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[roark]

Hello all,  I'm a total newbie, so please excuse my ignorance.

Here's my deal:  I paid a lawyer nearly 10 years ago for a patent search on an invention of mine.  He found a few patents similar to my idea, one in particular, and recommended I don't move forward with my application.  Damn!
Problem is, nothing remotely like it has yet to make it to market, and I really want to pursue it again.  I have an actual need for this product, and am sure others would too.  I also have new connections is the industry now and feel I could get the product placed and distributed internationally.  I had a prototype machined in 2002 and used it successfully many times.  I could be happily using this thing right now, as well as making a killing on it, but this bozo beat me to the punch....and has apparently done nothing with it since.

So here are my questions:  Can I make some changes to his design and file an improvement patent to move forward to collect my riches?  Or is there anything I can do to get the patent from him if he's just sitting on it?  Or can I sell "MY" idea to a manufacturer and sort the patent infringement stuff out later?

Any help would be MUCH appreciated.
-roark

[George White]

It is very unlikely that your attorney filed a patent on your idea. At this point you might or might not have something patentable. First there is the reference that was a bump in the road ten years ago Then you have ten years of time during which someone else may have independently developed that same thing or things similar enough that your invention would be viewed as not being novel or not being non-obvious. Another thing is your "use" of the item over the last few years. If it was a public use or if you ever offered one to someone - even if they said no - you may have started a one year clock that has since timed out. Improvements you have made more recently might be in a better position.

--George

[ManOfManyBadIdeas]

From the looks of it, you had come with an idea somebody else already thought of and patented before you did. Happens all the time. Nothing you have said indicates that the initial attorney's assessment is incorrect, namely that your contribution doesn't warrant patent protection. If you want to get an improvement patent, keep in mind that in order to have patentable improvement it has to be a non-obvious improvement. Mere "design change" won't do. You can try to purchase the inventor's patent rights from him and resell it to your manufacturing contacts. However, since that patent has come up 10 years ago as prior art, it's *at least* 10 years old, likely more. How much longer is it going to be valid and provide protection? Also, if the original inventor really has done nothing about it, he/she likely has abandoned the patent (failed to pay the fees). Which means that anybody (including you) can use it without any infringement issues. Of course its harder to sell a product idea that carries no protection.

[Master_Blaster]

Hello all,  I'm a total newbie, so please excuse my ignorance.

Here's my deal:  I paid a lawyer nearly 10 years ago for a patent search on an invention of mine.  He found a few patents similar to my idea, one in particular, and recommended I don't move forward with my application.  Damn!
Problem is, nothing remotely like it has yet to make it to market, and I really want to pursue it again.  I have an actual need for this product, and am sure others would too.  I also have new connections is the industry now and feel I could get the product placed and distributed internationally.  I had a prototype machined in 2002 and used it successfully many times.  I could be happily using this thing right now, as well as making a killing on it, but this bozo beat me to the punch....and has apparently done nothing with it since.

So here are my questions:  Can I make some changes to his design and file an improvement patent to move forward to collect my riches? 
Easy.  If your improvement is new, useful, and nonobvious then you're in like flint - at least in the US.  Get an application written and get on file.  And never utter the phrase 'improvement patent' again.

Or is there anything I can do to get the patent from him if he's just sitting on it?
Yes, pay him some $$$ to buy the patent or a covenant not to sue.
 
Or can I sell "MY" idea to a manufacturer and sort the patent infringement stuff out later?
Would you make something that infringed someone else's patent?  If they're a reputable manufacturer (or importer/distributer) they'll do a clearance on teh product - and if it's competently done your competitor's patent will come up.  It'd be awkward trying to tap dance around an answer to the effect that 'well, yah, I knew it was out there, but I thought that if I didn't say anything it wouldn't be an issue.'

Any help would be MUCH appreciated.
-roark

[roark]

UPDATE:

Spoke to patent holder last night and he wants to partner up to bring this thing to market.  Any suggestions of how I should package the deal with him?  How can I double check he hasn't let the patent lapse?  Can I be added to his patent as a co-owner?  What does an average licensing deal look like?

Thanks for all your input!!!

[khazzah]

Can I be added to his patent as a co-owner? 

If you buy it. If you buy part, but not all, of the patent, then you will be a co-owner. The first page of the patent won't show it. But you can show the PTO that you are a part owner (this is called "recording an assignment") so that others can verify this.

How can I double check he hasn't let the patent lapse? 

You can check to see whether the maintenance fees for any patent have been paid here:

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

[roark]

Thanks for the reply!   Looks like the patent has expired.  Now what?  Do I need to partner up with the original patent holder at all now, or can I reapply for my own?

[khazzah]

Looks like the patent has expired.  Now what?  Do I need to partner up with the original patent holder at all now, or can I reapply for my own?

These are two different questions. The first relates to infringement. The second relates to patentability.

An owner of an expired patent has no rights, so you are free to "practice the claimed invention" without a license or threat of a lawsuit. However, it is possible to revive an expired patent under some circumstances, so you're not free and clear yet.

The fact that this patent has *expired* is irrelevant to you getting your own patent. However, this patent -- even before it expired -- could prevent you from getting a patent, since it's "prior art".

But you may have bigger problems than the expired patent and the patents from the search. You said:

I also have new connections is the industry now and feel I could get the product placed and distributed internationally.  I had a prototype machined in 2002 and used it successfully many times.

If your prototype was in "public use" then it bars you from getting a patent -- 102(b). And if you have, in talking to your connections, made an "offer for sale" then this activity may also be a bar, and if not, it may have reduced the amount of time left you have to apply for a patent.

All the terms I used above -- practice the claimed invention, prior art, public use, offer for sale -- are legal terms specific to patent law. Therefore, you really need to consult with a patent attorney at this point. There is nothing wrong with educating yourself by asking questions on this forum, but generic answers will only get you so far.

[roark]

Thanks Karen!!!

[doug vagedes]

As another stated here, if the patent is expired you are free to use (as well as anyone else).  And not obligated to parther with the patent holder.  In fact getting into a partnership with someone you don't know is usually not a good ideal.  While well written patents do provide protection, it's not the end if you don't have a patent.  Many times the company who creates and executes a well thought out marketing plan, especially building a great brandname and developing the pacakging can be just as valuable.

Other factors to consider, your cost to enter the market are somewhat minimal, therefore lower risk.  But on the same side, bariers to entry are low for a competitor also.

It's all about the marketing!!! 

If you like, ask me anything about the marketing side.  But keep it general or offline


Best of success

Doug Vagedes

[patentsusa]

Thanks for the reply!   Looks like the patent has expired.  Now what?  Do I need to partner up with the original patent holder at all now, or can I reapply for my own?

If it expired for failure to pay maintenance fees, and there would be some term remaining if the fees were paid, be aware that there is a possibility of reviving it with a petition and fee.  If the abandonment was intentional, a revival would be improper, but you would have to go to litigation to prove it.  The U.S. Patent and Trademark Office doesn't usually ask many questions when presented with such patents. 

I would consider filing one or more patent applications on recent improvements, file one or more trademark applications (branding), and one or more design patents (on the appearance).  Then you will have something to cross license, if necessary, with the person who has the original patent.  Then focus on marketing.