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Topic: Urgent- design patent and prior art (Read 1052 times) |
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invent1
Newbie
Posts: 1
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Urgent- design patent and prior art
« on: Jul 28th, 2005, 12:56pm » |
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Hi…
My story is this:
I currently hold several design patents for different products. Several weeks ago, I got a letter from an individual saying that my design patents were invalid and infringing on his designs. He requested that I stop producing these items and further asked me to relinquish my design patents over to him. The individual’s argument was that my designs were invalid on the sole basis of the individual having prior use of the design before I did. There was no mention of the individual having the design either registered or trademarked with the Patent Office. Only that the individual had began using the design a long time ago before I patented as a design patent. Moreover, although my designs and the individual’s design are somewhat similar, there are more dissimilarities between the two designs.
My question is this: Can that individual make such a claim on the sole basis of prior usage without ever having the design registered or even trademarked with the Patent Office? If so, to what extent can the individual claim? Would I still be able to use my design patents as long as I stick to the conditions set forth by my original design patent?
Lastly, if the individual decided to go ahead and file a complaint about my design patent, would that be filed and contested with the Patent Office?
Your help was very much appreciated. Thank you!
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Wiscagent
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Posts: 843
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Re: Urgent- design patent and prior art
« Reply #1 on: Jul 28th, 2005, 3:30pm » |
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There are several issues involved in your note.
1) You wrote that the individual requested that you stop making the patent items. I get the impression from your note that the individual does NOT have a patent or other legal right to stop you from making the items. So why would you stop making the items?
2) The individual asked you to turn your design patents over to him. How much did he offer you? If the answer is “nothing,” then why would you want to sign the patents over to the individual?
3) The individual argued that your patents were invalid. That is a determination that would be made in court if the patent were ever the subject of a law suit. If you were involved in a law suit or a negotiation with the individual, you would want your attorney to review whatever evidence the individual has to offer.
4) You asked “Would I still be able to use my design patents ...?” You only “use” a patent against someone else. I assume you mean to ask if you could still make the patented design. Unless and until you are presented with a court order telling you to stop making the items, you can keep on doing so. However depending on the details of the situation, an attorney may recommend that you stop to avoid liability.
5) The individual may request the USPTO to conduct a “re-examination” of the patent, but depending on the circumstances the USPTO may or may not choose to actually conduct the re-exam. A re-exam is a complex, usually expensive procedure.
I recommend that you show an attorney the letter and determine if you should respond or take any other action.
Good luck,
Richard Tanzer
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Richard Tanzer
Patent Agent
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Isaac
Senior Member
Posts: 3472
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Re: Urgent- design patent and prior art
« Reply #2 on: Jul 28th, 2005, 8:01pm » |
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Having a patent is not an infringing activity. At worst, the a previous design can invalidate a patent, but in most such cases the patent would be invalid no matter who held it. So why turn the patent over?
Also, being first to implement a design creates no right to stop others from independently creating the same design unless the first creator files for a patent.
It sounds like somebody is looking for a sucker.
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Isaac
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Lou K.
Guest
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Re: Urgent- design patent and prior art
« Reply #3 on: Aug 19th, 2005, 11:05am » |
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I own over 100 US Patents and 10,000 PLUS US Copyrights, so I have just a little experience in these matters (past 20 years + of my life) -- and I've been involved in over two dozen intellectual property lawsuits over the years. The person who sent you the letter is obviously really RETARDED. I've NEVER heard of anyone ever attempting to claim ownership of another's intellectual property in that manner. Ignore the moron because if the moron had truly invented/designed the subject matter before you, and never filed for patent protection, then, generally speaking, the moron is out of luck, with a capital "L." Seriously, I wouldn't even answer the idiot. YOU have NO RESPONSIBILTY and NO OBLIGATION to give the idiot the sweat off of your butt, much less the courtesy of a response. Forget about the stooge!
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Avocat3724
Newbie
Posts: 1
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Re: Urgent- design patent and prior art
« Reply #4 on: Apr 16th, 2007, 11:35am » |
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I think the responses provided so far on generally on point. Keep in mind that we are discussing design patents which have both similarities and differences to utility patents [which is what folks usually think about when referring generally to "patents"]. You said in your "history" that there are differences between your design patent and the designs asserted by your antagonist. He is really trying to make a kind of "trade dress" claim against you but he is kind of clumsy about it.
I agree that there is no reason for you to "hand over" your patent. The real question, though, is whether from a trade dress point of view, your design is so similar to his that a consumer would be confused. That will have a bearing on whether you can sell your design or manufacture whatever it is you designed. But the idea of turning over your design seems like a bit over-reaching.
Good luck.
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