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(Message started by: stcrim on Sep 8th, 2007, 4:13pm)

Title: Patent Pending Infringement
Post by stcrim on Sep 8th, 2007, 4:13pm
I have a patent pending and I have a company (husband and wife) that has knowingly been infringing on it for quite some time now.  My patent attorney tells me he can write them a letter for $500 and inform them of what they already know, that they are infringing on my pending patent.  My attorney also tells me this will be in the pending status for 4 years and my hands are tied during that time.  He also say to expedite it right now would not be a good idea since almost all patents are being turned down for little or no reason at this time.

I just read about the American Inventor's Protection Act of 1999.  I understand I can serve notice to the husband and wife possibly making them liable for that date forward.  My first question is, is that true?

I think they are relying on the advice of a general law practice and my not know about the 1999 AIPA.  I'm guessing a general law firm would have told them they only become liable from the date of the Patent issuing, and only if it issues.  All I want them to do is either stop - or add a link to my patent application on the USPTO site.  If they will add the link, I'll give them a license for the term it is pending.  I'm not looking for a pound of flesh, just a way to keep some control over my web application.  Because there is no patent pending on the websites system anyone is free to steal it from the people who took it from me. Go figure!

By the time the patent is examined, my system could be on tens of thousands of websites.

Would it be a good idea to email them with the AIPA information and then send them a copy of the Patent Pending by registered mail.  I doubt they will except the registered mail so the email would be the only real way to bring them up to speed.

All I really want them to do is put the patent pending notice on it for now.  Any thoughts?

-s-

Title: Re: Patent Pending Infringement
Post by JimIvey on Sep 9th, 2007, 6:35pm
Putting them on notice only helps if your application is published.  You don't say whether it's published, so it's hard to say whether this will help.

To put them on notice, you need to send them a copy of your published application.  I'd recommend you use someone with familiarity of patent litigation to write the letter for you.  

To have the notice be useful for you, you'll need the published claims to be substantially similar to the claims that ultimately issue.  Maybe you'll be lucky and that will happen.  However, you can make some luck for yourself if you have some time prior to publication.  You can do some independent analysis of your application and prior art and try to "pre-exam" your application and amend the claims early enough to have them included in your published application.

For those of us playing buzz-word bingo, here is some "out of the box" thinking.  I have no idea how the law would resolve this....

Suppose your application is published with claims you don't like (liked them when you filed but now think otherwise).  You amend the application to have claims you like now.  In your letter including your published application, include a copy of the amendment from public PAIR (pubished, right?). Does that count?  I think it comes down to a technical reading of the applicable statutes/rules.

Regards.

Title: Re: Patent Pending Infringement
Post by PA on Sep 9th, 2007, 6:59pm
The OP suggested that he has a "link to [his] patent application on the USPTO site."  I took this to mean that his patent application is published, although it's not entirely clear.

Title: Re: Patent Pending Infringement
Post by stcrim on Sep 9th, 2007, 8:17pm
Jim,

Yes, it is published, we paid to have it published early.  I have a link to it in my email signature so anyone who receives an email from me knows about it.

I don't want to chase my tail but would like to know what can be done and what makes sense.  How can I contact you away from the public arena?

-s-

Title: Re: Patent Pending Infringement
Post by JimIvey on Sep 9th, 2007, 10:10pm
I do check my private messages here and my web site is in my signature below.  There's a "contact us" form there.

Remember, I don't litigate.  A patent litigator would know more about how to proceed.  I can help a little with ways you can put your best foot forward, but you'll need someone savvy in the ways of patent litigation when it's time to send "the letter."

Regards.

Title: Re: Patent Pending Infringement
Post by pentazole on Sep 11th, 2007, 12:38pm
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?

Title: Re: Patent Pending Infringement
Post by stcrim on Sep 11th, 2007, 2:03pm
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-

Title: Re: Patent Pending Infringement
Post by JimIvey on Sep 11th, 2007, 2:31pm

on 09/11/07 at 12:38:25, 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.

Title: Re: Patent Pending Infringement
Post by stcrim on Sep 11th, 2007, 3:05pm
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-

Title: Re: Patent Pending Infringement
Post by JimIvey on Sep 11th, 2007, 3:48pm
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.

