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  1. #1
    Tom_Bartco Guest

    Angry

    Hello:

    I have already submitted my idea plans and rough draft to a patent attorney for an improvement to an already existing product. The patent attorney claims that, although my product would be a major improvement to the current product already on the market, my improved product would create a patent infringement.

    The bases is the current products patent is so broadly written, any other product that even closely resembling the current product would be an infrigement on anothers patent.

    That being the case, then my question back the him and for this forum is, how would any newer version or improvement to an already existing product ever get to market?

    Using a simple example, we would all still be using double edged razors, if major improvements could not be made until a present patent expires. Therefore, my assumption is, only razor blade manufacturing companies can make improvements???

    Question #1 remains unanswered. How can a private person make another competing product that is clearly a vast improvement to a current product???

    Question #2 how would any newer version or improvement to an already existing product ever get to market???

    Awaiting the logical answers and legal replies.

    Regards,
    Tom

  2. #2
    ALawyer is offline Senior Member
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    Your question is an outstanding one, and as you have already retained and spoken with a patent attorney, and I am NOT a patent attorney, I can only share some thoughts.

    There are some people who like to file for and get a patent primarily to put up on the wall (like a diploma) so that they can proudly say that they have been issued a patent, or who can use the fact that they were granted a patent to butress their resume, use it to land a job, substantiate that they are indeed an inventor, regardless of the real commercial potential of their patent.

    I do not know how many of the 6+ million or so patents that have been already issued were sought expressly for what is essentially "ego".

    I do know that most of the inventors who had thought that their invention would make them rich, never saw a dime of revenue. They retained counsel, filed a patent application, paid the expenses involved and only then found that their invention had no commercial application, or that at least THEY could never successfully exploit the invention. (Are there some figures that say fewer than 10 percent of the patents issued had ever been successfully commercially exploited?) For those folks, their patent, in essence, is another diploma to hang on the wall.

    If your improvement is indeed novel and useful and thus patentable, I would think (as a non-patent lawyer) that you might well be able to get a patent issued. However, to the extent that your improvement required or relies on the technology covered by the original patent to be operational, for the life of that original patent you would not be able to independently manufacture the "improved widget".

    That does not mean you might not license the improvement to the holder of the original patent, which might create some revenue for you. Or you might wait until the old patent expires and then use it and the new patent you get to reissue the product.

    As for the allegedly over-broad scope of the existing patent, that may be the killer. Mounting a patent challange to knock it down can be an expensive process.

    To the extent that your improvement is covered by the overbroad patent, that suggests your invention would not be regarded by the Patent Office as novel and thus not be patentable, and I think would block your getting a new one. You lawyer may have been doing you a service. On the other hand he may be toally wrong and if you feel strongly about it, you should seek a second patent lawyer's opinion!

    [Edited by ALawyer on 01-23-2001 at 02:00 PM]
    This is intended as general information only, NOT legal advice. You are not my client and I have no obligation of any kind to you. To retain a lawyer I suggest you go to www.AttorneyPages.com.
  3. #3
    Tom_Bartco Guest
    Hi:ALawyer

    I thank you kindly for taking the time to fully explain the situation. Your thoughts, as posted here, are very well expressed and totally clear to me.

    I guess I had heard some of the infringement explainations and legal possibilities for a suite against me, as you expressed, from my attorney. Could be at that time, which was a year ago, I just didn't understand it well enough or simply didn't want to except it.

    My patent attorney is aware that the current product to which I have the improvements on, has not yet been marketed. Therefore, your explainations makes perfect sense.

    Either the current patent is an ego trip or just there to divert future patents, as you stated. That being the case, by the time that current patient expires so I could patent my product, I will be much too old to care or I could very well be expired myself...<haha>

    Thank You,
    Tom
  4. #4
    John Q. Smith Guest
    I am not a patent lawyer but I know a little about it and I hope I can
    help.
    1. Consider getting a second opinion from another patent lawyer.

    2. If someone has indeed written a broad patent you may not be able to get around it, however, you may be able to patent your improvement. It would be restricted in that the improvement might not be able to be used without a
    license on the basic patent. You would need a license from the existing patent owner in order to sell your improvement.

    3. As suggested in the prior answer the patent on the books may be invalid and you may be able to challenge it successfully, but as a practical matter that can be very expensive. Some patent applicants deliberately try to
    build a patent position which, though weak, they can use to dominate their industry because of the expense of challenging patents. The fairly recent "State Street" patent decision which okayed "business method" patents has
    opened the door to a great many patents being filed and approved which are nonsense and restrict wide areas of industrial competition. This problem is
    constantly being discussed in legal journals.

    4. Many patents are written narrowly so that it is easy to "invent around them." Not all patents are written broadly so as to cut off future developments.

    5. Read the patent that is the problem yourself. Make a list of all the ways your invention is different or can be made different. Read the patent carefully including the claims. Each element of the patent claim must be
    met for an infringement to be present. Think of what may be absent from your invention or extra that makes it different. Sit down with the patent lawyer and say how can we make my invention different and avoid the patent?
    What are the limits of the patent so that I can figure a way around it?

