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Patent Infringement
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   Patent Pending Infringement
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pentazole
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Re: Patent Pending Infringement
« Reply #5 on: Sep 11th, 2007, 12:38pm »
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Hmmm... so as someone who's not so savvy in the infringement world, you can actually sue/threaten others with infringement consequences even though your patent is not issued?  wouldn't that be getting way ahead of yourself?  what if the claims when issued are so much narrower that they're not infringed upon any more?  wouldn't it make more sense to just wait and then collect royalties after the patent issues?
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stcrim
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Re: Patent Pending Infringement
« Reply #6 on: Sep 11th, 2007, 2:03pm »
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pentazole
 
Sounds great in theory!  Getting a patent also sounded great, however I'm facing 4 more years before it's even looked at.
 
There will be a lot of water under the bridge by then.  We don't have plans to chase them around while it's pending.  What I would like to do is educate them on what can happen though I'm betting that's why they are so comfortable infringing.
 
Originally we were going to partner with them - live and learn.
 
-s-
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JimIvey
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  jamesdivey  
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Re: Patent Pending Infringement
« Reply #7 on: Sep 11th, 2007, 2:31pm »
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on Sep 11th, 2007, 12:38pm, pentazole wrote:
Hmmm... so as someone who's not so savvy in the infringement world, you can actually sue/threaten others with infringement consequences even though your patent is not issued?  wouldn't that be getting way ahead of yourself?  what if the claims when issued are so much narrower that they're not infringed upon any more?  wouldn't it make more sense to just wait and then collect royalties after the patent issues?

I'll take the claim scope first because it's the easiest.  You only collect on provisional rights if the claims issue substantially as published.  
 
Next, you don't sue or even overtly threaten suit.  The idea is to put the accused on actual notice.  Constructive notice (e.g., putting "patent pending" and maybe an application no. or publication no. on products) is insufficient.  So, you send them a copy of your published application.  What does the letter look like?  I don't know.  I'm guessing the tone is along the lines of "Here's a pending US patent application and it may be related to your business.  We think you should look it over and let us know if you have any questions/comments."
 
You sue after issuance, like everybody else.  However, with substantially identical published claims and actual notice prior to issuance, reasonable royalty damages can date back to the time of actual notice.
 
Regards.
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James D. Ivey
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stcrim
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Re: Patent Pending Infringement
« Reply #8 on: Sep 11th, 2007, 3:05pm »
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Jim,
 
The company that's infringing has resold our system to about 100 other websites for a monthly fee that we can identify.  
 
I wonder if the wise recipient of the patent Pending letters wouldn't be those websites owners?
 
I wonder if that could come back to bite us by being some disruption of the infringers business by contacting their clients?
 
Any thoughts?
-s-
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JimIvey
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  jamesdivey  
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Re: Patent Pending Infringement
« Reply #9 on: Sep 11th, 2007, 3:48pm »
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Well, that's a matter patent enforcement strategy.  You might ultimately like those same customers to be your customers.  Whether you might create some ill will with some of those potential customers is a business judgment call.  But, anyone that could later be held to infringe your patent (once it issues) is a legitimate recipient of one of letters.  Whether you ought to send them letters is a different  matter.
 
Regards.
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James D. Ivey
Law Offices of James D. Ivey
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