Patent infringement on a very simple invention?

[GrinderD]

Our competition has patented a very simple device. Its prior art was a coffee spoon with a hook on the end, to hang it over the edge of a cup.
The invention modified the spoon a bit (shape is bent, bottom part is made rectangular, measuring scale is added on bottom). The device is used to scoop out a specific supplement and hang it over a cup, to make the supplement dissolve.

Their patent includes an independent claim (regarding the device itself), and several dependent claims (one of which lists a method for scooping the supplement).

Can we make and use a very similar device, for the same result (without patenting it)?
Can we claim that: their invention is obvious & non-novel?
A spoon with a hook has been invented before. A ruler has been invented before. A bent spoon has been invented too. However all these weren't combined before, and they weren't used for this specific supplement before.

 

[FlyingRon]

You can't get a patent on something someone else has a patent (valid or not) on. As for whether their patent is valid, all you can do is see if they sue you for infringement and make your case.

You'd have to give a patent number, but it doesn't sound non-obvious. A brief amount of googling found a measuring spoon that hooks on the edge of a bowl.

 

[GrinderD]

We don't need a patent on our device - we only need to be able to produce it. It will be very similar to theirs. It isn't actually a complicated device/patent at all.

This is what their "invention" looks like: https://ibb.co/eJ0o57
The patent number is: 9903747 (Device and method for dispersing paste-like or sticky nutritional substance in a fluid)

I just can't wrap my head around the fact we can't produce such a "device" because someone has patented it.

 

[PayrollHRGuy]

I just can't wrap my head around the fact we can't produce such a "device" because someone has patented it.

Do you not understand why patent exist in general or just in this case?

Contact the patent holder. They may well be willing to licence it.

 

[FlyingRon]

I just can't wrap my head around the fact we can't produce such a "device" because someone has patented it.

Wrap your head around the fact that THIS IS WHAT PATENTS ARE FOR. In exchange for disclosing the invention to the public, the patent holder gets 20 years of exclusive use.

The question is whether the patent is valid. The first issue is the number you gave above appears to be for something completely different.
Are we, in fact, talking about this patent:

https://patents.google.com/patent/US20170167908
or
https://patents.google.com/patent/US20170136423A1/en


Well, the patent hasn't been issued yet, though if it does eventually get issued, you could be found to be infringing.
Did you sell or distribute a similar product before their November 2015 date?


There are some real issues with that application. The biggest of which is it appears to be filed late. You can file a protest.

 

[GrinderD]

Do you not understand why patent exist in general or just in this case?

Contact the patent holder. They may well be willing to licence it.

I do understand why patents in general exist. I don't, however, understand, how a small rectangular metal plate with a hook on one side can be patented. It just seems too obvious and non-novel to me.

 

[PayrollHRGuy]

That's good.

Now read and answer FlyingRon's post.

 

[quincy]

Our competition has patented a very simple device. Its prior art was a coffee spoon with a hook on the end, to hang it over the edge of a cup.
The invention modified the spoon a bit (shape is bent, bottom part is made rectangular, measuring scale is added on bottom). The device is used to scoop out a specific supplement and hang it over a cup, to make the supplement dissolve.

Their patent includes an independent claim (regarding the device itself), and several dependent claims (one of which lists a method for scooping the supplement).

Can we make and use a very similar device, for the same result (without patenting it)?
Can we claim that: their invention is obvious & non-novel?
A spoon with a hook has been invented before. A ruler has been invented before. A bent spoon has been invented too. However all these weren't combined before, and they weren't used for this specific supplement before.

If the patent is pending (as it is in FlyingRon's examples), nothing prevents someone else from making and selling a similar invention - other than the knowledge that, once a patent application has been published, the original inventor can obtain royalties from infringers from the date the application was published IF the patent eventually issues.

Until the patent issues, the inventor has no patent rights to enforce.

For any patent infringement action filed by a patent holder, the one said to have infringed can challenge the validity of the patent. Grounds for a challenge include lack of novelty when it was issued, defects in the patent application and/or failure by the patent holder to disclose prior art.

It can be a costly risk to manufacture a product knowing it is the same or similar to one with a patent or patent pending. I join with the others in recommending you consult with a patent attorney in your area.