Expired Patent, Now what?

[Derek Scott]

Hello there,

I have an expired patent (2008), but I still want to proceed with trying to find a company to make a real prototype.  I found such a company and will get them to sign a non-disclosure agreement, since they do sell similar products, yet mine is smaller than they currently make, different material, and works in a different area than theirs.  If all goes well, I'm hoping they'd be interested in a licensing agreement.  (Not sure how to negotiate that).

1) Am I going about this all wrong?

2) I've decided not to work with one of those "invention" companies, since there's too many horror stories of just taking your money, though they still tell you that they can help.

3) Is there anything further I could do to help protect myself, besides trying to file for a new patent (If I could even change my invention up enough)?

4) If said company provided a prototype.....how do I proceed with asking about licensing or do I just turn to a patent attorney for help? 

Thanks,
Derek

[lazyexaminer]

If your patent expired in 2008 you can't sue anyone for infringement anymore so I'm not sure what you would be licensing to anybody.

[NoMotivation]

Right.  As soon as you show anyone your expired patent and explain its amazing commercial potential, provided they believe you, they will respond by thanking you, showing you the door, and proceeding without you, and there's nothing you would be able to do about it.

[Rabid Levity]

Despite some of the pessimism expressed above, there are at some times values in the exact what/how of an expired patent.  Patents are supposed to teach the public how to do the invention but are seldom perfect in this endeavor.  Further, it is often the case that the best way to do something is actually figured out years after the patent filing, and this later-acquired info may have significant commercial value.

For that matter, it is entirely possible that the widget you want to market today in 2020 is not even covered by your old patent.  Have you gotten a  patent opinion on this? Often times inventors "chunk" their inventions into very broad buckets as if they belong all together, while a patent lawyer sees many gradations possible between the inventions.

Just spitballing here, but my main point is that you shouldn't accept the notion off the bat, without further investigation, that you have no protection.  That may actually be the case.  If so, sucks to be you and you're hoping someone will toss you a bit of a royalty bone to be nice and avoid your future nuisance suit. 

But you may also have confidential information that you have learned subsequent to your patent that is worthwhile for licensing.

[smgsmc]

Despite some of the pessimism expressed above, there are at some times values in the exact what/how of an expired patent.  Patents are supposed to teach the public how to do the invention but are seldom perfect in this endeavor.  Further, it is often the case that the best way to do something is actually figured out years after the patent filing, and this later-acquired info may have significant commercial value.

For that matter, it is entirely possible that the widget you want to market today in 2020 is not even covered by your old patent.  Have you gotten a  patent opinion on this? Often times inventors "chunk" their inventions into very broad buckets as if they belong all together, while a patent lawyer sees many gradations possible between the inventions.

Just spitballing here, but my main point is that you shouldn't accept the notion off the bat, without further investigation, that you have no protection.  That may actually be the case.  If so, sucks to be you and you're hoping someone will toss you a bit of a royalty bone to be nice and avoid your future nuisance suit. 

But you may also have confidential information that you have learned subsequent to your patent that is worthwhile for licensing.

<<Emphasis added.>> The above may be true.  That is, e.g., he may have a new, improved version that may be protected by a new patent; or additional knowledge that may make him a valuable employee or partner.  But, even if so, it is still irrelevant with respect to any economic value of the now expired patent per se, correct? 

[Rabid Levity]

The above may be true.  That is, e.g., he may have a new, improved version that may be protected by a new patent; or additional knowledge that may make him a valuable employee or partner.  But, even if so, it is still irrelevant with respect to any economic value of the now expired patent per se, correct?

Yes, I agree.  The existence of the expired patent on a per se basis is likely only valuable in the sense that it can act as a signalling mechanism.   Mostly I wanted to offer some potential circumstances why "Abandon Hope, All Ye Who Enter Here" as expressed by the esteemed NoMo may not necessarily be the final word on an expired patent situation - when looked at from a broader perspective. 

I have worked to license specialized materials that had been off patent for more than a decade.  Not quite the same situation as OP, as these had been commercialized materials, but still the company that wanted to resurrect them used the expired patents as a jumping-off point for technical discussions about the know-how and material/process specs they did want to license or purchase.

[Derek Scott]

To Lazy and NoMo, I think my only protection would be the NDA they would sign, but then they could move ahead with it in X number of years. 

Thanks for the optimism Rabid. 

Overall, I knew I was not in a good position, since the patent was expired, but I wanted someones input.  I think it would be a waste to use an "invention" company, since they would probably use the idea themselves, after taking my upfront money.  Doing it all myself is too expensive, at least for now, but it's probably my best option.  It's still not on the market after 12yrs.  I think it would still be viable in 2020, since those patents that are like mine were the ones I had to dodge in the first place and they are still around.

Thanks for everyone thought.

Derek

[useful_machine]

Derek,

You mentioned the 'invention companies' twice in your posts.  Sounds like you don't intend to move forward with one.  I have had dealings with a number of these invention submission/marketing companies in the past and would caution against dealing with them.  I doubt they would actively attempt to steal and commercialize your invention.  It is much more likely that you will spend a lot of money with nothing of value in return.

[Derek Scott]

Derek,

You mentioned the 'invention companies' twice in your posts.  Sounds like you don't intend to move forward with one.  I have had dealings with a number of these invention submission/marketing companies in the past and would caution against dealing with them.  I doubt they would actively attempt to steal and commercialize your invention.  It is much more likely that you will spend a lot of money with nothing of value in return.

Hi useful_machine,

You are correct.  I thought about using an invention company, but have decided against it.  Too much money for zero guarantees.  If I had plenty of money to spend, I'd probably try it anyway, but I don't. 

Derek