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[Kerry]

Hello,
I invented a simple camera gadget in Canada. I decided to have it made in Taiwan. When in Taiwan i found a similar but different gadget  in Taipei that has a Taiwan  patent, Japanese patent and US patent pending. It was poorly packaged and finished.

I met with the owner briefly and wanted to work with them because my idea greatly improved his and I wanted to work with them. In the end they said nothing stopped me from making my gadget.

I have tried for 6 months to get this in writing but they would not reply. My product is almost ready for market. Finally yesterday they contacted me and said there was a conflict with their patent.  My product is not a copy but may have parts that infringe on his patent. Before all of this I applied for a US provisional patent. But I now know it was after they applied.

If I sell online from Canada to the world- what power does his patents have over me. Does he have any rights in other countries? When does the product become public domain and unpatentable?

Advance thanks
Kerry

[CriterionD]

If your product is infringing their patents (issued patents, not necessarily pending patents), you can not manufacture your product in or sell your product to countries in which this other party holds a patent.  Although, I'll add, I have no clue what it is like to enforce a patent in Taiwan. 

You also may still be able to patent your product, although your protection will be pretty much limited to the parts of your invention which are considered novel and "non-obvious" in light of prior art.  This would not protect you against an infringement suit, but could provide leverage when seeking the cooperation of the other patent holder (the other patent holder has no obligation to return your correspondence or otherwise cooperate with you). 

If you have enough at stake you may wish to talk with an attorney to figure out what your exact options are. 

[Kerry]

Thanks for your reply, it is a great help,still more questions though.

Does his US patent pending prevent me from selling in the US? If and when he receives his US patent are retroactive royalties due to him? If I start selling publicly in his non-patent countries can he apply for a patent in those countries? How do patent laws apply to online sales? e.g. patent country customers buying online from my Canadian online store?

Sorry for all the questions, I have been thrown for a loop as I honestly thought this was my idea but someone has beat me to it in another country and language. I have already invested a lot and I atlest want to sell enough to recoup my investment.

Thanks again

[CriterionD]

If and when he receives his US patent are retroactive royalties due to him? If I start selling publicly in his non-patent countries can he apply for a patent in those countries?

The answer to both questions is: maybe, maybe not.  It depends on details not provided.  Royalties can be retroactive to when a patent application was published (18 months from when a non-provisional app was filed).  But I don't believe that always works in a clearcut manner.  And whether or not the other party could file in new countries (and have a patent granted) likely depends for the most part on when their initial application(s) were filed and whether or not they can still claim priority to it.

Of course, you would also want to at least try and determine whether or not the other party's patent apps are likely to issue, and whether you would likely be infringing them, before worrying about that stuff.

How do patent laws apply to online sales? e.g. patent country customers buying online from my Canadian online store?

A US patent gives one the right to prevent others from making/using/selling/etc an invention in the US.  Not in Canada.  But once a covered invention is sold/shipped in/to the US without a license, then you have infringement.  Thats generally how patent law works.  So if there is no Canadian patent, you are good to go, but can't ship to the US, can't contract manufacturing from the US, and can't encourage shipment to the US.   

[landonew]

If and when he receives his US patent are retroactive royalties due to him? If I start selling publicly in his non-patent countries can he apply for a patent in those countries?

The answer to both questions is: maybe, maybe not.  It depends on details not provided.  Royalties can be retroactive to when a patent application was published (18 months from when a non-provisional app was filed).  But I don't believe that always works in a clearcut manner.  And whether or not the other party could file in new countries (and have a patent granted) likely depends for the most part on when their initial application(s) were filed and whether or not they can still claim priority to it.
 

I believe that retroactive royalties may be applied to the date in which the infringer received notice.  Since he has received actual notice (they told him directly about the patent application) the royalty fees can be applied as of that date they told him.  The publication constitutes "constructive notice" but I believe that actual notice can occur prior to that date by establishing actual notice. 

Again, the original post was not clear as to whether or not they informed him about both the Taiwan patent and the US patent application. 

I would suggest obtaining council.  You could always attempt to negotiate an assignment.   

[MYK]

I would suggest obtaining council.  You could always attempt to negotiate an assignment.   

Before doing that, read the patent application AND ITS HISTORY (available through "public PAIR" at the USPTO website) and decide whether your product infringes at all.  Start with the application, then see if and how it's been modified as it's been examined.  Read the claims section first for key words to look for, then read through the specification to see what the words in the claims actually mean.

You still may need legal counsel if the features are similar-but-not-identical, but it could also be that the Taiwanese company is just trying to scare you out of the market so that they won't have to compete.

Also, even if it looks like you may be hosed, if you can prove prior invention, you may be able to beat them.  Depends on their filing date, how far back they can prove they invented theirs, and how far back you can prove you invented yours -- through your witnessed notebooks, your submission to your contract manufacturer, and so on.

[CriterionD]

I believe that retroactive royalties may be applied to the date in which the infringer received notice.  Since he has received actual notice (they told him directly about the patent application) the royalty fees can be applied as of that date they told him.  The publication constitutes "constructive notice" but I believe that actual notice can occur prior to that date by establishing actual notice. 

You are right.  But, under no circumstance can damages be retroactive to a date before a patent app was published, and I am not aware that there is any clearcut definition governing what constitutes actual, credible notice.

[landonew]

I believe that retroactive royalties may be applied to the date in which the infringer received notice.  Since he has received actual notice (they told him directly about the patent application) the royalty fees can be applied as of that date they told him.  The publication constitutes "constructive notice" but I believe that actual notice can occur prior to that date by establishing actual notice. 

You are right.  But, under no circumstance can damages be retroactive to a date before a patent app was published, and I am not aware that there is any clearcut definition governing what constitutes actual, credible notice.

Thank you for correcting me. Learn something new everyday.  I guess there is no such thing as "actual notice" in regards to retroactive royalties.

[Kerry]

Thanks very much for all your comments.
One final question. If someone has applied for a patent but it has not been granted yet, can it be challenged by another party? In this case I feel I have found prior art that would disqualify the application.
How do I find the application or do I have to wait until the patent is granted to challenge it?

[MYK]

What you're considering is called "protest".  Here's the relevant MPEP chapter, 1900:
http://www.uspto.gov/web/offices/pac/mpep/old/E8R3_1900.pdf

Unfortunately, once the application publishes, the USPTO doesn't allow protest submissions any more.  You're basically stuck hoping that they'll do their job, find the relevant prior art, and reject the application.  See 1901.04.

After allowance, if it's a serious problem for you, you could file a request for reexamination, which costs $8800 just for starters.  Alternately, assuming you've really found relevant prior art which would invalidate the company's patent, you could use the threat of this as a stick to force them to give you a license on reasonable (i.e., "free") terms:  "license to me or lose your ability to enforce against others, even though we both really know it's an invalid patent and should be scrapped."  Ethically crappy, but it's a lot cheaper.

Edit: I have been corrected in another thread regarding this.  The USPTO will allow protests after publication, if the protest is accompanied by the written consent of the applicant.  While I believe that most applicants for patents would not allow others to try to cause rejections of, or limitations to be added to the claims in, their applications by submitting prior art to the USPTO, it is possible.

[NRLMint]

If you really want to duel it out, just remember that in the U.S. (not sure about Canada), it's all about first-to-invent. Not first-to-file.

Since you only recently applied with a provisional application, your up and coming non-provisional application is probably still in the works. You won't be able to see your "competitor's" U.S. application until it gets published (18 months after filing).

.NRLMint