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Author Topic: Timing of Notifying Infringer  (Read 747 times)

PHInventor

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Timing of Notifying Infringer
« on: 02-13-12 at 07:16 pm »

An inventor has filed a utility patent application. It has been published, but it is still pending.
The inventor's startup company has not yet begun manufacturing the device.
A competitor with deep pockets begins selling a device that infringes upon the invention. 

If the inventor notifies the infringer before the inventor is making any money, it may incite the competitor to challenge the validity of the pending patent, thus injuring the inventor before she ever gets the product to market. Thus, it would behoove the inventor to wait until her product is on the market and is actually making money, before notifying the infringer.

A. What is required of the inventor with regard to notifying the infringer?  Do the USPTO or courts consider it wrong or bad for the inventor to deliberately wait for a few years until the inventor's device is making money and she can afford to fight back against a patent validity challenge?

B.  What would you recommend to the inventor, in the above circumstances?
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bleedingpen

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Re: Timing of Notifying Infringer
« Reply #1 on: 02-14-12 at 05:43 am »

No such thing as an infringer of a pending app.

With that said, the gold pot at the end of the rainbow provisional rights may apply.

If you are going to take the wait-and-see approach to notifying an infringer (probably nothing wrong with this from a legal standpoint), then be sure to have a continuation pending so that you can effectively re-prosecute the case if the infringer kicks up prior art.
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PHInventor

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Re: Timing of Notifying Infringer
« Reply #2 on: 02-14-12 at 12:56 pm »

Quote
No such thing as an infringer of a pending app.
True...so I guess my question is only relevant if/when the relevant claims are approved.

Quote
If you are going to take the wait-and-see approach to notifying an infringer (probably nothing wrong with this from a legal standpoint)
That's the question: is there or isn't there anything wrong with this? 

In other areas of patent law, the inventor has a duty to disclose certain things in a timely manner (e.g., other people's input on an invention, prior art, etc.).  If the inventor is planning at some point to pursue legal action of some kind against the other party, does the inventor not have a duty to disclose the infringement within a particular period of time? Or, rather, does it simply affect the inventor: in other words, the inventor can wait as long as s/he wants to disclose, but the damages can only go back to X time (whether that's back to the time of disclosure, 2 years prior to the time of disclosure if the patent was published, etc.). 

Thanks--I am a novice in these things and getting the nuances right and facts straight is often difficult.
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bleedingpen

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Re: Timing of Notifying Infringer
« Reply #3 on: 02-15-12 at 04:55 am »

statute of limitations in patent law is 6 years.

in some cases, accused infringers will argue estoppel against the patentee for failing to take action.  That is almost always a losers argument, and the cases in which it might apply do not fit your fact pattern.
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