Up to 90% of patents granted today protect incremental improvements or new uses rather than entirely groundbreaking inventions. This statistic reveals something profound about modern innovation: the most valuable discoveries often come from finding novel applications for existing technology rather than inventing something completely new.
Consider Viagra. Pfizer researchers originally developed sildenafil citrate to treat angina and cardiovascular conditions. When clinical trials showed disappointing results for heart disease but unexpected benefits for erectile dysfunction, the company pivoted—and created one of pharmaceutical history’s most commercially successful products through a new use patent.
Or take 3M’s Post-it Notes. In 1968, scientist Spencer Silver developed an intentionally weak adhesive—it could stick lightly but peel off without residue. For years, this “failed” invention had no obvious application. Then colleague Art Fry realized it could create repositionable bookmarks, transforming a laboratory curiosity into a ubiquitous office product worth billions.
Another classic example is Bag Balm, an ointment used initially to soothe cow udders. Although Bag Balm was a well-known product in agriculture, it was later granted a patent for a new use: to treat human baldness. This demonstrates how a familiar product can become patentable again when someone discovers it can treat human baldness, highlighting the value of new use patents for existing inventions.
These aren’t isolated examples. With 418,000 patent applications filed in the U.S. in 2023 (up from 394,000 in 2019), building on established technology has become a core innovation strategy. Industry giants like Apple, Amazon, and Gillette have turned simple improvements into formidable competitive advantages—Amazon’s “1-Click” purchasing patent and Gillette’s three-blade Mach3® razor each demonstrate how finding a unique application can be as valuable as inventing something entirely new.
For SaaS founders and tech startups, new use patents offer a compelling strategy that’s particularly relevant in today’s AI-driven innovation landscape. That machine learning algorithm you developed for fraud detection? It might have untapped applications in medical diagnostics, supply chain optimization, or autonomous vehicle systems. Your novel API architecture could revolutionize IoT device communication. These cross-industry applications of AI and software innovations represent some of the most valuable patent opportunities in today’s market.
This comprehensive guide reveals everything you need to know about securing patent protection for new use inventions. From understanding legal requirements to navigating complex licensing scenarios, you’ll discover how to transform your innovative application into valuable intellectual property backed by proven strategies and recent market data.
What is a New Use Patent?
A new use patent protects the novel application of an existing invention or known composition for a purpose that wasn’t previously recognized or disclosed. Unlike traditional patents that protect new molecules, devices, or processes, these patents claim the method of using something that already exists.
The legal foundation for claiming new uses was bolstered in Titanium Metals Corp. of America v. Banner (1985), where the Federal Circuit held that discovering a new property or use of a known composition does not by itself make a claim to the composition patentable under § 102. Under U.S. patent law, new uses can be claimed as a process under 35 U.S.C. § 100(b), but the claimed subject matter must also meet requirements such as novelty and non-obviousness.
This framework encourages continuous innovation by rewarding researchers who explore unexpected applications for existing products. Patenting a new use often involves finding a novel application for an old product, ensuring that the new use meets patentability criteria and is not obvious in light of prior art.
For example, while aspirin was already known as a pain reliever, its use for preventing heart attacks represented a novel application. The mechanism of action—inhibiting platelet aggregation—represented a different biological pathway than pain relief, making it eligible for new use patent protection.
In the software world, this principle applies as well. A neural network architecture initially designed for image recognition may find novel applications in natural language processing, or a blockchain consensus mechanism developed for cryptocurrency could have unexpected uses in supply chain verification. The patent system recognizes that identifying genuinely new and beneficial uses requires insight, experimentation, and often significant investment, and the process of patenting these new applications is essential for protecting such innovations.
Understanding Improvement Patents
Improvement patents are a cornerstone of the modern patent system, empowering inventors to enhance existing inventions and introduce patentable innovations to the marketplace. Rather than requiring a completely new invention, an improvement patent allows you to protect advancements—such as new features, enhanced performance, or the integration of new technology—built upon existing products or processes. This approach not only encourages continuous innovation but also ensures that valuable intellectual property rights are secured for incremental yet meaningful changes.
