So lets say in the above scenario the suction cup was patented.I would have to license that?
How does that take place.
Thanks Again.
Step 1 - carefully review the patented claims to find out whether your workable suction cup options all fall under the claims of that patent. That is, are there substantial subtractions/additions you could make to the cup such that it is taken clearly outside of the patent's claim scope?
[1] "Substantial" because the court cases say that making an insubstantial change likely will not save a design-around from being judged infringing. This is a good exercise to undertake with the guidance of a patent attorney or patent agent.
Step 2 - if there are no workable, non-infringing suction cups available, carefully review the patented claims and their prosecution history in view of the prior art. Good to have this done through a patent guy. Could be there is a clearly anticipating reference (i.e., one that shows the patented suction cup was not really new when invented) that the patentee and Examiner were ignorant of. Similarly, could be there are obvious combinations of references that invalidate the suction cup patent (i.e., that show the cup invention was just an obvious combination of known things). The patent laws award valid patents to inventors of new and non-obvious things, not inventors who (even in good faith) "re-invent" independently a thing that was already known.
Step 3 - if there are no workable, non-infringing suction cups available
and if you do not have a suitably clear proof of invalidity
[2], you may want to approach the patentee to ask if the patent is generally available for licensing. This could also be done through a lawyer to try to protect your anonymity for at least the time being. It could be that the patentee is unwilling or unable to license (e.g., s/he may have already promised exclusivity to another party - patents can be licensed either exclusively or non-exclusively). If licensing is not an option, you may want to redouble your other efforts - for example, go back and take another really hard look at devising a non-infringing cup. Or if the patent is available for licensing, then if you and the patentee work out a deal that you both think is economically good, I'd expect you'd ink the deal. Note an inherent danger here is that if you get deep in talks with the patentee but the deal falls through, if you go ahead with your product the patentee is going to zero in on your product asap.
[1] Of course, you want to make sure you don't design around one patent just to find out you've designed yourself into another patent.
[2] Taking a line in the sand over an invalidity position is always a business risk assessment. Even if you think you have very clear proof of invalidity, remember that (if the patentee sues you), human beings will be the judge of whether you were correct. There's always business risk there. Some companies prefer not to rely on invalidity positions, especially since, up until you get sued, the patentee doesn't know what's in your head. On the other hand, with a design around clearly outside of the scope of the patentee's claims, the cards are already on the table as s/he should be able to recognize that by looking at your product. Not that there aren't lots of arguments on this point, too.
Author
Topic: getting a patent with 2 existing patents (Read 1021 times)
