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(Message started by: j10495t on Dec 13th, 2007, 10:15am)

Title: Patent Pending Infringement Questions
Post by j10495t on Dec 13th, 2007, 10:15am
Last week I came out with a product that is similar to a competitor at first glance.  Other than that it is different in the way it mounts, style of what is on it and how pieces are attached to it that are necessary for proper installation.

I have done patent searches and as far as I can tell they don't have one.  I have been contacted by them and they say they are sending me information on protecting their design patent.  My guess is it is patent pending as they haven't even started selling yet just posted info on their site.  My questions are as follows.

1.  Can I continue to sell my product up until the point of the patent being issued with no consequences.

2.  What consitutues substancially different.  The only thing that is the same is our shape and that follows the lines of the product it mounts onto.  Everything else is different, but at first glance you may not noticed everything.

3. Is their a good notification process for when the actual patent is issued.

Thanks,

Jay

Title: Re: Patent Pending Infringement Questions
Post by TataBoxInhibitor on Dec 13th, 2007, 11:33am
1. No.

2. Difficult to answer given the facts provided - find legal counsel.  I am not sure what "substantially different" means in the context you are asking.  It really depends on what the claims say, in light of the specification.  Patentability and Infringement are two different animals.

3. I am not aware of any.  You can always periodically check the Patent Gazette, however, maybe there is a paid for service?

Regards,


Title: Re: Patent Pending Infringement Questions
Post by j10495t on Dec 13th, 2007, 11:35am
So once i am notified of a pending patent I just have to wait it out to see if they get their patent?

Thanks,

Title: Re: Patent Pending Infringement Questions
Post by TataBoxInhibitor on Dec 13th, 2007, 11:50am
No.  Wait until the pending application is published, which is 18 months from the date of filing, or priority date claimed.  You can then determine what is and what is not covered by reading the patent application.  Of course, during the prosecution of the patent application, the scope may change.

A patentee is given what is called "provisional rights," which if the patent application issues, and the claims are substanitally similar to those found in the publication, then damages could possibly stretch back to that publication date, which is the date of "notice."

Regards,


Title: Re: Patent Pending Infringement Questions
Post by TataBoxInhibitor on Dec 13th, 2007, 11:52am
Also, you can continue to do what you want until publication.   Then make that determination once the application is published.


Regards,


Title: Re: Patent Pending Infringement Questions
Post by TataBoxInhibitor on Dec 13th, 2007, 11:56am
one last thing....

just ask them for the publication number, or to notify you of the publication number once it is published.  But like I indicated above, you can continue to do as you please until publication.  

However, if you have not done a search or received any advice with respect to other granted patents, now would be the time to seek that advice.

Regards,


Title: Re: Patent Pending Infringement Questions
Post by CriterionD on Dec 13th, 2007, 1:18pm
While TBI (TataBoxInhibitor) isn't really off base here, I believe he is overlooking "they say they are sending me information on protecting their design patent[/b]"

Deisgn patents aren't necessarily published 18 months from their filing date (like utility patents are).  They simply issue.  Issuance can occur before or after the 18 month mark.

So...

a.) Even in the worst case scenario, you can sell your product to the point of being issued with no consequence as far as I am aware.

b.) Note what a design patent can or can't protect.  Design patents do not protect any aspects of a product that affect a product's "utility."  I.E. if the shape of a product is vital to how the product functions, the shape is not protectable by a design patent.

c.) To find a patent, if they won't provide info regarding their patent (or patent app), search by application, agent, and/or assignee name.  If you want to limit your search to design patents, include the phrase "ornamental design for."





Title: Re: Patent Pending Infringement Questions
Post by TataBoxInhibitor on Dec 13th, 2007, 1:34pm
Correct.  I completely missed "design."

Title: Re: Patent Pending Infringement Questions
Post by j10495t on Dec 13th, 2007, 1:55pm
thanks for your help - just to clarify.  Once I receive written notice of the pending patent I am still ok to sell until it the final patent is isssued.

Or do I really need to stop selling once I recieve notification of the pending patent.

Thanks,

Jay

Title: Re: Patent Pending Infringement Questions
Post by DJoshEsq on Dec 13th, 2007, 2:48pm

on 12/13/07 at 11:56:03, TataBoxInhibitor wrote:
one last thing....

just ask them for the publication number, or to notify you of the publication number once it is published. But like I indicated above, you can continue to do as you please until publication.

However, if you have not done a search or received any advice with respect to other granted patents, now would be the time to seek that advice.

Regards,


Well this isn't really the best advice...especially if your product does infringe the patent. If the patent has issued, you can be liable for damages from the date of issuance. If, however, the patent is just pending with the patent office you cannot be liable for damages until the patent publishes. Even if the application has published, you cannot be liable without ACTUAL NOTICE! What that means to you is - THEY (not you) are required to provide you ACTUAL NOTICE of the published patent application, which necessarily includes at a minimum the patent or patent publication number. Even if you locate the patent and are aware of the pending application, they must provide you with actual notice.  Without such notive you are NOT liable for any damages until (1) you are provided ACTUAL NOTICE; or (2) the patent issues. Therefore, if you believe the patent has not YET issued - do NOT request the patent publication number at least until after you speak with a patent attorney.

A patent attorney will have to analyze the patent (whether design or utility) and provide you with an opinion as to infringement. Most, if not all, attorneys should also be able to provide you with possible changes/redesign efforts, if the product does or likely will infringe.

I am available by telephone and email if you would like to discuss these issues.

Title: Re: Patent Pending Infringement Questions
Post by j10495t on Dec 13th, 2007, 3:13pm
ok that is problem.  They are sending me notice of something.  What if they send me notice of a non-published patent pending.

Does that count or can I continue to sell.  Does it have to be published?

They already contacted me to send me something.  I am not sure when I will get it but my guess is next week sometime.

Then I plan on taking it to an attorney.  I just wanted to know if I could continue to sell after I get the certified mail.

Thanks,



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