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[SirBuzzKill]

Hello,
My questions are going to be a bit broad but I will make the post as short as possible.
I recently imported some internal chip LEDs and had started to sell them. About a month later I got an email from someone claiming to have a patent pending on the product I was selling, as well as claiming he was trying to have the US border protection stop the import of these products. I immediately asked him what his patent covered so I could change my product if it did infringe on his possible future legal rights as well as how he was trying to enforce rights with the US Board on a patent pending. Almost a week later he has not replied.

Is there any way to find out what his patent covers before it is published?
Internal Chip LEDs have been around for years before his patent application. Is the coding on these LEDs (that would change how they blink/flash) patentable?
Would the trail of light be patentable? Another product from years before his came out left a trail that was visually identical.

Thank you! 

[JimIvey]

Is there any way to find out what his patent covers before it is published?

No. 

More importantly, the other guy has no enforceable rights until the patent is no longer "pending".  You can't be held liable for any damages for infringing until (i) you at least have a copy of the published application in front of you or (ii) the patent issues.

Internal Chip LEDs have been around for years before his patent application. Is the coding on these LEDs (that would change how they blink/flash) patentable?
Would the trail of light be patentable? Another product from years before his came out left a trail that was visually identical.

I don't have enough information to say what part, if any, of internal chip LEDs are patentable.

Regards.

[khazzah]

got an email from someone claiming to have a patent pending on the product I was selling, as well as claiming he was trying to have the US border protection stop the import of these products.

Patent pending tells you very little. He may have a provisional application which itself cannot mature into an enforceable patent. He may have a pending utility patent application which can mature into an enforceable patent - that is, if everything goes "right" [from the applicant's point of view].

He would need an enforceable *patent*, not an application for patent, in order to attempt to get "the US border protection stop the import of these products".

Is there any way to find out what his patent covers before it is published?

That information is not public until the application publishes or the patent issues. Therefore, the only information you can obtain about the application is information that the applicant gives it to you. The applicant can share as much or as little as he wants.

Note that even if the applicant shared all the details of the patent application, no one can know what the patent covers until the patent issues. Until then, the claims are in flux, in negotiation with the patent office.

Internal Chip LEDs have been around for years before his patent application. Is the coding on these LEDs (that would change how they blink/flash) patentable? Would the trail of light be patentable?

The only valid answer to your question is an LED feature is patentable if it's novel and non-obvious.  Making such a determination is a complicated and very fact specific analysis. You don't have enough facts.

Another product from years before his came out left a trail that was visually identical.

If that's true, then generally speaking the applicant is not legally entitled to obtain a patent on the particular trail-of-light feature embodied in the old product. Of course, the Patent Office may not know about the older product, and so the patent might issue anyway, in which case this is an issue which might be used to invalidate the patent in litigation.

[klaviernista]

Is there any way to find out what his patent covers before it is published?

No. 

More importantly, the other guy has no enforceable rights until the patent is no longer "pending".  You can't be held liable for any damages for infringing until (i) you at least have a copy of the published application in front of you or (ii) the patent issues.

I generally agree with Jim (and Karen), with a few minor nits.

First, it is not impossible to find out what is contained in an unpublished patent application.  It is just rare and difficult. All you need to do is ask the applicant for a copy of the application, and all they need to do is provide it to you.  Of course, a patent applicant will almost never dish out his/her unpublished patent applications to a third party, but you CAN ask.

Second, you should be aware that the applicant who contacted you may be tryiing to establish a date from which they can claim damages under a provisional rights theory.  But that is not too much to worry about.  I don't know anyone who has heard of anyone pursuing, much less successfully suing for damages on such a theory.  Not to say that it can't happen, of course.  Regardless, what the applicant is doing in your case would likely not be enough to constitute "notice" under the provisional rights cases/law.

[klaviernista]

Note that even if the applicant shared all the details of the patent application, no one can know what the patent covers until the patent issues. Until then, the claims are in flux, in negotiation with the patent office.

Further to my prior post, and commenting on Karen's comment above, be sure to keep a copy of any claims that the applicant shares you.  Unless a patent issues with claims that are substantially the same as those provided to you, the applicant/patentee should have a very difficult time establishing a provisional rights theory.

[SirBuzzKill]

Thank you for the information.

In the situation where the patent does get approved what legal course would he most likely take? This is not a "millions of dollars" item.
Could you clarify this: "You can't be held liable for any damages for infringing until (i) you at least have a copy of the published application in front of you or (ii) the patent issues."
Are my current profits potentially at risk?
What steps, if any, are available to me to protect my interests?

Thank you!
Andrew

[Isaac]

Are my current profits potentially at risk?

Potentially, profits can be at risk because of a pending patent application.  But there are some "ifs" to flesh out.

1) Patent pending can mean that someone has filed a provisional application or that someone has filed a non-provisional patent appplication that has not yet been granted as an application.  Your profits are at risk only in the later case.

2) Even when a non-provisional patent application is pending, you are potentially liable for profits prior to issue only after you have been notified by being provided with a copy of the patent application after it has published.   Even then, other conditions come into play. You have said that you have not been so notified.  If true, then none of your profits so far are at risk.

Once you have a copy of the published application, you can make better decisions about what actions to take.

[polarbear]

Just to take a step back.
You received an "email from someone"
If it wasn't a certified letter from a legitimate law firm on behalf of a legitimate company, it might not be worth the paper it wasn't printed on.  Just something to keep in mind.