To qualify for an improvement patent, your invention must satisfy key patentability requirements: it must be novel, useful, and non-obvious in light of prior art. This means your improvement cannot be something already disclosed or an obvious step to someone skilled in the field. Conducting a thorough patent search is essential to confirm that your innovation is unique and does not overlap with existing patents. By understanding the process and requirements for obtaining an improvement patent, inventors can confidently protect their intellectual property, foster ongoing innovation, and bring new, improved products to market with the assurance of legal protection.
Legal Requirements for New Use Patents
Three fundamental requirements govern all new use patents: novelty, non-obviousness, and utility. Each criterion plays a crucial role in determining whether a new application qualifies for patent protection. Additionally, legal considerations are essential, as understanding the legal framework is necessary to ensure that a new use meets the requirements for patent protection.
Novelty Requirement
The novelty standard demands that the claimed use must not have been previously disclosed or practiced anywhere in the world. The USPTO’s databases contain over 15 million patent documents published since 1976, and international databases add millions more. This massive volume of prior art makes thorough searching essential.
For tech companies, this search extends beyond traditional patent databases. You’ll need to review GitHub repositories, open-source projects, technical blog posts, conference papers, and Stack Overflow discussions. Any public disclosure—even a technical presentation at a developer conference—can defeat novelty.
Patent examiners scrutinize applications to ensure the claimed use hasn’t appeared in any prior art references. Even if the basic product or composition is well-known, the specific application must be novel. The search must extend beyond patent databases to include scientific literature, published papers, and industry publications where research findings often appear before patent filings.
Non-Obviousness Standard
Non-obviousness represents the highest hurdle for new use patents. Patent attorneys emphasize that while it is undoubtedly possible to patent a new way of using an existing product, the biggest hurdle is often overcoming the examiner’s non-obviousness rejections—applicants must clearly show why their method is unique and not just an obvious variation.
Courts evaluate non-obviousness by examining whether prior art would have led someone to expect the claimed use to work. If the new application produces unexpected results or benefits that wouldn’t have been anticipated, it strengthens the argument. The key lies in demonstrating that the leap from known use to a new application required genuine inventive insight rather than routine experimentation.
For software and AI patents, demonstrating non-obviousness often requires showing that your new application solves a technical problem unexpectedly or achieves performance improvements that wouldn’t have been predictable. Benchmark testing, A/B test results, and expert declarations from leaders in your field can provide crucial support.
Utility Requirement
The utility standard mandates that the claimed use must provide a beneficial function or purpose. This requirement is generally straightforward to satisfy—the new application simply needs to serve some useful function. The benefit doesn’t need to be superior to existing alternatives, just provide practical value.
For pharmaceutical applications, utility often involves demonstrating therapeutic benefit through clinical data. For software and tech applications, utility might involve solving a computational problem more efficiently, improving user experience measurably, or enabling new functionality that wasn’t previously possible.
USPTO Evaluation Process
On average, it takes about 20 to 22 months for an applicant to receive the first Office Action.
Source: https://www.uspto.gov/dashboard/patents/
The time from filing to final decision typically ranges from 2 to 3 years. However, the USPTO is implementing measures to reduce pendency, including hiring more examiners and utilizing AI tools for searching.
During this extended review, examiners conduct comprehensive searches through patent databases, scientific literature, and other prior art sources. They may issue Office Actions requesting additional information or raising objections that applicants must address. Success depends on providing clear evidence that the new use wasn’t previously known and wouldn’t have been obvious to practitioners in the field.
Examples of Successful New Use Patents
Real-world examples illustrate both the commercial potential and the diverse applications of new use patents across industries. Each example represents a real-world instance of a new use patent in action.
Software and AI New Use Success Stories
The tech industry provides compelling examples of new use patent strategies. Google’s PageRank algorithm, initially developed for web search, found new applications in analyzing social network connections and academic citation patterns. Machine learning models trained for one purpose—like speech recognition—have been successfully repurposed for detecting fraudulent transactions, predicting equipment failures, and diagnosing medical conditions.
