way to use the IP is going to be covered, but the other party (a business associate who does know more about patents than I do) states the existing patent only covers the more narrow field of use and/or the device (remember, this is a method patent...) that the inventors demonstrated as one embodiment of the invention and another patent application would have to be filed in order to use the (exact same method) .For a variety of reasons, this is not making sense to me--and of course since I have the ability to use this patent to my benefit in my business and it has value to me in that respect, I want it to be broad enough to cover more than just the particular embodiment shared in the patent. My business associate has every reason to want a new/different application to have to be filed to cover the application area -- so we have opposing positions that certainly impact our objectivity about the matter. :)Are these questions available to the public? If not, I'll just point you at the issued patent and perhaps it will be clear to you what I'm talking about. Thanks
Expert:  Alex Reese replied 7 months ago.
If you want to know whether your method is covered by the patent, you need to examine the patent claims and compare each claim element to the method to see if the element is present in your. If your method does not practice each element of a claim, then it does not fall within that claim. The claim language should be construed in light of the specification but not limited by it necessarily. It's all about the claims, not about the perceived "field of invention." This analysis is not a simple one however, and the question of whether you practice the patent can be very complex without a straight answer. This is something that a patent attorney should be enlisted for. Also, you could be practicing the patent but also doing additional steps that practice other patents, and in that case you will not be "safe" because you will be infringing those other patents. A patent license will protect you from infringing that particular patent, but you have to be aware of all other patents out there. A patent does not give you the right to practice an invention, only the right to prevent others from doing so....typically only patent attorneys understand this fundamental distinction. So just because your method is practicing or covered by that patent does not mean you are not infringing other patents, because many patents incorporate or are built upon other patented inventions. Yes the threads are public.
Expert:  Alex Reese replied 7 months ago.
please don't forget to RATE me, thanks

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