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I have an Invention ... Now What?
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   Patent that needs updating question
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OregonInventor
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Patent that needs updating question
« on: Oct 20th, 2007, 4:30pm »
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I am really in need of some advice. I developed a product that I assigned to a small group of investors that turned out to be scammers. For the past two years I have fought them in court to a standstill. Now they have violated the agreement reached in a settlement hearing and refuse to abide by the terms. The product has a market potential in excess of 2 billion per year backed by two studies. The patent that I assigned to them has a major flaw that I let slide when I realized they were taking the investors money and spending it on themselves without any intention of ever manufacturing anything. The nom-compete section of the settlement is really easy to break but, I am concerned about the patent. Can I apply for another patent with the upgraded information or can someone else apply for the patent with the proper information and get it? The patent they have won't work as described and I still don't understand how they were granted it. It is a basic flaw. Any advice would be greatly appreciated.
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Wiscagent
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Re: Patent that needs updating question
« Reply #1 on: Oct 20th, 2007, 5:13pm »
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Assuming that the improved product (or process) novel and non-obvious over the prior art (including the patent that has already issued) then the inventor of the improved product can apply for and have a good chance of getting a patent granted.  But if the improved product is disclosed or is obvious over the prior art, then it is probably not worth the money and effort to file a new patent application.
 
"The patent that I assigned to them has a major flaw ..."  perhaps, but the flawed patent can still be valid and can claim the improved product or process.  It depends on the specific nature of the flaw.
 
You have at least three distinct, but related legal issues:
 - If you sell this product would be infringing the existing patent?
 - Is it worthwhile to apply for a patent on the improved product?
 - If you make the improved product would you be violating your contract, and what are the legal implcations of doing so?
 
I suggest that you (or better yet a patent attorney) consider each of these perspectives before making a decision.
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Richard Tanzer
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biopico
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Re: Patent that needs updating question
« Reply #2 on: Oct 20th, 2007, 7:00pm »
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on Oct 20th, 2007, 4:30pm, OregonInventor wrote:
I am really in need of some advice. I developed a product that I assigned to a small group of investors that turned out to be scammers. For the past two years I have fought them in court to a standstill. Now they have violated the agreement reached in a settlement hearing and refuse to abide by the terms. The product has a market potential in excess of 2 billion per year backed by two studies. The patent that I assigned to them has a major flaw that I let slide when I realized they were taking the investors money and spending it on themselves without any intention of ever manufacturing anything. The nom-compete section of the settlement is really easy to break but, I am concerned about the patent. Can I apply for another patent with the upgraded information or can someone else apply for the patent with the proper information and get it? The patent they have won't work as described and I still don't understand how they were granted it. It is a basic flaw. Any advice would be greatly appreciated.

 
Well, you can also consider the following:
 
Assuming the patent has invalid claims although a granted patent is presumed to be valid, you can make and sell the products.  Once you are sued for the patent infringement, you can  fight back and make the patent invalidated based on the evidence that the patent is not enabled =  no infringement.
 
You are advised to seek a legal advice from a qualified IP attorney.
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OregonInventor
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Re: Patent that needs updating question
« Reply #3 on: Oct 21st, 2007, 11:08am »
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I thank you both for the replys. In light of new laws at the patent office, could another company build a product that they saw as a flawed patent and correct the flaw and would they be more likely to be granted the patent if the first company isn't building the product and shows no sign of ever producing the product? Thanks again and I will leave it at this point for now. I will contact an attorney prior to any actual progress.
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