New Use Patent?

It is possible to obtain a patent for a new use for a pre-existing product. Indeed, this is quite common. However, in order to qualify for a patent in this situation, you must satisfy the basic requirements of patentability. First, the new use must be "novel" (i.e., no one has previously used the product in this way). If someone else used the product in this way in the past and/or if your purported "new use" is disclosed in a written publication that is part of the "prior art", your "new use" would be deemed to be anticipated by the prior art and not patentable. You need to pay for a prior art search to know the answer to this. Second, your new use must not be "obvious". The concept of "obviousness" is the main battleground in efforts to obtain patents covering new uses for existing products. There has been a great deal of case law on the issue of obviousness in recent years---in general a product will be deemed obvious unless it "substantially advances" the art. If you discovered the new use in order to respond to a problem by using the "ordinary" or "routine" skills of a person of ordinary skill in the field of endeavor, your invention will be deemed obvious---we do not give patents for the exercise of ordinary skill to adjust an existing product to solve a new problem (or a newly recognized problem). Third, you must satisfy the so-called "enablement" and "written description requirements"---this means that your patent application must be written in a clear manner so that others of ordinary skill in the "art" can practice your invention without undue experimentation. Note that even if you succeed in convincing the U.S. patent office to grant you a patent, it is far from clear that your patent will stand up to scrutiny in a court. A surprisingly high percentage of patents that are challenged during the course of patent infringement litigation are found by federal courts to be invalid. In this case, if you tried to license this patent or enforce it against infringers, you will likely have to deal with arguments that the patent is "obvious". Because challenges to such patents on grounds of obviousness are so common, it is vital that you retain experienced IP counsel from the very beginning to lay the groundwork for defending yourself against charges that the invention is obvious. Note, moreover, that obtaining a patent in a situation like this costs real money. Don't be fooled by companies or lawyers who say they can prepare a patent application for a few hundred dollars, or even a couple of thousand dollars. The process of preparing a patent application requires analysis of the prior art, careful drafting, filing the application (and payment of filing fees) and responding as required to "office actions" wherein the patent examiner raises objections to the patent application as filed. It is common for the costs of drafting, filing and "prosecuting" a patent application to substantially exceed $10,000---and where companies have patents that they believe are highly valuable, it is not unusual to see companies expend $50,000 or more on a single patent application. Further, we live in a global economy, and chances are you will need patents in several countries in order to properly protect your invention from a commercial standpoint. Filing and prosecuting foreign patent applications is an expensive process, but often foreign patent applications are critical to the success of marketing and selling a new use for an old product. As you can see, this is a complex area of the law--your first step should be to retain experienced IP counsel to advise you. One of the first questions you should ask is---Do I really need a patent, or are there other less expensive ways to protect my idea? Often, there are less expensive and more effective approaches to achieving strong IP protection, such as protection under trademark and copyright laws. But there are no shortcuts here--you need to retain IP counsel!!