Another Invention Does Something Similar to Mine – What Should I Do?

There are other inventions that do the same thing or provide the same result as my invention, but my invention does it differently. Is my invention still patentable?

Rarely do patents protect a RESULT and the RESULT is seldom patentable for most field of inventions without also claiming the functional elements used to obtain the result (e.g., electro-mechanical inventions). Rather, patents more often protect the functional components/systems/processes that are used to obtain a desired RESULT, however common the result.

Can the functional elements that are used to achieve the result in your invention (albeit a common result) be distinguished from the elements of a previously patented invention that may be used to obtain the same result? If so, then there may be a patentable distinction between your invention and the patented invention.

The next question we should ask is whether your functional elements are a mere obvious variation of the patented invention? If not, then we move to the second stage of the analysis: is there any prior art that discloses the same/similar functional elements but for the purposes of obtaining a different result or utility in a different field of use?

If so, we may run into the legal issue of “obviousness” – would it have been “obvious to one of ordinary skill in the field of your invention” to take the functional elements from one field of use and apply it to another field of use? Or, could you argue that there was a step of ‘inventiveness’ that was required to create your system.. for instance, was it necessary to modify the elements of your invention in order to obtain the desired result in the different field of use?


1. Same result, but different functional elements may be patentable IF:
2. Functional Elements have not been previously combined to obtain desired result; or

a) Functional Elements have not been previously combined in the current field of invention, and
b) Inventive modifications were necessary to obtain desired result in the current field.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.