Title: Re: Patent Pending Infringement
Post by biopico on Sep 11th, 2007, 8:44pm
Stcrim:

You need to be able to analyze the scope of your claims (each and every element) in greater detail and determine why/how they are infringing your claims.  

If you believe your patent is worth big $$$, you might want to retain an attorney to represent you if not pro se.




Title: Re: Patent Pending Infringement
Post by stcrim on Sep 12th, 2007, 10:24am
There is no question they are infringing - we tried to partner with them about a year ago.  They liked the idea so much they took it letter for letter and word for word.  For a short time they even had my contact info in the comment section until they discovered it.

Does anyone review patents (Jim do you?) to see if they have a chance of issuing?  I've heard Business method patents are being turned down just because they are business method patents.  Not really fair to those of us who actually invented or created something.

At this point I just want to make sure my application issues in 4 or so years so I can knock on their door again.

Does anyone review patents and make recommendations?

-s-

Title: Re: Patent Pending Infringement
Post by PA on Sep 12th, 2007, 11:36am

on 09/12/07 at 10:24:02, stcrim wrote:
At this point I just want to make sure my application issues in 4 or so years so I can knock on their door again.

I forgot what the exact pendancy numbers are, but if you mean 4 years from filing, that might be a pipe dream depending on the TC your application is assigned.

Title: Re: Patent Pending Infringement
Post by stcrim on Sep 12th, 2007, 2:45pm
I'm told it's almost 5 years from filing until they look at it.  Talk about holding up commerce...

-s-

Title: Re: Patent Pending Infringement
Post by JimIvey on Sep 12th, 2007, 7:47pm

on 09/12/07 at 10:24:02, stcrim wrote:
Does anyone review patents (Jim do you?) to see if they have a chance of issuing?  I've heard Business method patents are being turned down just because they are business method patents.  Not really fair to those of us who actually invented or created something.

Yes, some people do and I do as well.  And, it's a little more complex than just being rejected as taboo.  And, more than just telling you whether you have a chance, whoever you use should help you with a strategy to improve your chances and speed things up.

I have to say that the whole thing is really silly.  People speculated for years that there might be a "business method" exception to eligible subject matter for US patents.  At that time, the PTO didn't have any special rules/hurdles for "business method" inventions and they were processed more or less like any other technology.  Then, when the Federal Circuit announced that such speculation was wrong and that designation as a "business method" was more or less meaningless in US patent law, the PTO designated applications as such and set up special hurdles to make those applications more difficult to allow.  In other words, when it was established in US law that standards for "business method" applications should be relaxed to the same standard required of other inventions, the PTO did the opposite and made things even more difficult.  Imagine that you're sitting and someone says, "Despite some thinking it's best to stand, it's actually best to sit."  So, you stand up.  Whatever....

At one point, I had heard that the backlog for "business method" patents was 14 years.  I hope it's better now.

Regards.

Title: Re: Patent Pending Infringement
Post by patent_type on Sep 17th, 2007, 10:42pm

on 09/11/07 at 15:05:07, stcrim wrote:
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?


You might want to fill a patent attorney in on the explicit details here--off-line of course.  If you send a letter to the customers with the intent of damaging or getting the "company" to stop infringing, and the patent does not issue with the claims you would have liked, there remains the possibility that the "company" could sue you for tortious interference with business relationship or tortious interference with contract.  

Yes, you may be perfectly well within your right to send the letters to the customers, but you better be dead-to-rights sure that their current product/process would infringe your claims if they issue as published.

Get a patent attorney off-line.  That $500 to write one letter to the "company" looks rather cheap in comparison to the investigation of and letter writing to the customers.

Title: Re: Patent Pending Infringement
Post by JSonnabend on Sep 19th, 2007, 7:53am
I am presently involved with two cases that concern "letter writing campaigns" by upset patent holders.  I'll echo the previous poster's warning.

- Jeff

Title: Re: Patent Pending Infringement
Post by DJoshEsq on Sep 24th, 2007, 8:21am
For the most part, it appears as if you are getting some good advice.  $500.00 to send a letter to a competitor that may be practicing what is claimed in your publicaiton is fair, as long as the attorney is experienced in patent litigation.  As mentioned, since the application is only a publication, the letter needs to make that known, but may also mention that damages may be accrued from time of publication.  Certified mail is recommended.

