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(Message started by: littlemic11 on Jan 26th, 2006, 3:13pm)

Title: Can i patent and sell this
Post by littlemic11 on Jan 26th, 2006, 3:13pm
I have a question regarding if something can be patented if parts of it are already patented.
Lets's say I want to invent a "marble shooter", I know its probably already invented but for sake of arguement.

And the marbles I use to shoot are already patented and the gun i use to shoot the marbles is already patented.

I'm pretty sure "the marble shooter" can be patented but if i produce it aren't I violating the patent rights of the people who have the marble and gun patents?

Title: Re: Can i patent and sell this
Post by Isaac on Jan 26th, 2006, 3:46pm
Applying for a patent won't infringe those rights.  Your activities in developing your invention might infringe. Your attempts at making selling, importing, offering to selling you invention might infringe.  Simply applying for an obtaining a patent would not be an infringing activity.

Further, it might well be that you acquire the necessary licenses to use the gun and marble when you purchase those components from an authorized source.  


Title: Re: Can i patent and sell this
Post by CriterionD on Jan 26th, 2006, 4:36pm
First of all, if you are infringing on anyone by marketing the product, then you probably couldn't patent it.  You might be able to patent part of the invention

Second, just because similar products have already been patented doesn't necessarily mean that you couldn't patent a new and improved "marble gun."

Third, either way, a patent search would be in order so you could know exactly what you are dealing with.  There could be a 20+ year old expired patent that you could knock off without penalty.

Title: Re: Can i patent and sell this
Post by Isaac on Jan 26th, 2006, 5:00pm

on 01/26/06 at 16:36:08, CriterionD wrote:
First of all, if you are infringing on anyone by marketing the product, then you probably couldn't patent it.  You might be able to patent part of the invention


This just is not so.  For example you can patent an improved widget even if the underlying widget is patented and selling the improved widget would infringe the original patent.

Further most inventions are made from pre-existing, and possibly patented components.  


Title: Re: Can i patent and sell this
Post by CriterionD on Jan 27th, 2006, 3:02pm

on 01/26/06 at 21:02:52, RogersDA wrote:
CriterionD:  There is some misinformation in your homepage.

Your site states:  "Patents are legal documents that claim ownership to the right to commercialize particular innovations"

Patents do not provide a right to commercialize anything.  See 35 USC 154(a):  Every patent shall grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.

This is an important distinction in that your right to make or commerialize something can be severly restricted based on state or federal laws.

Your site states: "Registering a copyright with the USPTO is relatively cheap..."  

The USPTO is not in the business of copyright registration.  That is for the U.S. Copyright Office of the Library of Congress.


Well I am a little embarassed

but I appreciate the feedback.  I am not starting out with much and none of my colleagues who had reviewed the PDF had pointed it out to me

The copyright issue was a mere overthought on my end.  Far as patents are concerned, the word most blatantly missing from my description is "exclusive."  Claims ownership to the exclusive right to produce, use, and/or commercialize particular innovations.  "Exclusive" infers the exclusion of others.

I will be editing that shortly.  Thank you.

Title: Re: Can i patent and sell this
Post by JimIvey on Jan 27th, 2006, 3:17pm
Just to echo RogersDA's point, "exclusive" probably doesn't fix it.

Patents give you the right to exclude others.  But they do nothing to ensure that things covered by your claims are not also covered by claims of other patents.  In other words, adding some novel, non-obvious new part to an older, patented thing generally doesn't avoid infringement of the older patent but, at the same time, you can get a new patent on the new variation of the old thing.

Really, the only way to say it correctly is to say that patents give you the right to exclude others from making, using, selling, and importing the thing covered.  Patents do not give you the right to make, use, sell, or import anything -- exclusively or otherwise.

Sorry to be so nit-picky, but this is one of those fundamental things that people often misunderstand, going through the patent process with unreasonable expectations -- and they are accordingly headed for major disappointment.  To develop a promising patent strategy, people must understand exactly what patents do and don't do.