Consider how computer vision algorithms initially designed for autonomous vehicles are now being patented for new uses in agricultural crop monitoring, retail shelf inventory management, and quality control in manufacturing. Each application represents a distinct inventive leap that qualifies for patent protection.
The Post-it Note Revolution
Not all new use innovations are pharmaceutical or digital. 3M scientist Spencer Silver developed an adhesive in 1968 that seemed like a failure—it was intentionally weak, sticking lightly but peeling off without residue. For years, no obvious application existed for this reusable, low-tack adhesive.
That changed when Art Fry had the idea to use Silver’s adhesive to create a repositionable bookmark that would stick to paper without damaging it. 3M secured patent protection on aspects of this concept, ensuring they reaped the benefits of this innovation. The Post-it Note became one of history’s most successful office supply products, demonstrating how a creative leap in application can transform overlooked technology into a ubiquitous consumer product.
Industry Giants and Iterative Improvements
New use and improvement patents serve as strategic weapons for technology companies. Industry giants like Gillette, Apple, and Amazon have each turned simple improvements into formidable competitive moats.
Amazon famously patented its “1-Click” online purchasing method—not a new device or software per se, but a new use of web technology to simplify checkout—which gave it a competitive edge in e-commerce for many years. Apple has obtained numerous patents for repurposing existing technologies in new ways, often creating an improved version of a product or technology, from multi-touch gestures adapted for different devices to novel uses of sensors in wearables.
Pharmaceutical New Use Patents: A Multi-Billion Dollar Strategy
The pharmaceutical industry relies heavily on new use patents for extending product lifecycles and maximizing research returns. The global drug repurposing market was valued at approximately $35 billion in 2024 and is projected to reach over $59 billion by 2034, underscoring the economic significance of new therapeutic applications in medicine.
Viagra’s story—developed initially for cardiovascular conditions but repurposed for treating erectile dysfunction—illustrates how new use patents can emerge from unexpected research results. The erectile dysfunction application wasn’t anticipated from the cardiovascular research and represented a genuinely novel use that created one of the most commercially successful pharmaceutical products in history.
Source: FDA.gov
These supplemental approvals, often protected by new use patents, reflect how frequently pharmaceutical companies discover new uses for existing medicines.
Patent Search and Prior Art Analysis: The Critical First Step
Conducting a comprehensive patent search represents the most critical step before filing any new use patent application. Most patents granted today are for improvements or new uses, making it especially important to conduct a thorough search to identify relevant prior art. Given the massive volume of existing knowledge, thorough searching is essential to ensure your new use hasn’t been anticipated.
At Rapacke Law Group, we’ve seen too many innovators rush to file without proper prior art analysis—only to face devastating rejections months later. Our transparent fixed-fee approach to patentability searches ensures you receive comprehensive analysis without unexpected hourly billing—no surprise bills for revisions or follow-up questions. Our 100% refund guarantee means that if the search reveals your invention isn’t novel, you pay nothing. This is The RLG Guarantee—experienced US attorneys lead your protection strategy from start to finish.
Step-by-Step USPTO Database Search
Begin your search using the USPTO’s patent database at patents.uspto.gov. Start with keyword searches related to your invention, including the base product name, chemical composition (for life sciences), or technical functionality (for software/hardware). Use both common terminology and industry jargon to ensure comprehensive coverage.
For software and AI inventions, search terms should include algorithm names, data structure types, specific technical implementations, and the problems being solved. Don’t just search for what your invention does—search for alternative ways of achieving similar results.
Search patent classifications relevant to your invention. The USPTO uses a detailed classification system that groups similar inventions. With AI-related inventions appearing in 60% of all technology subclasses as of 2023, cross-industry searches have become essential for tech innovations.
Scrutinize patent abstracts and claims. Pay particular attention to claims that cover your intended use, even if the patent’s primary focus differs from your application. Claims define the exact scope of patent protection and determine whether your new use might infringe existing patents.
International Database Searches
Expand your search beyond USPTO databases to include international patent collections. The European Patent Office (EPO) maintains Espacenet, a comprehensive database covering patents from over 90 countries. Similarly, the World Intellectual Property Organization (WIPO) provides access to international patent applications filed under the Patent Cooperation Treaty (PCT).