I would also most likely suggest sending that letter to each and every person that infringes the claims as published.  Without actual notice, you will not be able to collect damages from that party from the time of publication.  However, as others mentioned, with every notice letter there are always business concerns - e.g. if the person is a current or potential customer.

There are other strategies that can be examined depending on the potential damages involved.  For example, you could file a continuation application with a large number of claims that read specifically on what these customers are doing...hopefully tailoring some claims narrowly enough that they issue substantiall similar to the publication.  Better yet, you can take advantage of the new Accelerated Examination practice - that may have the case allowed within 12 months.  An experienced patent attorney should be able to help you with this.

Title: Re: Patent Pending Infringement
Post by Wiscagent on Sep 24th, 2007, 8:54am
"... you can take advantage of the new Accelerated Examination practice - that may have the case allowed within 12 months ..."

That may only be allowed when the application is first filed.

Alternatively, if there is evidence that the claim is being “infringed”, you can petition the commissioner to make the application “special” and move it up to the top of the heap.

Title: Re: Patent Pending Infringement
Post by DJoshEsq on Sep 24th, 2007, 9:09am

on 09/24/07 at 08:54:43, Wiscagent wrote:
"... you can take advantage of the new Accelerated Examination practice - that may have the case allowed within 12 months ..."

That may only be allowed when the application is first filed.

Alternatively, if there is evidence that the claim is being “infringed”, you can petition the commissioner to make the application “special” and move it up to the top of the heap.


Thank you for clarifying - I thought it was clear that I said you can take advantage of the accelerated examination for the continuation - not for the current pending case.  As you mentioned, you can take advantage of the petition to make special as well.

Title: Re: Patent Pending Infringement
Post by patent_type on Sep 25th, 2007, 7:51pm
Be vewy vewy cahfwel with the accelerated examination procedure.  I have heard (saw some stat somewhere--PatentlyO blog, maybe?) that 80+% of these are getting kicked back for failure to conduct an adequate search.   So don't try this at home!

If you do sucessfully get accelerated examination, there is a high likelihood that the representations you have to make during that process will result in unwanted limitations to your protection.  While there have been some patents granted on the new accelerated examination process, I don't think there have been any in litigation in which claims have been construed.

If anybody knows of one that is in litigation, let us know!

Title: Re: Patent Pending Infringement
Post by JimIvey on Sep 25th, 2007, 9:38pm

on 09/25/07 at 19:51:09, patent_type wrote:
Be vewy vewy cahfwel with the accelerated examination procedure.  I have heard (saw some stat somewhere--PatentlyO blog, maybe?) that 80+% of these are getting kicked back for failure to conduct an adequate search.   So don't try this at home!

I haven't done one fo these under the new rules, but I've done them under the old rules.  Never had a problem.

I've read in blogs, too, (from an anonymous examiner, I think -- or perhaps even in here years ago) that examiners like to reject such petitions on those grounds (under the old rules).  There was no requirement under the old rules of a specific type of search.  It just said the applicant must conduct "a search."  

I would be tempted to re-petition based on the fact that the examiner's assertion that the search was inadequate represents a concession by the examiner that a search was, in fact, conducted albeit not to the examiner's liking.

I honestly don't know if the new rules require a specific type of search.  If it does, it provides us all with better guidance as to how to meet the search requirement.  If it doesn't, then any old search should suffice -- at least according to the wording of the rules.  

I have to admit that I find it extraordinarily frustrating that the Office seems to be trying to do everything in its power to avoid examining patent applications.  The refusal to fairly and competently review petitions for expedited examination is just another example.  Is it really that hard to find someone to run the PTO that thinks that the PTO ought to actually examine applications?!  After all, isn't that the reason the PTO exists?

Regards.

Title: Re: Patent Pending Infringement
Post by patent_type on Sep 26th, 2007, 8:02am

on 09/25/07 at 21:38:13, JimIvey wrote:
I honestly don't know if the new rules require a specific type of search.  If it does, it provides us all with better guidance as to how to meet the search requirement.  


