Can we develop a new line of revenue?

Find out how to protect your patent


Q. We are in a niche market and have overcome a particular difficulty that our users experience. We are thinking of taking out a patent and suspect that our technique could be useful beyond our own specialised area. In our patent, can we keep open the option of following up any interest later and seeing if we can develop a new line of revenue?

A. It’s possible, but make sure you take care to avoid unduly limiting the protection in your field.Imagine it’s known how to make ballet shoes rigid to help ballerinas stay on tiptoe, but it’s difficult to get down.

You think: if the shoe were rigid against bending downwards but flexible upwards she would get support on tiptoe and get down easily.But how to do it? You devise a flat wooden strut (between insole and outsole) having transverse slots on its bottom surface. They close to prevent bending downwards, but open to allow bending upwards. This invention can also have other uses, such as  in furniture or bridges.

Your patent can cover all fields by claiming slotted struts. But that would only protect ballet shoes with slotted struts. You must also claim a ballet shoe which is differentially flexible no matter how it is achieved. Both can go in the same application, which must explain how slotted struts are useful in other fields, as well as ballet shoes.Many inventions are like this: invention A is a broad invention in a narrow field; invention B is a narrow invention in a wide field.Eventually, a couple of years later, you will have to divide your application into two.

Keith Beresford is an experienced patent attorney, and intellectual property litigator.  He is senior partner at BERESFORD & Co

 

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