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Can invention be denied a patent because of obviousness in the light of existing patent and at the same time be free to practice by anybody?

1 Answers. Asked on Dec 28th, 2014 on Intellectual Property - Connecticut
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I am considering applying for a patent with some similarities to my previous existing one (awarded). It covers different application and leverages different features but has similar structure. What happens if I my application is rejected because of obviousness in the light of previous patent combined with prior art. Would it mean that the new invention is protected by an old patent, along the same logic as the rejection itself? Could I then use the Patent Office rejection in later ligitagion to prove that my older patent covers the other field as well? Or, contrary, it is possible that I cannot get a new patent because it is too similar (when combined with prior art) and at the same time a third party can practice the new invention because it is not literarly covered by the claims. Intuitively, this should not be possible, otherwise one is locked out of patenting genuine invention.
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David Scott Safran at Roberts Mlotkowski Safran Cole & Calderon, P.C.
Licenced in VA
Answered on Jan 05th, 2015 at 12:46 PM

The short answer is maybe or maybe not, depending on the scope of the claims in your earlier patent. If thos claims cover the later version, it will protect it, but if the do not, it will not. The comments in an obviousness rejection relative to the later version have no effect on whether or not your prior patent covers the later version.

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Intellectual Property
The legal system recognizes the rights of people and companies that invent and create unique works, granting them ownership of those tangible and intangible assets through a number of intellectual property laws. Intellection property, or IP, includes patents, trademarks, copyright, trade dress and trade secrets. Intellectual property attorneys work with businesses and individuals (including inventors, writers, composers, artists and designers) to help protect these intellectual assets. IP lawyers and law firms can assist with taking initial steps to protect assets, while also working with clients to license items and to protect assets that are plagiarized, infringed and/or misappropriated.
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