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Patenting New Uses for Old Products

Posted Thursday, August 30, 2012 by Mike Cicero

In order to qualify for patent protection in the United States, an invention is required to meet the four basic conditions of being (1) within a category of patentable subject matter, (2) at least nominally useful, (3) novel (new) over the prior art, and (4) nonobvious to a person of ordinary skill in the art over the analogous prior art at the time the invention was made. Assuming these requirements are met and that the inventor has not triggered a loss of right, e.g. through a public use or sale, the inventor may obtain a patent by filing a patent application that adequately discloses and claims the invention.

The requirement that an invention be novel over the prior art has led some inventors to believe that they cannot patent their invention because it utilizes known materials. Depending on the circumstances this may not be the case. Of course an inventor cannot claim a thing which is already known, but it is quite possible to obtain patent protection over a new, useful, and nonobvious use of one or more known things.

To illustrate how certain new uses might qualify let’s first examine what exactly constitutes patentable subject matter. 35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” Speaking roughly, each of the categories of “machine,” “manufacture,” and “composition of matter” are physical or structural in nature. That is, each of these categories represents tangible things which cannot be patented if already within the domain of public knowledge (minus limited circumstances in which the current inventor disclosed the information to the public). The category of process, however, has been defined as a “process, art or method” and has been further defined to include “a new use of a known process, machine, manufacture, composition of matter, or material.” 35 U.S.C. §100(b).

This means that while the inventor of a new use of a known material (or machine, etc.) may not obtain a patent over the old material for lack of novelty, the inventor may be able to obtain a patent over the new method-of-use of that material. For example, U.S. Pat. No. 5,672,279 is directed toward a method of using urea hydrochloride “to remove the build-up of water-insoluble metal salts on surfaces.” The application for this patent was filed on April 25, 1994, long after the actual chemical composition of urea hydrochloride had already been discovered and used publically. However, because the patent claims are limited to a method-of-use of the known chemical and that method-of-use was new, useful, and nonobvious, the inventor was able to obtain patent protection for that use. Although the issued patent was ultimately reexamined and the challenger successfully persuaded the Patent Office to reject all claims, it holds true that new uses of known products may qualify as patentable subject matter notwithstanding novelty and nonobvious issues.

Aligned with the policy of the patent clause, allowing method-of-use claims over new uses of old materials “promote[s] the Progress of … useful arts” by encouraging the search, discover, and disclosure of new uses of existing things. Article I, Section 8, Clause 8 of the United States Constitution.

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