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Patent Infringement
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   Can New Design Infringe Existing Utility
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   Author  Topic: Can New Design Infringe Existing Utility  (Read 1774 times)
dcall
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Can New Design Infringe Existing Utility
« on: Nov 17th, 2007, 8:35am »
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A Design patent application is awaiting USPTO examination with typical illustrations and "views" claim. Prior art is disclosed for a Utility Patented article. Both articles provide the same function and are noticeably different in appearance and complexity. Affixing either article to a surface for use is claimed in the Utility patent. The "basic" type of adhesive (with reference to other types) to effect affixing the article in the Utility patent is disclosed. The exact exact type, brand, formula (one brand or formula vs another) product identifier, method, preparation of surfaces, additives, etc. to effect adhesion is not disclosed. The process, adhesive type, preparation and additives are critical to the method of affixing the Design article. The affixing products are commercially available as are other common fasteners, substrates, etc. which may be used to construct either article. Is there an infringement of affixing adhesives types made by the Design Patented article upon the Utility Patented article should each use the same type of adhesive?
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JSonnabend
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Re: Can New Design Infringe Existing Utility
« Reply #1 on: Nov 20th, 2007, 7:54am »
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Patents don't infringe other patents, only products (or processes) infringe, so the answer is "no, the design patent does not infringe the utility patent".
 
- Jeff
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SonnabendLaw
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JSonnabend@SonnabendLaw.com
yahsureyoubetcha
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Re: Can New Design Infringe Existing Utility
« Reply #2 on: Dec 6th, 2007, 7:29pm »
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on Nov 20th, 2007, 7:54am, JSonnabend wrote:
Patents don't infringe other patents, only products (or processes) infringe, so the answer is "no, the design patent does not infringe the utility patent".
 
- Jeff

That may be true (tautologically so), but I don't think that's what he's asking.
 
If I'm reading his question correctly, he's wondering whether he'll be able to make and sell his product if he gets a design patent, and the answer to that is "you might still be infringing on that utility patent, or some other patent(s), and still get sued for making and/or selling your product."  It depends on the claims of the utility patent (and those of all other existing enforceable patents), and whether they are applicable.
 
From what was written, it sounds like the specific utility patent is a method for using a specific adhesive to affix articles to a surface.  If that's the case, and if the article (with design covered by the design patent, assuming it issues) uses the adhesive to be affixed to a surface by that method, then there is infringement.  However, by using some other method to affix the article to the surface, you would probably avoid infringing that specific utility patent.
 
Without a better description of what's going on, it's impossible to say.  The design patent only covers the right to exclude others from making a product with that design.  It doesn't mean that the inventor has any right to make the given product to begin with, or to use it in a given manner, or to use an adhesive to affix the item to a surface by a particular method.
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JSonnabend
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Re: Can New Design Infringe Existing Utility
« Reply #3 on: Dec 14th, 2007, 8:27am »
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You may be right about the OP's intent, yahsurewhateveryournameis, I won't argue, but I have had many a client ask me exactly what the OP asked, namely, would my patent infringe someone else's patent.  That's the question the OP asked on its face, and so that's what I answered.  If the OP had any follow up, he'd be free to ask.
 
- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
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