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Patent Infringement
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   Patenting an Already Existing Item
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   Author  Topic: Patenting an Already Existing Item  (Read 969 times)
JonF
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Patenting an Already Existing Item
« on: Oct 4th, 2007, 9:06am »
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Here's an odd one (as far as I'm concerned). My company (and several others) has been manufacturing and selling a specific tool for the last 20+ years with permission of the original inventor and patent holder. He died in 2005. Now someone else got a patent on it somehow and is forcing anyone who is producing it to stop, threatening a law suit because they're infringing on his intellectual rights. How is this possible? It's obvious this tool is not something the new patent holder ever "invented" as it has been around for over 20 years and he had nothing to do with it's original creation.
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JSonnabend
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Re: Patenting an Already Existing Item
« Reply #1 on: Oct 4th, 2007, 11:25am »
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From the sounds of it, the patent is invalid.  If the present patentee knows as much, then he may be on the hook for attorneys' fees, etc., if anyone challenges in court accusations of infringement.  Heck, the patentee might even be liable for damages under antitrust statutes.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
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JSonnabend@SonnabendLaw.com
JonF
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Re: Patenting an Already Existing Item
« Reply #2 on: Oct 4th, 2007, 11:47am »
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So what kind of info would we need to have to show this guy is nuts and his claim is invalid? Unfortunately, we can't find the original patent number (at least with the resources at our disposal), but we do have old CAD Drawings and catalogs dating back to the '80s showing this tool had been in production for years.  
 
I just want to give the owners as much info as possible before we call in the lawyers as that costs just a touch more than my hourly rate to give him an idea of what we need.
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MattB
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  mbycer   MBycer
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Re: Patenting an Already Existing Item
« Reply #3 on: Oct 10th, 2007, 4:01pm »
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You need to prove everything you state.
 
First, if you have the inventor and patent holders' name(s) you can find the patent.
 
Second, any record of conversations or contracts are useful.
 
Any work dating before the patentee claims invention or publication more than 1-year before his filing date should be enough to invalidate the patent.
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Matthew L. Bycer
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http://www.cvglaw.com
pentazole
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Re: Patenting an Already Existing Item
« Reply #4 on: Oct 11th, 2007, 1:01am »
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well, wait a second now.  This other person who has a patent on it, it's obviously a new patent and not the original one you are talking about.  How is the patent different from the original?  is it issued?  is it still pending?  does it have a chance to issue as filed?
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