Japanese and Chinese patent databases contain crucial prior art that may not be found in Western collections. For tech companies, Chinese patents are particularly important, as China now files more AI and software patents than any other country. Use professional translation services or automated translation tools to review foreign-language patents that might be relevant to your invention.
Scientific literature searches are equally crucial for establishing novelty. Many research findings are published in journals before patent applications are filed. Search databases like PubMed, Google Scholar, arXiv (for computer science), IEEE Xplore, and industry-specific journals for any disclosure of your claimed use. New uses or enhancements of old products are often disclosed in these sources, especially when new technologies are integrated to improve existing solutions.
Timeline Recommendations
Complete your thorough search at least 3-6 months before filing your provisional patent application. This timeline allows time for analysis and gives you flexibility to refine your invention or strategy based on what you find.
Professional prior art searches typically take 2-4 weeks to complete. If you’re searching yourself, budget a solid 40-60 hours for a comprehensive review of patents and literature. However, the investment in professional searching often pays dividends—our experienced patent attorneys know where to look and what red flags to identify.
Document your search process carefully. Maintain detailed records of where you searched (databases, libraries), what keywords and classifications you used, and which references you reviewed. If the USPTO later raises a question or cites prior art against you, having a record of your diligent search can help in formulating responses and demonstrate good faith in disclosure.
Filing a New Use Patent Application
The patent application process for new use inventions follows standard USPTO procedures but requires careful attention to claim drafting and documentation specific to new applications of existing technology.
Provisional Patent Application Process
Most new use patent applications begin with a provisional patent application. This filing establishes an early priority date while providing 12 months to prepare and file a complete non-provisional application. Provisional applications are particularly valuable for new use inventions because they allow time to develop additional supporting data while securing an early filing date—critical in our first-to-file system.
A provisional application must contain a detailed description of your new use invention, including how it differs from previously known applications. While provisional applications don’t require formal patent claims, they include a clear statement of what you consider to be your invention. This statement helps establish the scope of your eventual patent claims.
At Rapacke Law Group, our transparent fixed-fee model covers your entire provisional patent application process—a competitive advantage over traditional hourly billing. Unlike firms charging by the hour, you’ll know exactly what you’re investing upfront—with no surprise bills for revisions or follow-up questions. This is part of The RLG Guarantee: experienced US patent attorneys lead your application from start to finish with **one transparent flat-fee covering your entire provisional patent application process**.
Required Documentation
The detailed description forms the heart of your patent application. This section must provide enough information for someone with ordinary skill in the field to understand and practice your invention. It is crucial to clearly identify the inventor and detail their specific contribution to the creation or improvement described in the application. For new use patents, emphasize how your application differs from known uses and explain any unexpected benefits or results.
For software innovations, this means providing architectural diagrams, flowcharts, pseudocode, and performance benchmarks. For AI/ML applications, document your training methodology, data preprocessing techniques, and any novel features or modifications to existing algorithms. The more technical detail you provide upfront, the stronger your foundation for overcoming obviousness rejections.
Include comprehensive background information about the existing invention and its known uses. This context helps patent examiners understand the significance of your new application and establishes the foundation for demonstrating novelty and non-obviousness.
Document any experimental data or evidence supporting your new use claims. A/B testing results, user metrics, performance benchmarks, or technical validation strengthen your application and help overcome potential obviousness rejections. Even preliminary data can be valuable for establishing that your new use provides genuine benefits.
Claim Drafting Strategies
Claims define the exact scope of patent protection and require careful drafting for new use patents. Method claims typically work best for new use applications, focusing on the steps involved in using the existing invention for the new purpose. When drafting claims for improvements or new uses, it is essential to consider whether your improvement builds upon an original patented invention. In such cases, you may need a license from the original patent holder to use or sell the improved product to avoid infringement issues.
For software patents, well-drafted claims might cover:
- The specific computational steps your algorithm performs.
- Novel data structures or transformations.
- Unique combinations of existing technologies.
- Improvements in processing speed, accuracy, or resource utilization.
Substitution inventions—where a component of an existing product is replaced with a new one—can also be protected by improvement patents. Additionally, patentable enhancements must meet the criteria of novelty, usefulness, and non-obviousness to qualify for protection.