The accelerated examination procedure (went into effect 8/25/06) is much more draconian than the previous petition to make special.  The accelerated examination procedure replaces the old petition to make special for almost every reason we used to file petitions to make special (excepting age, health, and the PPH pilot program).

The accelerated examination procedure requires a document remarkably similar to the Examination Support Document (ESD) that is part of the new (Nov. 1) rules and the requirements are very specific about exactly how the search must be conducted.  In fact, this document is called the AESD--accelerated examination support document.

See http://www.uspto.gov/web/patents/accelerated/

excerpt: "the accelerated examination support document must include an identification of all the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference. Applicants should specify where in each of the cited references the particular claim limitations are found. "

A search must include (details omitted):

1.      A classified search of the US patents and published patent applications in the Class and subclass where the claimed invention is most likely to be classified.  

2.      A text search of the US patents and published patent applications of individual features by themselves and combinations of features covering the broadest scope encompassed by the claims as well as claims of narrow and intermediate breadth.

3.      A text search of foreign patent documents that includes the sources required under the PCT minimum documentation requirements.

4.      A text search of the suggested non-patent literature (NPL) resources from the current USPTO search templates.

5.      A search employing any special tools as identified in the current USPTO search templates.

The requirements are tremendously more onerous than the previous petition to make special requirements.  If you don't meet these search requirements, as determined by the Examiner, the request for accelerated examination is kicked back.

Title: Re: Patent Pending Infringement
Post by DJoshEsq on Sep 27th, 2007, 12:29am

on 09/25/07 at 21:38:13, JimIvey wrote:
I haven't done one fo these under the new rules, but I've done them under the old rules.  Never had a problem.

I've read in blogs, too, (from an anonymous examiner, I think -- or perhaps even in here years ago) that examiners like to reject such petitions on those grounds (under the old rules).  There was no requirement under the old rules of a specific type of search.  It just said the applicant must conduct "a search."  

I would be tempted to re-petition based on the fact that the examiner's assertion that the search was inadequate represents a concession by the examiner that a search was, in fact, conducted albeit not to the examiner's liking.

I honestly don't know if the new rules require a specific type of search.  If it does, it provides us all with better guidance as to how to meet the search requirement.  If it doesn't, then any old search should suffice -- at least according to the wording of the rules.  

I have to admit that I find it extraordinarily frustrating that the Office seems to be trying to do everything in its power to avoid examining patent applications.  The refusal to fairly and competently review petitions for expedited examination is just another example.  Is it really that hard to find someone to run the PTO that thinks that the PTO ought to actually examine applications?!  After all, isn't that the reason the PTO exists?

Regards.


you should review the rules before you post.  Nice post patent_type.

Title: Re: Patent Pending Infringement
Post by JimIvey on Sep 28th, 2007, 7:53pm
Thanks, Patent Type.

Anyone have one bounced for inadequate search under the new rules?  The rules seem to provide a nice checklist that should make avoiding such rejections relatively easy.  The toughest part appears to be determining "the Class and subclass where the claimed invention is most likely to be classified."  It looks like a "get out of jail free" card for people hoping to reject such petitions since it will be particularly difficult to guess right every time.  Anyone have any idea how that might play out?

And, DJosh, thanks for the example of a useful post.

Regards.

Title: Re: Patent Pending Infringement
Post by patent_type on Sep 29th, 2007, 10:52am
Not I.  I have done/will do everything practicable to avoid filing an AESD or an ESD.  These documents are fraught with potentially horribly damaging/limiting pitfalls for prosecution and litigation because of the required disclosures, opinions, and representations, or failure to make particular disclosures, opinions, and representations, and everybody I have talked with about these are recommending to avoid them at all costs.

But I ain't givin' none legal opinion about these suckers, 'cause I don't know squat.

Title: Re: Patent Pending Infringement
Post by Isaac on Sep 29th, 2007, 3:45pm
A former PTO official who now does presentations on the new rules says that 50% of AESD were rejected.

If you rely on an ESD to file more that 25 claims or 5 independent claims, be aware that if your ESD is deemed to be inadvertantly non-compliant, you'll get a chance to fix it, but you'll lose essentially all of the patent term adjustment based on the long PTO backlog period.   That's a significant hit in some technical arts.  

On the other hand a refused SRR (suggested restriction requirement) doesn't have the same consequence.



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