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(Message started by: Dave Moody on Aug 20th, 2006, 5:20am)

Title: incorporating patented material into new product
Post by Dave Moody on Aug 20th, 2006, 5:20am
I have an idea to develop a product that is not in itself unique but by using a patented metalurgic material from another company, the end product would potententially revolutionize present state of the art.  The company with patent appears to be licensing their material to several industries outside ours.  The end product would take an existing industry item and change the performance to exceed or be different than anything currently marketed.  Since the entire end product would hinge on the use of the patented material.  My question is what options or approach should be taken to move forward?  We do not currently produce the end product but are in the industry that encompasses this product.  We have access to manufacturers that would potentially be interested in this process and may wish to either license or could have them oem & market ourselves if able to protect and provisionally patent end product.    Another thought is that we are not a heavy hitter in this particular product segment so licensing to us from material mfg may prove difficult.  Some type of patent protection would seem best.  My dilemma is that I don't know how one can patent a product/idea which relies on another's patent without  first establishing some type of initial cooperation or agreement with the material firm.
I would appreciate any insight on methods to move forward and/or approach company with patented material without essentially handing them an entire new market and getting compensated with only a "thanks".  I appreciate your time and assistance and look forward to receiving your response.

Title: Re: incorporating patented material into new produ
Post by Wiscagent on Aug 20th, 2006, 7:46am
The fact that your (potential) supplier has a patent on their material has little to do with the patentability of your product.  There is no requirement in the patent law that you have any kind of relationship with the suppler.

I suggest that you work with a patent agent or patent attorney to file a patent application on your product.  After you have filed a patent application, contact the supplier and try to buy the material, (ideally) without reveling your intended use or agreeing to a restrictive contract.  

You are better off not reveling your intended use because at the time you contact the supplier it is unlikely that you will know the scope of any patent which may issue from your application.  Applying for a patent does not guarantee that (i) you will get a patent; or (ii) if you get a patent that the patent will be a useful business tool restricting the activity of your competition.

If the supplier insists on a restrictive contract you should use the services of an attorney familiar with purchase contracts (this may the same person as the patent attorney mentioned earlier).

Good luck,

Richard Tanzer

Title: Re: incorporating patented material into new produ
Post by JimIvey on Aug 20th, 2006, 9:49am
I'll just add a couple of things.

First, you can't provisionally patent anything.  No such thing exists.  You either patent something or you don't.  To patent something, you need a real patent application, not a provisional one.  A provisional application is an extra step with extra effort and extra expense for those who value what a provisional application provides.  It is not an alternative to a real application.

Second, it's not clear that this is a concern, but it's a common concern for the type of question you pose:  what is your liability for patent infringement in using someone elses patented material(s)?  Generally, no liability if you buy at retail -- most often, the seller at retail is either the patent holder or a duly licensed seller, and the patent rights have been exhausted by the time you get the material(s).  I should add that by "retail" I mean the open market, such as from a legitimate wholesaler.  You should take some comfort in the fact that most patentees prefer not to sue potential customers -- just competitive suppliers.

There are two exceptions to watch out for.  First, the patent holder merely licenses the technology to you (or the seller) and put limits on what can be done with the material.  If you're the licensee, you would know all about that since you would have sold the license.  Second, the seller isn't licensed and your use of the material is unauthorized.  That one is hard to tell, although you can guess from the reputation of the party you purchase from.  If you purchase from a large, well-known company, odds are they're licensed or at least will take the heat for you if there's a problem.  If you buy wholesale lots on eBay from somewhere in Asia, you may have problems -- especially if they want to be paid by wire transfer or Western Union (an official no-no on eBay).


Title: Re: incorporating patented material into new produ
Post by biopico on Sep 16th, 2006, 7:52pm
Would it be feasible if Moody applies for a patent first and get his issued?  The other party and Moody would try to get a mutual license together to make the joint product more profitable than the original one.  Both parties are likely to be happy.  NO?

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