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[TataBox]

Has anyone ever heard of this happening?  Just received one and it seems very unusual.

Regards,

[Wiscagent]

Is the a court order, or just some yahoo giving you a hard time?  Either way, I never heard of it.

[TataBox]

No court order.  Assignee just giving me notice of their pending patent application and the request to license.  It currently is in final on a 103(a). 

[DogDayPM 9er9er9er]

No court order.  Assignee just giving me notice of their pending patent application and the request to license.  It currently is in final on a 103(a). 

Kind of makes you want to reply, "Come talk to me when you grow up to be a Patent, SonnyBoy"?

No particular product mentioned?  Kind of hard to assess the value of the offer.  On the one hand, you can see their app's in trouble, but they may eventually get some claims through, but on the other hand if you don't know which product you've no real basis for comparison.

The opposite has happened to me - I've been approached to license out a pending app that was on final rejection (and heading to appeal).  The guy who approached wanted to be as sure as possible there were no undotted I's or uncrossed T's.   

[Isaac]

The opposite has happened to me - I've been approached to license out a pending app that was on final rejection (and heading to appeal).  The guy who approached wanted to be as sure as possible there were no undotted I's or uncrossed T's.   

One thing you can do to reduce the potential liability is to assess whether substantial narrowing amendments have been made to the claims (in particular the indepent claims).  If so, then the patentee cannot seek damages based on the preissue period, and you can simply cease operations if the application does issue as a patent.   Of course that may not be the path to take if stopping means taking large losses.

[TataBox]

The opposite has happened to me - I've been approached to license out a pending app that was on final rejection (and heading to appeal).  The guy who approached wanted to be as sure as possible there were no undotted I's or uncrossed T's.   

One thing you can do to reduce the potential liability is to assess whether substantial narrowing amendments have been made to the claims (in particular the indepent claims).  If so, then the patentee cannot seek damages based on the preissue period, and you can simply cease operations if the application does issue as a patent.   Of course that may not be the path to take if stopping means taking large losses.

Yes.  They specifically mentioned a product.  Isnt the standard whether the claims at issue are substantially the same as that during publication, if so then you have provisional rights dating from publication?  I think making that determination would be very difficult, in that, you would be on the hook in a scenario wherein you stated it was ok to proceed, when it was later determined improper.  Is there a good amount of case law on this?


Regards,

[DogDayPM 9er9er9er]

Yes.  They specifically mentioned a product.  Isnt the standard whether the claims at issue are substantially the same as that during publication, if so then you have provisional rights dating from publication?  I think making that determination would be very difficult, in that, you would be on the hook in a scenario wherein you stated it was ok to proceed, when it was later determined improper.  Is there a good amount of case law on this?

Actually I think under § 252, the granted claims are to be "substantially identical" to those published if the patentee is to have provisional rights dating back to the publication.  And I've not seen a case spending time explicating what is "substantially" identical (anyone??).  In other words, I've seen little case law and in my current ignorance believe "substantally identical" means "identical except for amendments as to matters of form only". 

In your own situation, then, and basing a premise on my ignorance, are there claims currently in prosecution that match (for now, say, "are identical") to the pub'd claims? (second half of question for thoughts only and no reason to answer out loud), ". . . , and which also reasonably read on a product"?).   If no original independent claims remain, then past damages (from date of pub) should not be an issue. 

Going forward from the (unlikely?) issue date, if there have been amendments to the independent claims, do these currently pending (and finally rejected as you mention) claims still read on your product? (don't answer aloud).  Even if so, as I understand the statute, there can only be damages counting from the date of eventual grant (which obviously may never even happen).  Might you now want to discuss (internally) design arounds in case these rejected claims do issue?  In like situation I have also considered obtaining an independent (outside and not otherwise involved) counsel opinion regarding the validity (or in-validity) of the pending rejected claims (any including dependents that an unreasonable assignee of the letter-sending sort might think would read on my product).

PS,  I've wondered what the heck is a tataboxinhibitor?  Must be quite some story behind the name . . .

[Isaac]

Yes.  They specifically mentioned a product.  Isnt the standard whether the claims at issue are substantially the same as that during publication, if so then you have provisional rights dating from publication?  I think making that determination would be very difficult, in that, you would be on the hook in a scenario wherein you stated it was ok to proceed, when it was later determined improper.  Is there a good amount of case law on this?

You've correctly stated the law, but there is not a lot of on point case law.  That's why I described a case where the claim scope is dramatically different so that the determination can be made more reliably.  If the independent claims are amended to overcome the prior art, that's probably a pretty good sign that there has been a substantial change.

[lukertin]

It's not that unusual.  If they get a patent on the product and they are able to make a case for infringement, they will have grounds for more recovery from you (assuming you don't c&d) than had they not sent you a C&D.  They're just covering their bases.

[Robert K S]

DogDay, look up TATA box on Wikipedia.

[klaviernista]

DogDay, look up TATA box on Wikipedia.

Looked at it, and have to say I was disappointed.  Who knew that a DNA sequence could also be a double entendre?

[TataBox]

I didn't know there was a discussion on my name.  It has been so long since I started using it, I forgot what it was.

Regards,