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The area of improvement patents, either product or method, is one of the most misunderstood area of patents. With an improvement patent you add improvements to a previous patent, and if you are not the owner of the previous patent, you might be able to get a patent but not be able to sell the product related to the patent because you would be infringing on the previous, unimproved patent. It is important for patent holders to understand this area of patent law as it can create problems when a patentee wants to improve their product or process.
The situation of having a patent while still infringing arises because getting a patent and avoiding infringement are two completely different things.
People get a patent by having something that is conceptually different from what has already been done (or described in a published document) and not obvious in light of what has already been done or published. However, getting a patent does not give you the right to make something; it gives the right to try to stop somebody else from making something.
To infringe a patent one needs to make, sell, import, etc. something that falls under the definition of a patent as expressed in its claims. If an invention does not need an element that is set out in another patent’s independent claim, they probably don’t infringe. If you literally “add-on” an element to something that is patented, presumably your product has all of the elements of the patented item and therefore infringes on the original patent, even though you have patented the improvements. Sometimes an improved product can only be sold with a license from the patent owner of the original item.
What does this mean for a patent holder? A consequence for a patent holder is that if someone else has patented an improvement to their idea, they might not be able to introduce those features in their product or method, because they would be infringing on the new patent holder’s claims. Pharmaceutical companies get a lot of criticism for their add-on patents because they keep extending the life of their patents. But that is the only way a patent holder can prevent someone else from patenting an improvement to their product. I’m not certain if this is what patent trolls do, but it is a concern, especially if the original patent holder’s product or process is successful.
The best route forward for a patent holder is keep adding their own improvement patents. Thinking that your original patent provides all the protection you need is dangerous.
What does this mean for an inventor who has a product improvement idea for an existing patented idea? Well the first thing is to see if you can eliminate an item in the independent claims of the existing patent. That might allow you to get a patent and sell your product or process without infringing. If you can’t eliminate something, you can patent your idea and hope the original patent holder will license or buy your patent. This sounds like a patent troll but I believe it is legal. Another case is where the patent holder’s expiration date is approaching. Then you can patent your concept, and when the original patent holder’s patent expires you can introduce your product without worrying about infringing.
A factor that plays into both patent holders and individuals with a product improvement idea is the US’s first to file orientation. The first person to file has the rights to patent an improvement. I believe that means patent holders with a successful or promising product or method need to have an aggressive posture on patenting product or method improvements. They also have to disregard the “one year” grace period to file for a patent, the grace period is not safe with a successful product. Patent holders can’t afford to introduce or discuss or disclose in any way product improvements without patenting the concept first.