Patent Protection and Limitations

Patent protects inventor’s exclusive right to an invention, but at the same time it aims to promote further advancement of the same technology.

These are conflicting goals for which patent provides a comprehensive exclusivity that is also clearly defined.

If you are considering patenting your invention, you should first understand the limitations which define the scope of your patent right.

Patent limitations

It is often said that patent protects an idea or more specifically a product. However, technically, a patent is a document that claims rights to a certain combination of characteristics included within the idea or product.

Let me illustrate with a hypothetical whitening cosmetic product. In your patent, you claim rights to a product

  • that includes whitening ingredient A and
  • moisturizing ingredient B
  • in a solution.

Anything that includes all three of limitations above can infringe the patent unless the patent owner allows it.

I said “all three”, so if one sells a product containing ingredients A and B but in a solid form instead of a solution, your patent can’t stop it.

Overcoming limitations

To avoid a situation where your right is limited in a way that can be easily designed around, your claims need to be as less limited as possible.

For example, you can claim rights to a product

  • that includes whitening ingredient A and
  • moisturizing ingredient B.

This can protect anything that contains A and B at the same time. However, on the other hand, if there was anything that contains A and B at the same time before your invention, your invention is no longer “new”, which is a requirement to get patented.

Not convinced? Let’s say your ingredient A is extracted from apple and ingredient B is glycerin. You can easily find a beauty tip suggesting an addition of glycerin to apple juice for a homemade facial mask.

Hence, in all likelihood, you will claim something like

  • a solution
  • that contains no less than 0.2% of whitening ingredient A
  • and no more than 5% of moisturizing ingredient B.

Well, let’s say in the nature you will not find an apple that has so much enriched with the A.

Design around

Now you have clearly defined patent claims. It’s time for your competitors to find a way around it. We call it a design-around.

For example, your competitor can market a product that contains 0.19% of whitening ingredient A. As explained above, this does not infringe your patent.

Patent sounds pretty useless now? Well, not so fast. There should be an assumption that if A is less than 0.2%, the product will not have adequate potency to brighten skin complexion.

The same goes to ingredient B. You should set the numbers in a way that, for example, if you have more than 5% of B, the solution will be too sticky to be easily applied on skin.

Conclusion

Getting a patent is easier than you think, but getting a strong patent is harder than you think.

In fact, when you apply for a patent, the patent examiner at USPTO will find something like homemade facial mask to say your invention is not new, during a process called Office Action. You can overcome the argument by adding limitations such as 0.2% and 5%.

In so doing, you may end up with a weak patent unless you anticipate ways to design around and make it harder for your competitors.

By Young Jeon, Esq.

J.D. Chicago-Kent College of Law; Georgia & Illinois Bar Member; USPTO Registered Patent Attorney

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