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(Message started by: JonF on Oct 4th, 2007, 9:06am)

Title: Patenting an Already Existing Item
Post by JonF on Oct 4th, 2007, 9:06am
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.

Title: Re: Patenting an Already Existing Item
Post by JSonnabend on Oct 4th, 2007, 11:25am
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

Title: Re: Patenting an Already Existing Item
Post by JonF on Oct 4th, 2007, 11:47am
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.

Title: Re: Patenting an Already Existing Item
Post by MattB on Oct 10th, 2007, 4:01pm
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.

Title: Re: Patenting an Already Existing Item
Post by pentazole on Oct 11th, 2007, 1:01am
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?  

Title: Re: Patenting an Already Existing Item
Post by shannu on Oct 11th, 2007, 1:46am
I agree with what pentazole is saying.

How can it be possible for a person (who knows about patent / patent system) to apply for patent for already patented invention? Knowingly, he can not take such a big risk and therefore I believe that he must have different invention in place.  

Regards

Title: Re: Patenting an Already Existing Item
Post by JonF on Oct 12th, 2007, 8:38am
His is very slightly different, but what he's doing is sending letters from his lawyer to everyone claiming "infringement on HIS intellectual property" as though they copied him and made an insignificant change. The only perceivable difference in his tool from the one that's been out for the last 20 years is a small hook at one end for hanging it up rather than the "nail hole" on everyone else's. No one is making the "hooked" version except him, but the letters are still going out.

Thanks for the information. It sounds like we're going to be throwing a stupid amount of money at this.

Title: Re: Patenting an Already Existing Item
Post by pentazole on Oct 12th, 2007, 12:03pm
You don't have to, but just out of curiosity, would you mind posting the patent numbers of the old and new patent?

Is the new patent issued yet?  If it is, or it's pending, whether you think it's stupid or not is really a matter of personal opinion.  It's up to the PTO/courts to decide.  So if you're getting infringement letters, then you should look at it a bit more seriously/professionally and not just dissent based on personal feelings.



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