Can you patent a new use of an old product?

Yes, it is possible to patent a new use of an old product. That’s the short answer. The long answer is more complicated.

While it’s technically possible to patent a new way of using an existing product, the claims must specify a novel and nonobvious method of using such an old product. The biggest hurdle in attempting to patent a new use will most likely be the nonobvious rejections by the examiner. An applicant for a new use patent must be prepared to show and argue why their method is unique.

What are intended use claims?

“Intended use” refers to language in a patent claim that arguably describes a purpose or function of the thing being claimed. It is, therefore, not given any patentable weight by a patent examiner who has deemed a claim limitation to constitute intended use.

Basically, an examiner can argue that certain language in a claim relates to intended use. By taking this position, the examiner can then disregard the claimed features and thus apply a prior art reference lacking those features. You may see an Office Action stating that “a statement of intended use fails to distinguish over prior art.”

The situation happens more frequently in apparatus claims that recite structural features, especially using terms such as “adapted to” configured to” or “for . . .”  The general principle is that apparatus claims should cover what a device is, and not what it does. Sometimes, however, you can’t ignore what a device “does” if its operation or purpose will help define what the device is.

What are solutions to intended use claim rejections?

One potential solution is to claim the feature more positively by replacing “adapted” or “configured” with language that gets to the heart of the matter. For example, replace a “widget adapted to be connected to a device” to “widget connected to a device.” Another possible solution is to use method claims with verbs that actively describe the action, motion, connection, relationship, etc.

Are you considering a new use patent application or fighting an intended use claim rejection?

Reach out to US patent attorney Vic Lin by email or call (949) 223-9623 to see how we can help you file or review a new use patent. If you’re dealing with a difficult examiner in your utility patent application, request a flat rate estimate for conducting an Examiner Interview and responding to your Office Action.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
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