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Patent Infringement
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   patent pending infringement
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max
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patent pending infringement
« on: Mar 13th, 2005, 1:26pm »
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we have  two patents pending on a new product.  we are a very small company.  this idea is very simple but several products can be made from it.  we showcased our very first of many products based on this single idea at a tradeshow about six months ago.  we have been notified that a very large company has made our exact product and is now showcasing it as a new product from their company.
 
our attorney has written them a letter notifying them of their infringement however our patent has not been looked at by examiners yet.  
 
we are fairly sure that they do not have a patent pending or they would have notified us of our infringement after the last tradeshow.
 
our attorney is very confident that they are infringing on our pending patent.  he is planning to apply to expediate the examiner process
 
we're wondering what kind of things can happen from here and if we should do anything else.  
thank you,
max
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JimIvey
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  jamesdivey  
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Re: patent pending infringement
« Reply #1 on: Mar 13th, 2005, 7:09pm »
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You can file a Petition to Make Special based on current infringement.  That should, in theory, expedite prosecution through the Patent Office.  There are other grounds for a Petition to Make Special, but the one that comes to mind in your case is the one based on actual infringement.
 
Of course, you have no rights on which to sue until your patent issues.  So, making that happen as soon as possible is the best you can hope for at this point.
 
However, it's never too early (after filing) to negotiate a license if you think the other party would be interested.  If your application was filed less than a year ago, I like to point out that foreign rights are still available if some large company would want to buy those rights (and prosecute foreign applications at their own expense).
 
Regards.
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James D. Ivey
Law Offices of James D. Ivey
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max stockton
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Re: patent pending infringement
« Reply #2 on: Mar 14th, 2005, 8:45am »
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thanks for the quick reply.  should we be the ones to approach them about licensing the product or should we wait to see if they come to us?  what do you mean by foreign rights?  we do have international patents pending also.
thanks
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JimIvey
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  jamesdivey  
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Re: patent pending infringement
« Reply #3 on: Mar 14th, 2005, 10:35am »
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Odds are that potential licensees won't come looking for you.  If your applications are not published yet, there's no way for them to know about your applications.  So, if you don't call them, they won't call you (most likely).
 
Now, just to be fair and accurate, I received a call last week from someone hoping to license their patent.  I was quite excited for my client and put the calling party in touch with their licensing attorney.  So, it does happen.  But don't count on that happening, unless you've won the lottery twice.
 
With international applications pending, it sounds like you have your foreign rights protected.  Just keep in mind that there are no international patents (EPO notwithstanding), just international applications.  So, if I understand correctly what you mean by international applications (e.g., PCT), you will eventually have to follow up with applications in individual countries and/or the EPO and, to the extent they're outside the US, I call them "foreign patents."  Filing individual applications in respective countries gets really expensive really fast, so passing that onto a licensee (in exchange for the patent enforcement rights, for example) is a good thing if you can do it.
 
Regards.
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James D. Ivey
Law Offices of James D. Ivey
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max stockton
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Re: patent pending infringement
« Reply #4 on: Mar 14th, 2005, 11:28am »
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so if I'm understanding you correctly your saying that we sell them the foreign rights.  they would then have to apply for patents in each country and then defend the patent.  we would just be getting money up front for the foreign rights and no royalties on the product that they sell.
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