August 17, 1998 Design News
Latest advice on engineering and the law
New life for old product?
Gerald S. Geren
Lee, Mann, Smith McWilliams, Sweeney & Ohlson
You have a great product and you want to introduce
it to the market, but your product is substantially
the same as a product that has been available for many
years. Although the pre-existing product was once patented,
the patent has since expired.
What considerations are necessary before you proceed?
It is axiomatic that an invention (product, process,
or article) that is the subject of an expired patent
is publicly available for use or copying. However, improvements
to the basic product, which are the subject of a current
patent, are not publicly available. Moreover, trademarks
and trade secrets associated with the basic product/process
or the improvement may not be publicly available. Thus,
while the basic product should be available, its improvements,
trademarks, and trade secrets may not be.
Thus, if you are entering the business by offering
the basic product, use caution. You should run appropriate
patent and trademark searches to determine if conflicting
rights exist. If you, the entity introducing the product,
are the originator of the basic product, the problem
seems to be minimal as you should know the product,
the marketplace, and the competitors. But if you are
new to the business, you should evaluate the rights
that exist relative to improvements, trademarks, or
Moreover, if you, as the new entity, make your own
improvements to the basic product, consider whether
these new changes can be protected by patent or other
Location, location, location. You
need to consider whether the improved product is to
be marketed in the U.S. only or abroad. This is important
because of the timing of a patent application filing
relative to product introduction. In the U.S., a patent
application can be filed up to one year after public
disclosure by advertising, marketing, selling, etc.
This year period is the so-called U.S. grace period.
But many non-U.S. countries have adopted an absolute
novelty concept where the filing must occur before the
public disclosure. Thus, if sales are only to be in
the U.S., the U.S. grace period is applicable. If marketing
is to be in non-U.S. countries also, and related protection
is sought, the absolute novelty concept is applicable.
Many considerations affect your decision to file, but
timing and location are major issues.
Minimizing risks. The potential seller
of an older basic product must take precautions in introducing
its product to avoid pitfalls.†With this in mind,
a newcomer can enter an established market and succeed.
Another step you could also minimize risks, although
it's not necessary. As the newcomer, you could obtain
the original business from the originator, negotiate
for a license to make and sell the original product,
or negotiate for a promise by the originator not to
enforce any rights relative to the newcomer.
Moreover, you might find you have competition from
yet another source, as the original product is publicly
available. Any other participant, such as a third party,
must watch out for the rights in the basic product,
which may be held by the originator or the newcomer
by negotiation, as well as new rights that the newcomer
has established itself.
Rights, which are the subject of an expired patent,
can be used or copied, but evaluate other rights to
the original product and its improvements first.
Q: Is an invention that is the subject of an
expired U.S. patent publicly available in the U.S.?
A: Yes, but caution is required. Be
sure to consider other rights (such as trademark rights)
that may cover the original product as well as rights
in any improvements.
Q: Is it likely that the market still desires
an original product covered by an expired patent?
A: No. The original product may be
obsolete. Instead, it may be that the improvements to
the original product are what make the product desirable
in today's market.
Q: How important is it to distinguish between
the original product and improvements?
A: This distinction is critical since
it may be of utmost significance regarding issues, such
as market acceptance, the ability to enter the market,
protective rights, and the like.
Q: Can the originator be displaced from a leading
position relative to the original product?
A: Yes. Assuming protective rights
have expired, then a creative, aggressive, and intelligent
newcomer can enter the market and succeed.
Q: Is the difference between the U.S. grace
period and the non-U.S. absolute novelty period critical?
A: Yes. The introducing company must
plan for the future and recognize whether or not it
needs a patent in non-U.S. countries. Failure to follow
the absolute novelty provision will preclude the introducing
company from obtaining patent protection in those countries
if the market expands.