Patent infringement

[iassaf]

Hi,

I have an invention (frame and folding mechanism). Although my invention is patentable, it might fall under a general claim on existing patent.

I obtain the file history and prior art of the existing patent. I discovered that the folding mechanism is not novel to that patent. It existed in the prior art and the patent examiner stated that. The lawyer argued that their frame is unique and novel a thus the combination of the frame and folding mechanism should be patentable. The patent was issued based on this argument.

One of the prior art, of the existing patent, was a picture on a cover page of a brochure of a similar product. You won’t be able to tell the type of frame from that picture. I obtain the user’s manual for that product and discovered it has the same frame as the patented one. Since the folding mechanism existed in the prior art and the frame existed on a product in the public domain, the patent should not have been issued. I think the prior art (picture on cover page) was strategically provided in that format. Unfortunately, the patent examiner did not pick on it.

Although I can patent my invention so nobody can copy, I still can’t make the product or sell the patent because it might fall under their general claims.

Other than requesting a re-examination or fighting the patent in court (which will be expensive and time consuming), what are my options if I want to make the product or sell the patent to a competitor?

Thank You,

Imad

 

[divgradcurl]

Other than requesting a re-examination or fighting the patent in court (which will be expensive and time consuming), what are my options if I want to make the product or sell the patent to a competitor?

An issued patent is presumed to be valid -- so unless you are willing to challenge the validity via a reexamination, all you can do is either (a) try and purchase a license to the existing patent, or (b) make and sell your product and hope that you don't get sued.

You could, presumably, let the patent holder know that you know about this prior art, and maybe you could arrange for a free or low-cost license in return for not seeking reexamination on the basis of the art.

 

[iassaf]

Thanks a lot.

Your answer is similar to what I was thinking.

- How about if I intend to sell my invention to somebody else? Is there a certain format/clause that makes the license/agreement transferable?

- How long does it usually take to reexamine a patent?

Thanks again,

Imad

 

[divgradcurl]

- How about if I intend to sell my invention to somebody else? Is there a certain format/clause that makes the license/agreement transferable?

You can always sell the rights to an invention. Two important points to keep in mind, though -- first, only the inventor of an invention is entitled to file for a patent (even if he or she sells the patent to another later). So if you were to sell the "invention" to another prior to filing an application, the buyer would not be entitled to file for a patent.

Second, if no patent has been filed for, nobody has any rights to sell anyway -- anyone could see your invention and freely copy it, unless you have a patent.

But if you own a patent, patent's are freely transferable or licensable.

- How long does it usually take to reexamine a patent?

Years. Anywhere from 2 years to many more, 5 years or more.

 

[iassaf]

Thanks,

Maybe I wasn't clear enough. I have already filed for a PCT patent.

- Giving the infringement issue, from above, If I intend to sell the PCT patent, can I put a clause in the license agreement ( that I have to make with the company with the existing patent) to make license transferable to whomever buys my patent?

- Assuming the company with the existing patent does not give me a license, I file for reexamination and start making the product. Can they sue me for infringement although there is a reexamination in progress?

- If they can sue, can I delay case pending the outcome of the reexamination?

- Can I counter sue on the basis that they know they don't have a valid patent and they just trying to stop me from earning a living?

Thanks Again,

 

[divgradcurl]

Thanks,

Maybe I wasn't clear enough. I have already filed for a PCT patent.

- Giving the infringement issue, from above, If I intend to sell the PCT patent, can I put a clause in the license agreement ( that I have to make with the company with the existing patent) to make license transferable to whomever buys my patent?

Of course, if the existing patent holder is willing to do so. You can agree to most anything in a contract.

- Assuming the company with the existing patent does not give me a license, I file for reexamination and start making the product. Can they sue me for infringement although there is a reexamination in progress?

Yes. The patent as issued is considered valid until either (a) the patent is finally rejected after a reexamination proceeding, and then its as if the patent never existed, or (b) the patent is reissued, but with changes to the claims. If that happens, then its as if the patent didn't exist prior to the reissue, for the purposes of damages (but not for purposes of prior art). This is called "intervening rights" -- basically if there is any change to the scope of the claims in reexamination, the patent holder cannot seek damages prior to the date the reissue was granted.

But while a patent is in reexam, or if the patent emerges from a reexam proceeding unchanged, it can be enforced as if the reexam never happened.

Of course, anything the patent owners say during the reexam becomes essentially a part of the patent file history, so the reexam proceedings can limit the scope of the claims even if the patent reissues without amendment.

- If they can sue, can I delay case pending the outcome of the reexamination?

Maybe. It's discretionary. Many courts will stay a case pending outcome, some may, some will not -- the Eastern District of Texas is a famous patent venue that will not stay cases pending reexamination. The district courts are not required to stay the case, although the majority generally do. You file a motion to stay pending outcome of the reexam, and the court will either grant the motion or not.

- Can I counter sue on the basis that they know they don't have a valid patent and they just trying to stop me from earning a living?

Yes, in certain circumstances. This is called a "declaratory judgment" action, and in come cases, an alleged infringer doesn't have to wait to get sued, but can file a suit themselves asking the court to "end the controversy." There was to be a real threat of the patent holder filing an infringement lawsuit, however -- just because another patent is out there does not give the courts the requisite jurisdiction to hear the case. If you have been threatened with a lawsuit, that creates the necessary controversy. In some cases, just a licensing negotiation can create the controversy -- but not always. But there has to be a real controversy. Read up on declaratory judgment actions in patent cases for more information.