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(Message started by: Joe Thorn on Oct 30th, 2007, 10:17am)

Title: Infringement
Post by Joe Thorn on Oct 30th, 2007, 10:17am
Recieved letter from my competitors attorney stating my competitor had received a patent in 2006 for a very similar item that I manufacture.  Their attorney says I should pay them liscencing and royalty fees.  I manufactured my item prior to them and can prove it.  Any thoughts on how to proceed? Thanks Joe

Title: Re: Infringement
Post by JSonnabend on Oct 30th, 2007, 10:49am
The critical question is, can you prove you manufactured the patented product before it was "invented" by the patentee?

- Jeff

Title: Re: Infringement
Post by Joe Thorn on Oct 30th, 2007, 10:55am
I can only prove that I manufactured and sold the item TWO YEARS before their patent APPLICATION date.  When they sold their first item is not known to me. Thanks Joe

Title: Re: Infringement
Post by JSonnabend on Nov 1st, 2007, 1:07pm
That should do it, assuming the application does not claim priority to another application.

- Jeff

Title: Re: Infringement
Post by DJoshEsq on Nov 2nd, 2007, 1:15pm

on 11/01/07 at 13:07:03, JSonnabend wrote:
That should do it, assuming the application does not claim priority to another application.

- Jeff


Actually, if true, that "does" do it.  See 35 U.S.C. 102

Title: Re: Infringement
Post by JSonnabend on Nov 5th, 2007, 10:56am

on 11/02/07 at 13:15:52, DJoshEsq wrote:
Actually, if true, that "does" do it.  See 35 U.S.C. 102

Well, section 102 is awfully big, care to point to a specific sub section?  For that matter, tell me what I'm missing here.  If the application claims priority to an application with a priority date before the OP's use, how would his use still invalidate the patent?

- Jeff

Title: Re: Infringement
Post by DJoshEsq on Nov 12th, 2007, 1:21pm
"I can only prove that I manufactured and sold the item TWO YEARS before their patent APPLICATION date."

35 U.S.C. section(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.

Title: Re: Infringement
Post by Isaac on Nov 12th, 2007, 3:53pm

on 11/12/07 at 13:21:59, DJoshEsq wrote:
35 U.S.C. section(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.


Does the "date of application" as recited in 102(b) include the effective filing date? Or instead do you use 120 to establish an application has the same effect as if filed on the effective filing date. That's the semantic point being argued here.

Since we don't know what the OP means by "patent APPLICATION date" I don't think a mention of the effect of priority claims under 35 USC 120 would be out of order.


Title: Re: Infringement
Post by JSonnabend on Nov 13th, 2007, 8:18am

on 11/12/07 at 15:53:42, Isaac wrote:
Does the "date of application" as recited in 102(b) include the effective filing date?   Or instead do you use 120 to establish an application has the same effect as if filed on the effective filing date.   That's the semantic point being argued here.

Since we don't know what the OP means by "patent APPLICATION date" I don't think a mention of the effect of priority claims under 35 USC 120 would be out of order.

It's the priority date that's important, as we all know, not the application date.  While Isaac is correct that we may be arguing semantics, Josh's response is problematic for two reasons.

First, at least in my experience, practitioners are careful to distinguish between application date and priority date.  The OP might have been speaking loosely, of course, but we don't know that (hence my cautious response).  

Second, Josh's response pushed my buttons because it was definitive.  That's imprudent, particularly when we don't have all the facts (e.g., what did the OP mean by "application date"?  Did the OP, a layperson, even know to look for a priority date?).  If the OP had walked into Josh's office and he had given the same advice based on the same information, he'd be flirting with malpractice.

It seems that Josh has only been practicing for about two years.  I don' t imagine he's counseled many clients directly without a partner looking over his shoulder.  He'll learn to more properly advise clients, I'm sure, but I want to make sure he doesn't learn how to do that here at some poor OP's expense.

- Jeff



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