Addition and Substitution Inventions

By, Lavanya SureshAssociate - Patents & DesignsAltacit Global

What does this cartoon have to do with patent law or innovation?

Pioneering inventions

Light bulb?

Henry Woodward and Mathew Evans

Vs

Thomas Alva Edison

Edison’s Improvements

● a lower current electricity

● a small carbonized filament, and

● an improved vacuum inside the globe

Patent Law

● The invention is new (i.e., novel),

● Non-obvious (i.e., not trivial or common sense), and

● Capable of Industrial Application

Improvement Patents

● An improvement made to an existing patented device.

● Improvements have to be new and nonobvious.

● The new improved product must be exceptionally better than the original.

Types of Improvement Patents

Addition inventions - requires that new components be added to the existing patented device.

Substitution inventions - can be issued to devices that have had major component or material changes which result in a better product.

Examples

Addition Inventions Substitution Inventions

Relationship Between Basic and Improvement Patents

● Whether the improvement patent can be practiced without infringing the basic patent?

● Whether the differences between the improvement and the disclosure of the basic patent are obvious at the time the invention was made.

● 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.

Approaches

Patentability

?

Infringement

Conclusion

● 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.

Conclusion

● 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.