The Strategy of Circling Around a Patent with Improvements
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The Strategy of Circling Around a Patent with Improvements

Michael Van Loy is a Member in the Intellectual Property Section of the law firm of Mintz Levin. His practice focuses on all aspects of Intellectual Property, or IP strategy, which includes:

  • Development of IP portfolio
  • Investigation of patentability
  • Patent infringement

Below, Mike shares his expertise with us on the strategy of using Patent Improvements to circle around an existing patent. Check it out and feel free to leave us some feedback!

The Strategy of Circling Around a Patent with Improvements

Here is Mike’s take:

“There are two questions in there. There is the issue of sort of circling around a patent or having an improvement on an existing patent. That’s a situation that you can end up in if you’re a competitor and someone has a fundamental patent that has some core technology that you need in your product.  If you have some improvements on that that still rely on the original underlying patent, then you may be able to patent the improvement. Having a patent doesn’t give you a license to actually practice the invention yourself. It’s not a guarantee that someone else doesn’t have an underlying patent that you also infringe.  The situation that you described is where there’s sort of a fundamental patent that may be fairly broad, but then I can patent something that’s more specific within that broad coverage of the original patent. If two different entities own those two patents and want to make the improved version of something, then the entity that patented the improvement would need a license to the folks who had the original patent.  The folks who had the original patent would have to come and get a license from the people with the improvement. You end up with sort of a cross licensing issue. That happens a lot with large companies.”

This sort of strategy is important to keep in-mind when investing in the protection of your intellectual property rights (IPR).  I hope you found this helpful.

This is Patrick Henry, CEO of QuestFusion, with The Real Deal…What Matters.

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