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Can you patent an addition to an already existing product?

Can you patent an addition to an already existing product?

This post is a follow up to: Can you Patent an Already Patented Chemical With Another Substance Where the Combination is Sold to be Mixed for Usage?

What is novelty?

Novelty is whether the invention has been disclosed previously. See 35 U.S.C. 102(a)(1-2). Our patent system rewards disclosure of new inventions to the public. The public is willing to accept a limited monopoly in exchange for disclosure of something new. There is no reason to provide the monopoly if the public is already aware of the disclosure. Therefore novelty is a requirement for patentability.

What is non-obviousness?

Chances are an application submitted to a patent office is not going to be a completely new concept, but rather an improvement on previous technology. If it is determined that an invention is novel, the focus switches to determine if the innovation was non-obvious regarding the prior art. See 35 U.S.C. 103. The stipulation of non-obviousness was created to prevent patents with minor alterations. For example, someone could create a desk lamp with an on/off switch which flips vertically. An obvious alteration to this invention would be to create a similar lamp with an on/off switch which flips horizontally. There may be an argument made that this innovation somehow improves the invention, but it may be obvious to someone with ordinary skill in lamp making. This invention would probably be rejected citing 35 U.S.C. 103. If any alteration to any innovation could be considered valid, patent protection would not be worth much. Without an obviousness standard, patents would only prevent exact duplicate products or processes.

Can you patent an addition to an already existing product?

The addition must be considered patentable by the USPTO. The innovation must be found to fall into one of four patentable categories: process, machine, manufacture or composition of matter. MPEP 2106. If the addition fits the criteria for eligibility, it will then be examined based on the two previously mentioned criteria: would the addition create a distinct innovation from the previous and would the addition be non-obvious to someone with ordinary skill in the art? The answer to the question of novelty is going to stem from how the embodiments of the application are written. If an applicant attempts to state an independent claim, for example, “a device for washing and cleaning skin and hair”, there will probably be a 35 U.S.C. 102 (a)(1-2)-novelty rejection citing soap. An inventor can hire a patent practitioner who can assist in drafting application embodiments which will provide the protection desired while avoiding novelty rejections.

An application attempting to patent an addition on an existing product may receive at least one 35 U.S.C. 103 rejection for obviousness. It will be up to the applicant and their patent practitioner to argue the rejection and/or amend the patent claims to circumvent the rejection. An applicant should meet with a patent practitioner and have them perform a patentability search, analysis and opinion (PSAO) before applying. A PSAO should allow practitioners to foresee these difficulties and draft claims to avoid these rejections. If the addition is significant enough, the embodiments clearly written and an application properly drafted, there should be patentability available for an addition to an already existing product.

What might be a scenario where an addition to an existing product might be patentable?

Let’s say Ms. Henry is tinkering in her personal workshop and discovers an addition added to soap which cleans hair, but also dyes the hair a color of the users choosing. Ms. Henry desires to protect her addition, but she realizes that soap has previously been disclosed. She schedules an introductory meeting with a patent practitioner. The patent practitioner informs her that the idea may indeed be patentable if the application is drafted properly. She agrees to employ the patent practitioner to perform a PSAO. The practitioner returns an opinion describing the prior art. It is revealed that the hair dye is not patentable, but the addition of the dye to soap is patentable. After considering the prior art and estimated cost, she decides to move forward and have the practitioner draft the application. The non-provisional utility patent application is submitted and the examination begins. The USPTO issues a non-final office action stating that the addition would be obvious to one with ordinary skill in the art by combining hair dye and soap. A response is drafted arguing that soap was created to remove material from hair and skin and this teaches away from a combination with hair dye solutions. The argument is found to be persuasive and an allowance is issued. Ms. Henry is cited as the owner of the patent and all material covered by the embodiments stated within.
