What happens if a patent is obtained which covers an improvement over another’s patent (improvement/blocking patent)?
An “improvement” or “blocking” patent may be defined as a patent which captures an advancement over an existing patent (prior art). It must be remembered that a patent provides an exclusionary right, namely a “right to exclude others from making, using or selling the invention throughout the United States;” however, a patent does not provide one with a right to actually practice their invention. More specifically, it must be stressed that this exclusionary right does not provide one with protection if they infringe the patent of another in the course of practicing their own patent.
As an example, assume a situation arises where an “improvement” or “blocking” patent is obtained on an advancement of a product; however, another entity owns a patent on the underlying product. More specifically, lets assume a first inventor obtains a patent which claims Elements A, B, and C. Further, a second inventor obtains a patent which covers an “improvement” (Elements A, B, C, and D) which was not described in the first patent.
In the aforementioned situation, although the second inventor owns a patent on the improvement (Element D) to the underlying product, they may be foreclosed from practicing (make/use/sell) their patent in view of (the claims of) the patent held by the first inventor unless permission is obtained from the first inventor. However, it should be noted that if it was determined that the second inventor’s patent would indeed infringe the first patent, the second inventor would be allowed to practice (make/use/sell) their invention upon expiration of the first patent.
Further, even though the first inventor owns a patent on the underlying product, they may similarly be foreclosed (or “blocked”) from practicing (make/use/sell) the improvement (Element D) in view of (the claims of) the patent held by the second inventor.
The foregoing situation may arise where the first inventor did not adequately explore their invention. Accordingly, if an Applicant wants to obtain complete coverage for their invention, it is critical that they step outside of the box and envision all of the possible design arounds that a competitor may employ to avoid infringement of their patent. Accordingly, looking expansively beyond narrow commercial embodiments to capture alternative embodiments is critical if an Applicant desires complete patent protection.
As many factors may complicate an analysis regarding patents which cover an improvement over another’s patent, it is critical for an Applicant to contact a registered Patent Attorney if such a situation arises.