New life for old product?

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 trade secrets.

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 protective mechanisms.

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.

Legal Questions

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.