Regards.

Title: Re: Can i patent and sell this
Post by Wiscagent on Jan 27th, 2006, 3:28pm
To belabor the obvious ... also a patent does nothing to relieve restrictions related to FDA rules, FCC regulations, safety limitations, contractual issues, and so forth.

Title: Re: Can i patent and sell this
Post by CriterionD on Jan 27th, 2006, 3:33pm
Don't worry about the nit-pickiness.  I appreciate any feedback.  I don't want any inaccuracies in my FAQ, even if they are merely technical, as that would be unprofessional.

Just to make it clear, I'm not out to try and replace or compete with patent attorneys.  I am certainly familiar with patent law, but that is not my strength.  I am out to do high quality patent research, which is a strength of mine, and I am out to interpet "IP talk" to the end consumer in lay-men's terms as much as possible.

Title: Re: Can i patent and sell this
Post by CriterionD on Jan 27th, 2006, 3:59pm

on 01/27/06 at 15:17:38, JimIvey wrote:
Really, the only way to say it correctly is to say that patents give you the right to exclude others from making, using, selling, and importing the thing covered.  Patents do not give you the right to make, use, sell, or import anything -- exclusively or otherwise.


Anyways, here's where I am going to start a small debate though.  If patents do not give you the right to make/use/commercialize anything, how do they give you the right to exclude others from doing so?

I could see a case where what you have patented does not meet legal guidelines or regaulations, but in that case you are not the one excluding anybody from producing/using/selling a product, they are already excluded.

In the event where the claims in your patent do not give you the right to a product because you cannot produce/use/sell that product without infringing on someone else's claims, then you don't have the right to produce that product but if I'm not mistaken you don't have the right to exclude others from producing that product either.  They are already excluded from that right for the same reasons that you are excluded from that right.  In this case, I think this is more a matter of technicality than accuracy

Title: Re: Can i patent and sell this
Post by JimIvey on Jan 27th, 2006, 4:00pm

on 01/27/06 at 15:33:11, CriterionD wrote:
Just to make it clear, I'm not out to try and replace or compete with patent attorneys.  I am certainly familiar with patent law, but that is not my strength.  I am out to do high quality patent research, which is a strength of mine, and I am out to interpet "IP talk" to the end consumer in lay-men's terms as much as possible.

No problem.  That's what we're all here for -- helping people to better understand a complex thing.

And, Richard's right, there are many things to prevent one from making their own patented invention, not just other patents.

I just see other patents as an interesting hurdle though -- since you have to overcome them in one way during prosecution, many people think they won't be problems after issuance.

Regards.

Title: Re: Can i patent and sell this
Post by Isaac on Jan 27th, 2006, 4:15pm

on 01/27/06 at 15:59:39, CriterionD wrote:
Anyways, here's where I am going to start a small debate though.  If patents do not give you the right to make/use/commercialize anything, how do they give you the right to exclude others from doing so?


You really need to get this particular concept down.   There really won't be any debate about the issue.  You hold a common misconception that patent practitioners working with clients unfamiliar with patent law encounter fairly often

The answer to your question is in Jim's explanation, but here's another take.

Look at a patent as the a right to sue someone for making, using, selling, offering to sell or importing.   Even if you are not in the business of making widgets, your patent allows you to sue others if they make widgets without your permission.   If your widget requires someone else's patented sub widget, then if you make a widget, the patent holder who has rights to sub widget can sue you.   That means that your patent does not give you any right to commercialize your product.

Title: Re: Can i patent and sell this
Post by CriterionD on Jan 27th, 2006, 4:30pm

on 01/27/06 at 16:15:00, Isaac wrote:
If your widget requires someone else's patented sub widget, then if you make a widget, the patent holder who has rights to sub widget can sue you.   That means that your patent does not give you any right to commercialize your product.


I understand that.  But in this case your patent doesn't exclude others from commercializing your product either, because they are already excluded from doing so.