    6. If you don't like the answers, see another lawyer.

    7. Getting a new product out into the market is very difficult even if it is clearly superior because of the patent problem, because of the need to raise money, to produce it, and market it. Despite how great an improvement
    you feel the product is it is not going to be so obvious to others and it will be difficult to sell. Try an experiment. Make a drawing of the product. Show it to 20-50 strangers. Explain it to them and try to get
    orders at a specific price. They don't pay til they get the product and they can get their money back. Kind of a dry run test market. You'll get a feel of how hard it is to sell something new. You can always "cancel" the
    orders.



  5. #5
    Tom_Bartco Guest
    Hi:John Q. Smith

    I also want to thank you John for your reply. Interesting method of proving there is a market for the product with it's improvements you provided. Excellent food for thought.

    I already have in my possession a news paper article and the name of a major fast food franchise and other businesses, that claim the current product no longer works as intended. They have expressed a desire and intent to buy a product that would solve their problem. I believe I have that product idea.

    To clearify. The first version of this product has been on the market for years. It has become ineffective with time, familiarity and age. Therefore, it no longer serves it's orginal intended purpose.

    The second version, which my improved product would be an infringement upon, is the one that has not yet been marketed, to our knowledge. The patent rights are held by a private individual to our best knowledge. The second version is not held by the first patent holder either, to my knowledge.

    Therefore I suspect the first company that is already still making the product is aware there is another slightly improved product patent held. Which means, the second patent holding cannot manufacture his product either.
    <I hope this all makes some sense???...>

    My orginal intent was not to manufacture, sell nor distribute the product. <I have 3 versions of this same product but the purpose is the same> My intent was to hold the patent rights and draw a royalty.

    I would be open to allowing one of the intended users to do the ground work to find a manufacturing company, distributor, etc. Or head me in the correct direction to accomplish the needed steps to market them the product.

    Once again let me take a monment to say thanks you for your insightful suggestions and taking the time to reply and further explain other options.

    TomBartco
    Accurate Power Equipment
  6. #6
    Stephen S Guest
    Hi Tom,
    I thought I could share some ideas. The first idea is to sell the rights of your idea through the protection of a nondisclosure agreement to a source with great potential to bring your upgrade to market. Obviously in this case it would have to be through the owner of the rights to the patent involved. A properly worded non-disclosure form not only can help you sell rights but it can also lock others you share an idea with from upgrading themselves unless they can prove they had presently like ideas. "Sometimes the best way to keep someone from copying or stealing your idea is to tell them about it" Secondly, I refer to Ray Asbury who is the President of Equalizer Industries whom started out working as a manager for an Autoglass replacement shop. He purchased the rights to a 10 year old patent that was being sat on. The original patent holder had a great idea but couldn't get over the hump to bring it to market. Ray's goal was to bring a like product to market with an upgrade. Ray was then able to apply for a new patent that included a reference to the original patent. He could have stopped their, though he took the ball and ran with it, as he turned the product name into the world's largest Autoglass tool manufacturer and Distributor. If your interested in looking to see how the patent refers to another patent, goto [url]http://www.Equalizer.com[/url] and thier will be a link to a short version of all of his patents.
    Good Luck
    Steve

    PS I respectfully disagree with approaching 50 strangers with your idea to ascertain it's marketability. Unless these people truly understand the practical usefulness of your product idea as it relates to it's intended purpose, they could dismiss it based on thier own ignorance or encourage it by the same token.

    [Edited by Stephen S on 01-26-2001 at 12:04 AM]
  7. #7
    Tom_Bartco Guest

    Insightful Aspect

    Hi:Stephen S.

    I thank you for posting your insightful aspects on this subject. I agree with the method you stated in the first sentence of your post, which is exactly the means I intended to pursue.

    Finding that single source for dealing with all the aspects of bring the product to market is one challenge. Obtaining the current patent holders to agree to selling the rights, at a fair price poses yet another challenge.

    However, many of these steps can be accomplished by finding the correct patent attorney and the contacts that person or company deals with. Another major obstacle.

    As you stated in the PS, it is difficult to find people whom fully understand the true purpose of any new or improved product. This holds very true with patent attorneys. Especially those who have helped others patent totally new products. In that case, it is much easier to see the real benefit to a product.

    One major reason why I intended to pursue a full service company to deal with all the details for bring the product to market. Exactly like the company your link expresses.

    Another method is to present the product idea, after patenting it, to those whom have the problem currently. It is these companies that understand the products need and useage. In this case, those companies <and thousands of others who also would have a need> having already expressed their desire and willingness to purchase a product to solve the problem, was once my intended direction.

    This method presents huge obstacles all of it's own. Many of which I hadn't ever thought of. This all brings me to the point of believing there has to be some less complicted and expensive means to accomplish the end results or there has to be some major flaws in the existing patent laws.

    I will give all this information and advice more thought.
    Once again, thanks for presenting your thoughts Stephen and to all those who have kindly taken their time to offer help and advice in this matter.

    Sincerely,
    Tom

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