Discover how trademark, patent, and software law can help small business, entrepreneurs, and inventors. Check my blog for questions and answers.

Can you patent a new use of an existing product?

Can you patent a concept that involves a different utility of an already existing product?

Let's say there is a product out there that is used for one particular purpose and you want to use that product in a different presentation for another purpose. Is it patentable?
In an example format, let's say I create [Editor: Just in case it was not made up and you decide to file a patent later... ]. Could something like this be patentable?

Peter ~ Tarzana, California

Maybe yes, maybe not. The discovery of a new way to use an existing product or old idea might be patentable, for example, if the new use is based on unknown properties of the existing product. Patent attorneys call this a "process patent" or a "method of using".

If the patent claim only includes the old structure or composition, and, the "use" is simply a result of that old structure or composition, then the claim will not be allowed. However, if the "use" of the old structure or compound has an unexpected result, then, the patent claim can be granted. Also, the new property like must not be "inherent" to the existing product or old idea.

For example, a method of providing pain medication to animals, using an pre-existing medication, was found to have a non-addictive quality. This method of providing pain medication was separately patentable over the pain medication itself.

On the other hand, if the discovery is merely the discovery of a property of the pre-existing structure or compound, then again, the claim will not be allowed. So, if the discovery was merely that animal medication was non-addictive quality (regardless of how it was used), then the new use would likely not be patentable.

Here are a few cases that talk about a new method of using an old invention.

  • In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957)
  • In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978)
  • In re Tomlinson, 363 F.2d 928, 150 USPQ 623 (CCPA 1966)

Patent Rejection

Should a patent issue in my name or my company name?