As the world has been experiencing a race in technology and inventions, the need to keep track of who invented what has also risen. In order to protect to an inventor’s right to their invention, governments have had to bookkeep and record these inventions as patents. “A patent is an exclusive right or rights granted by a government to an inventor for a limited time period in exchange for the public disclosure of an invention” (techopedia). However, since there is always room to fix and add to already existing inventions, a new category of patents was created. This category is called “improvement patents”. An improvement patents “refers to a patent which has claims directed to an improvement on a preexisting invention” (US Legal). There are two main types of improvement patents, addition patents and substitution patents (types of patents). This paper will discuss the requirements and issues related to improvements patents, the two types of improvements patents, and provide concrete examples for each type.
Patenting a new, pioneer invention or idea serves the purposes of protecting the inventor’s exclusive right to their invention. However, this does not necessarily mean that the inventor has the right to start commercializing their invention; they are granted a negative right to their invention, meaning that it prevents others from using it (basic and improve). This raises the question of whether an improvement patent infringes or can even be patented over the prior patent, which it is improving. In determining these two aspects for an improvement patent, its disclosures and claims are compared to those of the prior patent (basic and inprove). To determine the patentability of an improvement patent, a close examination of the full disclosures of both the prior patent and the improvement patent is done. Then, the final check is whether the differences between the two disclosures seem technically obvious to an expert in the art. The improvement patent is only granted if and only if the differences between the disclosures do not seem obvious (basic and improve). Once the improvement patent is attained, the owner of the patent still needs to ensure that the improvement patent does not infringe the prior patent. In most cases, especially since an improvement patent usually builds on top of a prior patent, it is difficult to stat producing or commercializing the product in the improvement patent without infringing the prior patent. There are ways around that, such as obtaining the rights to manufacturing and selling this improved product from the owner of the prior patent.
An exception to the infringement rules discussed above that the US patent law allows for is when the filing entity of the improvement patent is also the owner of the prior patent (basic and improve). However, even in this case, there are firm restrictions and specifications to this permit. An entity is allowed to file improvement patents to its prior patent as long as they file the improvement patent “within one year after issuance of the prior patent” (basic and improve). This is to say that if an inventor files a pioneer patent, and that patent is issued for them, and then they decide to file an improvement after a year of the issuance, that prior patent is considered prior art.
As for the types of improvement patent, the first type, which is more common when it comes to improvement patents, is addition patent. An addition patent “adds something” to the innovation recorded in the prior patent (types of improve). Therefore, this type of patent takes what the prior patent describes and directly builds on top of it. This means that the addition patent does not make major changes to the prior patent’s claims; it simply adds to them. An example of an addition patent is that describing adding a fourth leg to the prior invention of the three-legged chair. In this example, entity X invents a three-legged chair, which is an idea that the world has never seen before. Entity X patents its three-legged chair pioneer idea, and the patent is issued. At this point, entity X has the right to prevent any other entity from making or selling three-legged chairs without being granted a license by X. Three years later, entity Y comes along and sees that it is more stable to add a fourth leg to chairs. Entity Y then files an addition patent covering the addition of the fourth leg to the chair. Assuming that this addition patents gets approved, entity Y still does not have the right to start manufacturing and commercializing this product. This is because by doing so they would be infringing entity X’s patent. However, if entity Y wants to have the right to build and sell four-legged chairs, then it would need to acquire a license for manufacturing the four-legged chairs. The same thing applies to entity X producing four-legged chairs. Entity X is only entitles to producing three-legged chairs, and if it were to produce four-legged chairs, it would need to acquire a license from entity Y (idea2invention).
On the other hand, the second type of improvement patents is called substitution patent. A substitution patent takes out a part of a prior patent and replaces it with a new part. For example, entity X files a pioneer patent claiming the invention of the chemical compound consisting of element P, A, T and E. Entity X is granted a patent for its groundbreaking chemical compound. Two years later, entity Y, inspired by entity X’s patent, files a patent claiming the invention of the chemical compound P, A, T and N. Entity Y’s substitution of element N for element E from entity X’s compound does not seem to be trivial, so entity Y’s patent is issued. Similar to the situation in the previous example, entity Y cannot start making or commercializing its chemical compound unless it obtains a license from entity X. This is since entity Y’s later invention includes most of the elements from entity X’s prior patent. Thus, by not having a license, entity Y would be infringing entity X’s patent. Likewise, entity X would also need a license if it were to use entity Y’s new compound or else that would be an infringement of entity Y’s patent. (chemical rxn link)
Looking at the list of the biggest inventions in the world, the invention of the light bulb by Thomas Edison stands out. “Edison significantly improved upon the already exisiting technology by developing a light-bulb that used a lower current electricity, a small carbonized filament …”(edison). This example is to highlight the importance of building upon prior art. One of the benefits of improving on previous inventions is that the improving inventive entity will usually have a clearer sense of the market size and demand. Also, it becomes easier to avoid issues prior art and entities faced along the way. Although it may seem difficult to commercialize an improvement invention at first glance, the potential benefits outweigh the difficulties.