An earlier, related patent may provide a basis for an obviousness rejection which might not have otherwise existed. Invariably, a comparison between the two will be made. The entirety of the differences between the two cannot be obvious to a person of ordinary skill in the art. A simple example: if the original invention (not yours) involved a step to calculate an average value, your improvement based on the calculation of a weighted average value may be considered obvious and, therefore, not patentable. However, if you were the original inventor of a patent issued less than one year prior which disclosed an average step, then your improvement to use a weighted average cannot have your prior invention cited against you as prior art.

Improvements to a process may add steps which improve an existing patented process or substitute a better process which does not rely on any or all of the steps of the original invention.

So, for example, if the original patent describes steps A, B, & C, an improvement may add a step D so the improved invention is A, B, C, & D. The improvement step D may be patentable if new, useful, and not obvious. However, a patent does not grant a right to practice an invention. A patent provides a right to exclude others from making or using your invention. The owner of the original patent A, B, & C could prevent the patent D owner from practicing A, B, C, & D without licensing the original patent. Similarly, if D received a patent, it could not be practiced by the owner of A, B, & C without a license from the owner of D.

However, if the improvement substitutes improved, not obvious steps then it may not rely on the original patent and won't infringe it if practiced in its entirety. An example is an improvement involving steps A, D, & E replacing the original steps A, B, & C. Since the new, improved invention does not perform all of steps A, B, & C, it does not infringe the original patent.

Of course, this response can only address the surface issues and the concept of improvements in a general way. The patentability of an improvement or whether or not its use would infringe an original patent must be based of the particulars of each situation.

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There's a lot of suing going on these days related to insurance patents. Whether its auto insurance or annuities, insurance companies are taking a strong stance on enforcing their patent rights. An essential element in resolving these disputes is an "invalidity search". An invalidity search will help both parties realize just how strong or weak a patent is. Settlement is then much more likely, as uncertainty about the validity or invalidity of a patent is reduced.

An invalidity search is a very thorough prior art search. It is a search to find anything published anywhere in the world in any language that might make the claims of a patent either anticipated or obvious. The US patent office does a very effective search when it examines a patent. That search, however, represents several hundred dollars' worth of time and effort. An invalidity search performed by expert searchers in support of a litigated patent can run thousands, if not tens of thousands of dollars. That is not unreasonable. Several million dollars or more may be at stake in the litigation.

There are a number of tools and resources used in invalidity searching that are especially effective in finding previously uncited prior art. They include:

• Subject matter experts: For any given invention, there are usually a handful of experts with many years of experience who know the field inside and out. These are the people that can find, for example, presentation overheads from 15 years ago that speak directly to what a patent claim might cover. They can also provide insights into industry standard terms that describe an invention and can be used to further refine key word searching.
• Technical society web sites: The Casualty Actuarial Society (www.casact.org) and the Society of Actuaries (www.soa.org), have comprehensive proceedings, papers and other literature in searchable format on line. An effective way to search these collections from Google is to use either the term "site:www.casact.org" or "site:www.soa.org" in combination with key words related to the invention.
• Archive.org: There is often a lot of useful information on the web but the date of it is uncertain. www.archive.org is a helpful site for finding archived versions of web pages with date stamps.
• Non-English literature: Time and again I've seen cases where a search of non-English literature, especially Japanese literature, has turned up key prior art where thorough searching in English has failed.
• Crowdsourcing: People love to invalidate patents. If you can get the right crowd motivated, they may be able to uncover important references that would not otherwise be easy to find. Article One Partners is a firm that specializes in crowd-funded invalidity searching with thousands of searchers around the world.

Invalidity searching is an important part of the process for resolving patent disputes. The more thorough the search, the less uncertainty there will be about the validity or invalidity of the claims.

Patents are not guaranteed to be valid simply because the patent office issues one. They can always be questioned and often are when big money is involved - for one side or the other. Neither the patent office nor an inventor can afford to do as extensive a search as is implied by an invalidity search for every patent applied for. Therefore, some chances are, taken and may be reasonable given the fact that an inventor, experienced in the art, may come close to being a subject matter expert and, if discussed with associates, may have already put the invention through some crowdsourcing. However, when validity is up for formal review, a more formal and more expensive invalidity search may be in order.