Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[ErykSD]

I had a really good idea but found out it was already patented... but to my suprise it has never been put on the market. I belive it is a very good idea, and will have a very useful application for deaf people.

I have been reading ¨From Patent to Profit¨ by Bob DeMattheis where he tells you how to contact a Marketing Director, Manufacturer, and Distributor once you´ve patented an idea.

My question is... What do I do in my situation? I would basically be a middleman for the patent owner and the end users, wouldn´t I?

I am just trying to figure out the best way to handle this situation and bring the product to fruition. How should I approach this situation?

Any advice would be greatly appreciated 

[MYK]

Who actually owns the rights to the patent?  Multiple inventors?  Any assignees?  Exclusive license vs. nonexclusive?  How easy would it be to "design around" the patent claims?  Are you sure that there's no way YOU could design around it to avoid having to license it?  Are the maintenance fees paid up on it or has it lapsed?

Just a few things to start on.

[ErykSD]

@mowpar: I sent him a official letter asking him if I could license his invention (which I also independently thought of) and he said I could. This invention has never been put into production, you can't find it on the market.

He said he looks forward to how I will handle the marketing and distribution of the product, since it is the most challenging part.

I have been doing my own independent research and wanted to have a set plan of action before I reply to him... but I suppose I should ask if he is even open to exclusivity, and if he is also actively pursuing putting the product on the market, no? It is sort of a niche product... I think it would only be wise to have one person selling it.

@MYK: The individual whom I contacted owns the rights. Only one inventor, and he is also the assignee. I will try to push for an exclusive license but have not asked him about that yet. Should I ask now or wait until I have some sort of business plan?

I don't think I can "design around" the patent claims... I read through it and designing around it would be impractical it seems, but then again I am not fluent in lawyer language so I might be missing something.

How would I check if the license fees are paid up or if they have lapsed?

Thank You for your replies!

[DogDayPM 9er9er9er]

How would I check if the license fees are paid up or if they have lapsed?

I think you mean the patent maintenance fees.  In the US, these are due 3 times throughout the life of the granted patent.

Using the link below and the patent number (no commas) and the serial number (no slashes, no commas) you can find out the payment status.  If the patent just granted a few years ago, no fees would be due yet (they come due at 4, 8and 12 years).

Note this website is very quirky and about half the time erroneously tells you no information is available, so sometimes you just have to keep coming back and checking later.

https://ramps.uspto.gov/eram/patentMaintFees.do

[DogDayPM 9er9er9er]

A thought in all this ocurred to me.  As unlikely as it is for two people to come up with the exact ideas, I guess it happens.

Before I started doing patents, I thought the same thing - that it would be unlikely for different people to independently come up with the same idea.

But actually, it happens all the time.  I can't tell you how many times I've been presented with a really neat invention to try to patent, but then we do a search of the databases and find out the really neat invention (or something so close to it as not to matter) has already been patented or described in some journal article.

[ErykSD]

This thought needs to be considered.  It would not be unheard of , and be very, very, sneakey and unlawful.

I guess you are not going to post patent number or dicuss what it is. so I guess there is no way, of proving or disproving.

I will read this thread, but will not particaipate, any further.

Mowpar,

All of my good ideas I have come up with have already been patented. It happens all the time. There are countless engineers and bright minds out there who have good idea's everyday.

I believe a person doing what you described and trying to manipulate the forum is indeed very sneaky and I would be disgusted by a person like that. What you described is a leach, leaching off others work. No, my friend, I strongly believe the opposite, in creating something... which is why I have decided to go into this field.

This idea has the potential to improve the lives of everyday people and has actually a very useful application for deaf persons. Which is why I was disappointed to find out it was patented, but I believe it has potential, and I want to give a shot at making it a reality. That and I still think it will be interesting in creating it and bringing it to fruition.

Which is why I'm pursuing it.

Notice that it is other users who brought up the idea of designing around the patent, and how I said it is most likely not possible. Hence why I am asking about how to negotiate with the patent owner.

There is no way for me to prove it to you, but I did think of the idea independently. I value my time too much to be searching various patents and checking if they have been implemented or not.

So Mowpar I am assuming you think I am trying to do something unlawful or cheat the patent owner... not sure what you are saying.
I am trying to make this idea happen, up to you whether you participate in it or not.

You have to remember I am also weary of the patent owner trying to take advantage of my position as a novice starting out. While the idea has the potential to help alot of people, I don't know if the inventor is a good person or not, and it is easy to make yourself liable once forms start getting signed.

So getting back on topic:

One of my questions to the board is actually: Should I try to work with the patent owner on getting the product onto the market? Or should I just negotiate with him? I don't know whether this type of relationship would work.

[doug vagedes]

Eryksd, not sure if you mean that "working with" the patent owner is some sort of partnership or other, which I would not advise.  Best to negotiate an exclusive license agreement paying a royalty on income, not sales. 

