www.intelproplaw.com | www.intelproplaw.com |
Re: Re: Re: Re: Re: Re: Re: Protecting patent[ Follow Ups ] [ Post Followup ] [ Patent Forum ] [ FAQ ] Posted by X on August 01, 2003 at 04:22:19: In Reply to: Re: Re: Re: Re: Re: Re: Protecting patent posted by M. Arthur Auslander on July 30, 2003 at 22:12:53: : : Mr. Auslander, : : I believe that we have the same opinion on this matter. Non-infringement and invalidity opinions from patent counsel are just what you've described--a study of a patent and the relevant prior art. : : Your electric motor invention is a good example of the type of prior art that you would look for to "knock out" a competitor's patent. Your opinion to the client would be that the patent in question is likely to be held "invalid" by a U.S. court in view of an 1864 patent. Of course, no legal opinion from any lawyer is ever completely certain. Indeed, there are very few things that are completely certain in life. However, such legal opinions allow one to make the best possible business decisions when going to market with a product. : : X. : : : : : A patent can be as broad as the prior art (e.g., other patents and references)will allow. It would be a good idea to get a "non-infringement" and/or "invalidity" opinion from a patent lawyer that would compare your product to the patented product. : : : : In particular, an invalidity opinion could determine whether the patent in question is unreasonably broad (e.g., encompasses prior art structures). This is accomplished by trying to find prior art that pre-dates the patent in question. : : : : X. : : : : : : : : : : : : : : HG, : : : : : : As far as I know, if a patentee (person receiving a patent grant) chooses not to exercise the right of "excluding others" from making, using, selling or importing the patented article or process into the U.S., it would NOT constitute an abandonment of the option of exercising that right on a later date. : : : : : : Having said all of the above, however, there are two equitable defenses to patent infringement available for defendants in cases where the patentee does not (or waits too long) enforce his patent rights. The following is just a general explanation of the defenses. You should consult with your patent attorney for more detailed information that is specific to your situation. : : : : : : The laches defense basically provides that if a patentee knew that others were infringing the patent and waited too long to sue for patent infringement, the patentee runs the risk of having damages barred up until the day the patent infringement suit was filed (i.e., patentee looses pre-filing damages). There is a presumption that a 6-year wait is too long. : : : : : : The second defense is Equitable estoppel, which requires the patentee to know of a specific infringer that is infringing the patent and then act in a manner that reassures the infringer that the patentee is not going to sue for patent infringement, AND the infringer relies upon the patentee's actions to the infringer's detriment (the infringer would be materially harmed if the patentee is later permitted to assert a claim inconsistent with the patentee's earlier conduct). The patentee's damages are barred forever as to that specific defendant. : : : : : : I hope this helps, X. : : : : : @@@@@@@@@@@@@@@@@@@@2 : : : : : : There wouldn't be lawyers if the law was, "certain" or "broad". The situation has to be considered in detail. The electric light bulb does not come along new very often. : : : I had a disclosure on an electric motor. I was shocked when the patent search show a patent from 1864 which anticipated it. : : : The theory of the patent is to encourage inventors to disclose their invention, they get a limited monopoly for the life of the patent then the world can benefit. : : : Some patents can be improved so that it may seem as if the patent term is longer that it actually is. : : : M. Arthur Auslander : Dear X, : Patents and patent application, even useless ones are expensive. A good patent application by a Patent Lawyer is not the filling out of a form but a study in completeness and breadth. : The application is examined before it is issued. Thus it would probably not be allowed by the patent office based upon the citation that the search found. : The search then in effect not only save money but the time investment to prepare and file, giving the inventor freedom to move on quickly. : M. Arthur Auslander
As a registered patent attorney, I can attest to the fact that the patent examining corps at the USPTO does IN FACT, from time to time, allow the issuance of an overly broad patent that is inclusive of prior art structures. This is to be expected because not even the US government can track ALL KNOWN prior art. Also, a patent search DOES NOT prevent the filing or issuance of an overly broad patent. Although I would agree that a patent search is helpful when drafting a patent application, it would be an extreme misconception (to be quite frank, dishonest to the point of being a fraud) for one to inform a client that a patent search is (even on a remote level) capable of finding all of the relevant art known to man. After all, the USPTO cannot even do this. Lastly, some of my clients (even sole inventors) would NEVER rely on a patent search to dictate the breadth of the claims in a patent application. The reason is that those clients actually prefer that I negotiate the breadth of the claims with the patent examiner during the examination period. This way, the claims are amended in response to the PTO rejections (i.e., the breadth of the claims are determined based on what the PTO says, and the PTO's patent search is FREE!!!). X.
|
www.intelproplaw.com |
The Intellectual Property Law Server Old Patent Forum |
www.intelproplaw.com |