CAN YOU AVOID PATENT INFRINGEMENT OF PATENT CLAIMS IN A PENDING PATENT APPLICATION?
QUESTION: Can I avoid infringement if my product does not fall into the current scope of the competitor's patent application? What if I file patent application before the competitor's patent application issued? CAN THE COMPETITOR STILL ADJUST HIS PATENT SCOPE TO COVER MY PRODUCT?
ANSWER: Generally, no.
A utility patent application is filed with one or more claims. After the application is filed, the patent office may issue an office action that rejects one or more of the claims. The reasons for rejection can be many.
Often, a basis of rejection is that there is a patent that pre-dates the application, and the prior patent shows the same invention as in the application.
A more frequent basis of rejection is that a couple or more patents that pre-date the application make the applied for invention obvious. This means that one skilled in the art of the applied for invention, knowing about the pre-dated patents, would find the applied for invention obvious.
In response to the rejection, the patent applicant can amend the claims to better distinguish the applied for invention from the pre-dated patents. Upon amending the claims, the patent office may again reject the claims, and the patent owner may again amend the claims.
Once the patent office allows the patent application and is ready to issue a patent, the claims cannot be further amended.
Because the claims may be amended during the processing of a patent application, having a product outside the scope of the current scope of the patent claims does not dictate whether the product will be outside the scope of claims that are later amended.
And, if the patent owner is aware of a competitor's product during the time that the claims can be amended, the scope of the claims may be changed to cover the competitor's product.