[Patentsforsale]

Hi

If you have a registered Patents, Trademark, Copyright or any other intellectual property which you own the rights to
then register your invention on www.patentsforsale.co.uk for Free.

List your unlimited number of inventions for free and let buyers contact you, and you can sell or license your invention
to entrepreneurs and private individuals who could take your invention to another level.

So Register today on www.patentsforsale.co.uk

Admin Team Patentsforsale.co.uk

[ErykSD]

How would I check if the license fees are paid up or if they have lapsed?

I think you mean the patent maintenance fees.  In the US, these are due 3 times throughout the life of the granted patent.

Using the link below and the patent number (no commas) and the serial number (no slashes, no commas) you can find out the payment status.  If the patent just granted a few years ago, no fees would be due yet (they come due at 4, 8and 12 years).

Note this website is very quirky and about half the time erroneously tells you no information is available, so sometimes you just have to keep coming back and checking later.

https://ramps.uspto.gov/eram/patentMaintFees.do

DogDay,

The maintenance fees were due yesterday (the 13th) and the Patent owner still hasn't payed them (It says on the website you recommended that they are due, an amount of over $500). I think he might want to just give up on this patent, since it was registered back in 2003 and no product has ever been launched using this patent.

How long until the patent defaults and someone else can claim the patent? Not sure if I would want to do this, but if he is going to default on the patent, I might consider taking it over.

[DogDayPM 9er9er9er]

The maintenance fees were due yesterday (the 13th) and the Patent owner still hasn't payed them (It says on the website you recommended that they are due, an amount of over $500). I think he might want to just give up on this patent, since it was registered back in 2003 and no product has ever been launched using this patent.

How long until the patent defaults and someone else can claim the patent? Not sure if I would want to do this, but if he is going to default on the patent, I might consider taking it over.

Eryk, once the patent expires for lack of maintenance fees, the claimed subject matter falls into the public domain rather than being available for someone else to claim or take over the patent.  That is, it becomes available for all to practice;  although you must take note this is always still subject to the rights that yet another patent holder may have.  But so far you've only found the one patent that seems to cover your proposed product, so let's focus on that.

If you simply sit still for a while and the patent expires for failure to pay maintenance fees, you may then make/sell your product without worrying about this patentee.  Be aware he can pay his maintenance fees late (plus paying additional fines) and be able to re-instate the patent.  This is subject to certain restrictions like being able to say the expiration was unintentional.  And it's one of the fuzzier areas of patent law - in some cases patentees who missed payments over a year old were still allowed to re-instate the patent.  You might want to consult a patent attorney to get a little more clarity as to when exactly his patent will expire due to non-payment, how long past due is long enough to feel "safe", etc.

But you might not want his patent to expire.  Although it would give you freedom to operate in view of his patent, your potential competitors get the same freedom.  So if the patent broadly covers what you want to produce (that is, if it is hard to design a competing product that is not covered by the patent), then it would be to your benefit to have the patent still in force if you get an exclusive license from the licensee because then you'd have a deterrent to copyists.  Or if he sold the patent to you outright.  Again, it might be helpful for you to consult a patent attorney to help determine how broad the patent really is, how easy to design around, etc.  Also to get more concrete ideas about ways to approach the patentee for licensing or outright purchase.  It might be he'd sell it to you for a bit of money and your promise to pay those maintenance fees due.

[MYK]

The maintenance fees were due yesterday (the 13th) and the Patent owner still hasn't payed them (It says on the website you recommended that they are due, an amount of over $500). I think he might want to just give up on this patent, since it was registered back in 2003 and no product has ever been launched using this patent.

There are three times to think about regarding those maintenance fee payments -- when the payment window opens, when the fee goes up, and when the payment window closes.  If the payment window closed and the guy still hasn't paid the maintenance fee, then the value of licensing it has dropped significantly, since "interim rights" are now a risk even if he does a late payment.

So, are you sure the window closed, or is it just the "additional surcharge" period now?

How long until the patent defaults and someone else can claim the patent? Not sure if I would want to do this, but if he is going to default on the patent, I might consider taking it over.

Roughly 5.4 × 10e−44 seconds after the payment window closes. 

[ErykSD]

Yes, actually I believe the surcharge window has opened, so he has to simply pay a fee of $65 extra.
The actual window closes in September, still a ways from now.

I would definitely want to go for exclusivity, so I wouldn't want his patent to expire, your right. I am considering buying it off of him, but I don't think I would have the funds for that, I just only graduated university last year. Same goes for a patent lawyer... I could save up or borrow a few grand, but I should probably do some market research first, which will also cost money.

I am actually talking to William Bonk from emergingstrategies.com, he was recommended to me by someone off this site. He is giving me some advice, and told me I should do market research before going any further, to see if it is even profitable to go after the idea.

So where should I go first? Patent lawyer, Marketing expert, or just talk to the Patent Owner?

Another thing to consider is I'm in Spain for the next 2 months (I'm teaching here) and so I can't meet personally with anyone and my funds are pretty limited at the moment.