Print

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

[Fastvape]

I have a question. Let's say I discover a window cleaner and discover it is good for taking the rust off of metal.
Can I patent that as my own being that window cleaner already exists?

The reason i ask this question is because we sell invisible ink. There are many known uses for invisible ink, usually pertaining to secret marking from a third party which goes back before world war 1.

We bundle our invisible ink with a powder and a black light and sell this product to hotels etc. for marking items to see if they have been cleaned.
Recently, an individual contacted us claiming he has a patent on this and we can set up a licensing agreement.
However, his patent differs in chemical ingredients than what is in our invisible ink.
He does in fact have a patent on the idea and the method. Now it would seem anyone selling invisible ink and marketing it for this purpose, one involving secret marking, cannot do so without paying him because it is his property?

If this is true, all one has to do is find a product, say baking soda, and discover a good use for it and patent it. It's one thing if baking soda would be added to something else but everyone knows that fluorescent materials are found in nature and they fluoresce under a black light unless they are removed. How can an individual stake a claim to something like this?

Basically we are taking two products, A pen and a light which are sold on hundreds of websites, and advertising one of the uses specifically. One that it seems to me is obvious to anyone on the planet. A use that existed in fluorescents before he had his patent which you can find dated on the internet.

I know you cannot get legal advise here but maybe chime in and straighten me out if I am in the wrong.

I mean, anyone else could find a use for a product already in existence and then not allow them to sell it for a newly discovered reason?
Any replies are appreciated.

[JimIvey]

The short answer is that novel (new) and non-obvious uses of known things are patentable.

You mentioned that the patent describes different chemicals but "patents" the general idea.  What a patent covers is defined by one or more claims at the end (numbered sentence fragments that follow something like "What is claimed is:").  If what you're doing is not completely accurately described by any of those claims, you don't infringe.  In other words, if a claim describes something you don't do, you don't infringe that claim.

Other simple things to check:

• Make sure it's a patent and not a published application.  The difference is huge -- like having a job application or having a job.
• Make sure the patent hasn't expired.  If it was filed prior to June 1995, it expires 17 years from its date of issue.  Otherwise, it expires 20 years from its earliest US filing date.
• Make sure the patent hasn't expired again.  Check to see if maintenance fees are current.  Patent Maintenance Fees

If you infringe at least one claim of an issued patent that has not yet expired, then you have to look at other options.  Otherwise, you can tell the guy to bugger off.

Regards.

[Fastvape]

Modified for privacy.
Thanks again

[JimIvey]

I assume you checked to see that the patent is still in force.

Unless you can show that others used invisible ink for supervising cleaners more than one year before the earliest US filing date of the patent's application, you probably have a problem.  You might consider legal assistance if you can't find an easy out.

One thing that might help is that you don't directly infringe (unless you use your products to test for cleaning of your own place).  So, you only infringe, if at all, vicariously.  There's been some recent changes to the law of vicarious infringement, and -- if I recall correctly -- in the direction of helping you.  But, that area of the law is sufficiently complex that you'd want legal help.

On the other hand, if you were selling invisible ink as a novelty and not in a kit, you'd be much better off.  Selling a kit with instructions as to how to infringe the patent claim isn't good for you.

Regards.

[Fastvape]

Yes the patent still seems to be in force. I can't show that invisible ink was used for cleaning but I can show that a fluorescent powder was used for this purpose 4 years before the patent was applied for. The is another product in powder form that was invented over 40 years ago and if you utilize the Internet archive you can see as early as 1996 they used fluorescent powder for germ training on surfaces to teach cleaning of surfaces.
So if we sell a kit with instructions that would be infringement but if we list it on our website as a use, is that infringement? Also if we bundle products together under the auspices of a security type kit and list many uses would that be infringing?

Thanks in advance. I'm still in a bit of shock that a person can patent something off a product we have made for 10 years and claim to have a property on one of it's uses and now we cannot sell it for that purpose. At least your replies suggest as much.

[Fastvape]

I should also like to add that fluorescent products have been around for 40 years to supervise hand washing and cleaning. We sell one of these products as well. What they do is show the cleaning of hands and if spots are missed areas of the hands will fluoresce. The formula is different from invisible ink but the principle is the same. I don't know if one can make the jump from hands to material objects but the patent holder worked in the hospital industry. It's possible he saw one of these products and moved it to the idea of using it on objects but the fact remains they were used in the cleaning of something.

[Oh, Crud]

Fastvape, based on what you've written, here are two bits of personal (not legal) advice for you.  One is, if the claims you've posted are actual claims, go back through your posts and modify them to excise all the information that could be used to identify your situation and this discussion during an internet search.  Two is, in your shoes I'd be seeking actual in-person assistance from a patent attorney.  What you are struggling with is the concept of obviousness - given the publicly known similar uses you've already described, why aren't the patent claims unpatentably obvious?  It may be that they are, but you should be getting direct professional advice on this point from someone who can spend a number of hours reviewing the situation and prior art. 

[Fastvape]

Thanks. I just removed the claims to be safe.
I do believe the situation does fall under obviousness as well as prior art and as Jim stated, vicarious use.

[Fastvape]

I assume you checked to see that the patent is still in force.

Unless you can show that others used invisible ink for supervising cleaners more than one year before the earliest US filing date of the patent's application, you probably have a problem. 
Regards.

I wonder if washing of hands also count, since these fluorescent products also have been used to train staff in hand washing for a number of years prior to the patent.

[JimIvey]

You mentioned you've been selling the products for 10 years.  If that predates the earliest US filing date of the patent by more than one year, you should be able to just tell them that and they'll go away.  If they force you to break their patent, then they get no royalties from anyone.

On the other hand, you may have a strong case that their claims are invalid for obviousness over the powered variation.  If you go that route, you should have a professional help build your case for obviousness and send them a nice "bugger off" letter.

Regards.

[Fastvape]

Thanks again Jim.
We have been selling invisible ink for that time but not necessarily for a "cleaning" application. I can however show that others have sold fluorescent compounds for cleaning training/contamination that predates the patent by 30 years.

"On the other hand, you may have a strong case that their claims are invalid for obviousness over the powered variation."
Yes, that is my thought as well.

[NJ Patent1]

Fastvape:  I don't quarrel w/ any prior post.  I just point-out that you allude to a method claim.  It's not the use of an old composition, it's a method of doing something w/ and old composition.  Like second-indication patents in pharma.  Marketing your product in a way that would encourage practicing the method could give rise to liability for either or both of contributory infringement and inducement to infringe (noted by others).  As Jim typed, if you were selling your ink product and promoting it for that method 1+ year before the priority date of the application that matured to the patent (and can prove it, or prove others were using it for that method), you would appear to be in good shape.  Empahis on proof.  Otherwise, it would be a good idea to consult a patent lawyer ASAP, potential damages may be mounting.  Let us all know how it turns out.