Draft claims that emphasize the novel aspects of your application while avoiding unnecessary limitations. Broad claims provide stronger protection but face higher scrutiny during examination. Include both broad and narrow claims to maximize your chances of obtaining some patent protection.
Our patent attorneys at RLG specialize in crafting claims that capture maximum protection while remaining defensible during examination. We’ve successfully prosecuted hundreds of new use patents, and we know precisely how to position your innovation for approval.
Protecting Existing Products
Securing improvement patents for existing products is a powerful strategy for maintaining and strengthening your competitive advantage. As markets evolve, businesses often find opportunities to enhance their offerings by incorporating new technologies, adding innovative features, or discovering new uses for established products. By pursuing improvement patents, you can ensure that these valuable enhancements are protected from imitation, helping to safeguard your market share and brand reputation.
Navigating the complexities of patent law requires expertise, and working with a skilled patent attorney is crucial. A patent attorney will guide you through the patent application process, ensuring that your documentation is thorough and that your claims are clearly defined. Before filing, it’s vital to conduct a comprehensive patent search to identify any potential infringement issues and to determine whether your improvement meets the criteria for patentability. By proactively protecting your existing products with improvement patents, you not only prevent competitors from making, selling, or using similar innovations but also position your business as a leader in technological advancement.
Avoiding Patent Infringement
When developing improvements to existing inventions, avoiding patent infringement is a critical step in the innovation process. Patent infringement can occur if your new product or process makes, uses, or sells technology that is still protected by an existing patent, without authorization from the original patent holder. To minimize this risk, it’s essential to conduct a thorough patent search to identify any existing patents that could present potential infringement issues.
Consulting with a patent attorney is highly recommended, as they can help you interpret the scope of existing patents and assess whether your improvement is sufficiently distinct. If your innovation builds upon a patented invention, you may need to negotiate licensing agreements with the original patent holder to use their technology legally. Taking these precautions not only helps ensure that your improvement patent application is valid and enforceable but also protects your business from costly legal disputes. By being diligent in your patent search and legal strategy, you can confidently bring your improved inventions to market while respecting the intellectual property rights of others.
New Technologies and Patent Applications
The rapid emergence of new technologies presents exciting opportunities for inventors and businesses to enhance existing products and secure valuable intellectual property through improvement patents. When integrating new technologies into established products, it’s essential to assess the patentability of your innovation and to take prompt action to protect your rights. Filing a provisional patent application is a strategic first step, as it secures an early filing date and provides temporary protection. At the same time, you refine your invention and prepare a full application.
Both the European Patent Office and the U.S. Patent and Trademark Office offer clear guidance on the patent application process and the standards for patentability. Understanding these requirements is essential for inventors seeking to navigate the patent system effectively. By leveraging improvement patents, businesses can protect their intellectual property rights, gain a competitive advantage, and stay ahead in fast-moving markets. Embracing new technologies and securing timely patent protection ensures that your innovations are not only recognized but also legally safeguarded, paving the way for successful commercialization and long-term growth.
Common Challenges in New Use Patent Applications
New use patent applications face predictable challenges during USPTO examination. The nature of the improvement or new use can influence the types of challenges encountered during the patent application process. Understanding these obstacles helps you prepare stronger applications and respond effectively to examiner rejections.
Obviousness Rejections
Obviousness represents the most common ground for rejecting new use patent applications. Examiners often argue that the new use would have been “obvious to try” based on known properties of the original invention. To combat these rejections, you must demonstrate unexpected results or benefits that were not anticipated.
Provide evidence showing that experts in the field didn’t recognize the potential for your new use. Expert declarations, survey data, or scientific literature explicitly stating that the new use was surprising or counterintuitive can strengthen your non-obviousness arguments.
For tech patents, this might include:
- Industry expert testimony that your approach was contrary to conventional wisdom.
- Failed attempts by competitors to solve the same problem.
- Technical papers stating the problem was unsolved.
- Unexpected performance improvements (e.g., a 10x speed increase when only a 2x increase was anticipated).