Now if someone purchases or licenses the other company's (or companies') sub-widget(s), and commercializes your widget, then you could sue them.  Even if that someone didn't license the other company's sub-widget you could get in on the action.  But likewise, you are the only person or entity that may market your widget and not potentially face legal action from somebody other than the patent holder(s) of the sub-widget(s).

Perhaps the phrase I'm looking for is "exclusive, but conditional" no?  

Title: Re: Can i patent and sell this
Post by JimIvey on Jan 27th, 2006, 5:36pm
If multiple people have the right to exclude you from making, selling, or using something that you really want to make, use, and/or sell, you must deal with all those people, not just any one of them.  Consider that just about any car manufactured in the last 5-10 years is probably covered by 20,000 patents.  It would be ludicrous to allow just any one patent holder to clear the way for the car mfr to go forward -- cutting out all the patentholders of the other 19,999 or so patents.  Of course, most of those patents are held by just a few entities -- probably the car mfr itself and the handful of competitors.

This is no different than many other facets of business.  For example, I had to get permission from the state of California to practice law.  Was that enough?  No.  I had to get permission from the PTO to represent patent applicants.  Was that enough?  No.  I had to get zoning clearance in Oakland.  And, I had to pay a local business tax.  Then, there's the IRS and the California Tax Franchise Board.  

What happens if it's all too much?  Then, I say "Screw it!" and go back to writing software -- or find some other thing to do for a living.

The same is true for people making, using, or selling things covered by patents.  If thousands of patent holders call up eBay or Google or some other latest greatest business venture and ask for royalties, the "target" (as we affectionately call them) says "Screw it!" and tells us all to go away.  Of course, that response has a number of risks associated with it, but let it suffice to say that it behooves patent holders to keep the demands reasonable, especially if you're just one of many with the right to exclude.

I think you're inferring the right to empower from the right to exclude.  A patent gives you the right to exclude others from some activities, but waiver of that right to exclude does not necessarily empower others to engage in those activities -- as we've all said, there may be multiple forces working to exclude others from engaging in those activities.

When you want to make, use, or sell (or import) something, patents covering that thing are each individually just one hurdle of possibly many hurdles to engaging in that sort of activity.

Of course, the best position to be in is the sole barrier in a very valuable business.  But we can't all be in that position, and oftentimes we're not.

I hope that helps.

Title: Re: Can i patent and sell this
Post by CriterionD on Jan 27th, 2006, 6:09pm
well, here is a paragraph that I have added to my FAQ:

"It is also important to note that the exclusive right to the production, use, and sale of a product that is
granted by a patent is not unconditional. Any product manufactured utilizing your innovations still must
adhere to all legal guidelines, and must not infringe on other people’s intellectual property – patents
included. Please note, for example, that a patent may specify the use of previously patented products
or processes within their manufacture, and that the issuance of a patent does not exempt anybody from
existing legal responsibilities."

Only thing I am unsure of is the use of the word "specify" in the last sentence, but that looks okay to me for now.

Again, I have to thank anybody who has posted in this thread.  I have received useful feedback.

Title: Re: Can i patent and sell this
Post by Isaac on Jan 27th, 2006, 7:11pm
I think your paragraph is still misleading.  A patent does not grant any right to produce anything.  It provides a right to stop someone else from producing that patented something.
It may turn out that even the patentee cannot make the subject matter of his own patent, because doing so would infringe someone elses patent.

I don't think your misinformation is likely to mislead anyone here, but I hope you'll fix up the info on your web page.

Title: Re: Can i patent and sell this
Post by JimIvey on Jan 27th, 2006, 9:39pm
I guess it comes down to whether there's a difference between "exclusive rights to produce" and "exclusive rights to production of".  I'm not sure either way.

For what it's worth, I typically say that a patent grants the right to prevent others from exploiting your invention for a limited period of time.  It sounds a little more affirmitive than granting the right to exclude others from making, using, selling, etc.  It also dovetails with the other side of the coin: the requirement that you make your invention public knowledge.  It's less precise, but more accurate.

Regards.



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