Document any technical challenges or barriers that had to be overcome to achieve your new use. If the application required solving unexpected problems or developing new techniques, this evidence supports non-obviousness by showing that the new use wasn’t straightforward.
Prior Art Citations
Examiners may cite prior art references that disclose your claimed use. Carefully analyze these citations to identify differences between the cited references and your specific application. Often, prior art may disclose related uses but not the exact application you’re claiming.
Distinguish your invention based on specific parameters, conditions, or results that aren’t disclosed in the prior art. For software inventions, this might involve demonstrating that cited references:
- Use different algorithmic approaches.
- Solve fundamentally different technical problems.
- Require different input data or produce different outputs.
- Operate in different technical environments or contexts.
Our experienced patent attorneys know how to navigate these challenges. We’ve successfully overcome thousands of obviousness rejections by crafting compelling arguments that highlight the inventive leap your new use represents.
Appeal Processes
If your application receives a final rejection, you have several options for continuing prosecution. A Request for Continued Examination (RCE) allows you to submit additional arguments or evidence addressing the examiner’s concerns.
At RLG, our flat-fee pricing covers office action responses, so you won’t face unexpected bills when navigating the prosecution process. We’re invested in your success from start to finish.
Your Next Steps to New Use Patent Success
Protecting your innovative application through a new use patent requires strategic planning, thorough preparation, and expert legal guidance. The difference between a granted patent that protects your competitive advantage and a rejected application that wastes time and money often comes down to how you approach the process.
The bottom line: Weak new use patents invite competitors to design around your claims or challenge your protection. Strong new use patents—backed by comprehensive prior art searches, well-crafted claims, and solid evidence of non-obviousness—create formidable barriers that keep competitors at bay and maximize your market opportunity.
Here’s what’s at stake: Without proper patent protection, you’re giving competitors a roadmap to your innovation. They can watch your success, reverse-engineer your approach, and launch competing products without consequences. In a first-to-file system, hesitation means someone else might patent your own innovative application. You’ll lose not just patent rights, but market share, revenue, and investor confidence.
Take action now:
- Schedule a Free IP Strategy Call with our experienced patent attorneys to evaluate the patentability of your new use invention and develop a comprehensive protection strategy tailored to your business goals. Our tech IP specialists understand AI, software, and SaaS innovations—ensuring your strategy aligns with your funding and competitive advantage goals.
- Conduct a professional prior art search to identify potential obstacles before filing. Our patentability search service includes:
- FREE strategy call with the RLG team
- Invention discovery call with your attorney to gather search information
- Comprehensive search of US and foreign patents and published applications
- Detailed patentability report and review call for IP protection strategy
- 100% refund if the search finds the invention is not novel
- Complete refund or another search if patentability issues arise (your choice)
- Document your invention thoroughly with technical specifications, performance data, and evidence of unexpected results that distinguish your application from prior art.
- File your provisional patent application to secure your priority date in the first-to-file system—delay could mean losing rights to your own innovation.
- Develop your commercialization strategy accounting for licensing opportunities, freedom-to-operate considerations, and potential blocking patents.
The opportunity ahead: New use patents offer a proven pathway to capture value from existing technology in unexpected ways. With AI-related inventions appearing in 60% of all technology subclasses as of 2023, and the software patent landscape evolving rapidly, cross-industry applications of existing technology represent one of the most accessible routes to valuable IP protection.
Your next move determines whether you’ll join successful innovators like Amazon (1-Click), Apple (multi-touch applications), and countless pharma companies that turned new uses into billion-dollar opportunities—or watch from the sidelines as competitors patent applications you discovered first.
The investment in proper patent protection pays dividends through exclusive market rights, increased company valuation, stronger negotiating position with investors and acquirers, and the ability to monetize your innovation through licensing or direct commercialization.
Don’t let your innovative application become someone else’s patent. Contact Rapacke Law Group today to secure the protection your invention deserves.
Learn more about protecting your tech innovations in our AI Patent Mastery Guide and SaaS Patent Guide 2.0.
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To Your Success,
Andrew Rapacke, Managing Partner, Registered Patent Attorney, Rapacke Law Group
