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    Default i commitied possible patent infringment???

    So ive receved a call today from a competitor stating ill get getting a call from the lawyers for infringing on a patent pending product of theirs, apperently I have made an absolute copy of his product in his words...
    they are similar and ultimatly preform th same function, but there are many fish in the sea producing vartiations of the same type of product.

    Firstly i will say that my product was designed wholy by myself without riping anyone off, to get that out of the way.

    Regardless, have any of you found yourself in this position and what advice do you have?
    I have yet to receive anything from a lawyer yet, he just called to give me a "heads up" and generally be rude.

    firstly, I see no notes of his patent pending anywhere on the limited literature I can find on the product via the web site they have.
    Second, Patent Pending? does that not mean its not patented therefor offering very limited protection? I belive they have been producting this product for around 10 years now from what i can see. i have been producing mine for 3 years. is there a time limit on "pending"

    i dunno, any words from the wize are appriciated here, im a one man band and have little reasources at this time. i know none of it will be regarded as legal advice.
    honesty i really disslike poelpe hat like to try and bully people around. seems like a simple bully phone call to me with no backing, defimation of charicter to my customers as well.. but a few conversations an mend any wounds there should hat be as far as it goes.

    thanks in advance.

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    Depending on your laws, record any conversations you have with their lawyer, and ideally with a witness in the room listening in too. Be sure to inform them that they're being recorded at the beginning (again, CA laws permitting). If nothing else, it helps you keep a record of the topics and comments.

    Don't bluster, don't let the lawyer rile you up. Keep calm and even tempered.

    Do some searching on applicable patent law and rules regarding "Pending" patents. At least in the USA, there are time constraints, and if they've been exceeded without a patent being issued it may not be protected (or able to be in the future) if the technology has already been disclosed by sale of the product or tech.

    But you ultimately need a lawyer to properly advise you, and choosing the right person is vital. One option is if you have any law schools in your area, find out if they offer any services to business, or can recommend a graduate who deals in patent law.

    Good luck, let us know how it goes.

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    Stirling, get a lawyer, but my feeling is that this is just bullying (all too common w.r.t patents).

    If they don't actually have a patent issued, there is nothing for you to infringe. If you are contacted again before you get a lawyer, ask for the specific patent numbers they allege you are infringing. No specific patent numbers, no infringement. If you are contacted after you get a lawyer, direct them to talk to your lawyer.

    If they do provide specific patent numbers, go over the patent filings (public documents) with your lawyer. Patents are written in a very peculiar way (need the lawyer to interpret the legalese while you interpret the design/mechanical parts), don't always mean what you think they might mean, and almost always make many, many claims, only some of which are going to be relevant.

    Be aware that lack of knowledge of their product or patent does not give you immunity from patent infringement.

    There are probably three ways this could go:
    1) They have nothing and this is just an attempt to shut you down or extort money. Your lawyer's job is to show them the door.
    2) They have patents but your product doesn't infringe on them. Your lawyer's job is to point out they will win nothing in court, spending a lot of money in the process.
    3) They have patents and your product infringes on a small number of patent claims. Your lawyer's job is to point out they will not win awards in court that come close to covering their legal costs, and negotiate a reasonable licensing deal, showing them at every point along the way how weak their case is.

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    It’s up to the patent holder to start a trial and to prove an infringement. Patents run for 20 years in Canada, so half of that has already elapsed. Towards the end of terms patentees tend to not defend themselves, only very big business sends bulldogs to bite one’s ass. If they confront you with a patent, you will know exactly how to avoid their territory, simply study the patent. Then you can change your product at will, you’ll be fine. They cannot change.

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    Pretty sure they can't patent what they have already disclosed -- as in producing the product for a decade. Pretty rare I'd think for a patent to be pending for a decade?

    Different bit of IP law, but a company lawyer wrote me years ago saying my company was infringing upon their new corporate name. Turns out I'd used (and state registered) mine a couple decades earlier.

    Shame we have to spend so much on lawyers these days. The rule of law is a wonderful thing - some great lawyers needed - but I suspect that in a less litigious society we'd only need maybe 20% of the lawyers we have to keep that running. Japan manages with far fewer per capita than the US - and doesn't seem to have more crooks as a result. The rest of ours are apparently out drumming up work or campaign donations. It's one of the few professions where someone can walk up to someone out of the blue and say "I think you've done something and you need to pay me money."

    Wouldn't it be great if engineering better products were like that? We could walk up to random producers of crappy products and tell them "your product is crap -- designed and built wrong -- you need to pay me a couple million to make it better."

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    I got involved in a patent infringement lawsuit once....costly for lawyers ,had to settle..all I did was to make a part for a machine ,the whole machine was a patent infringement ,and in a very small field ,so it couldnt fly under the radar....It was a tube bending machine,only available as part of a franchised exhaust shop agreement.

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    What jurisdiction was the caller from? patent office?

    All you've got is a bit of bluster from a competitor. you have no idea he's a smart rational player complete #$%#$ idiot. It does seem really odd though for someone about to engage a litigator to prejudice things by calling you for a heads up? Who would do that? Some shit bird full of angst who doesn't have many other choices?

    I wouldn't spend money retaining a lawyer (and if you do, it MUST some specializing in patent litigation, no one else is going to have a clue) until you get a cease and desist type letter. It should identify the Patent (pending) and if not write the lawyer back and ask for it. Then decide where you stand.

    As you probably know, patent remedies are civil - law suits. That sucks in the sense they are very frequently used as a bullying tactic. I doubt that's the case here as big companies do not behave the way your antagonist did. Up against a big firm, and after writing $10,000 or more retainers cheques over and over, who's right and who's wrong seems to not much matter. Increasing in my view this is one the things in our society that needs fixing; the power big firms exert through bullying litigation tactics. Abuse of the system. There are lots that have floors of litigators to sue whoever starts to cut their grass; merit doesn't come into. Bully to keep competition out does becauses few can afford to do the dance with them.

    Fortunately in Canada its a little less rapid. Nobody ever gets 100% of costs so starting a suit isn't usually done frivolously. We also pretty much don't have punitive damages....so if they lost $2000 profit from you doing what you doing, that's what they're going get....not $5,000,000 in mental anguish (taking commercial litigation, who knows what goes in personal injury)

    Pat pending is not afforded patent protection, further suggesting its BS (although there is some backdated provisions for damages). It can take years. But ten? Something seems off there.

    Take all you read here as chit chat not legal advise

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    I wouldn't waste a cent until I see what they try. Probably just scare tactics. Hell, maybe its their desperate move before they go broke and go under? how's business? If anything now I'd be trying even harder to make a better product than they do at a better price and drive them out of business, F them.

    I'd love to see the entire patent bs system scrapped entirely. Its one of the most anti-free market and anti-innovation waste of money systems in existence.
    But of course if it was copied by and made in China and dumped on the world market then nobody would say a damn thing.

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    I wouldn't waste a cent until I see what they try.
    That's what I would do. No point in blowing a pile of money now to get a lawyer.

    Even if they do start legal proceedings and/or send a cease and desist letter,
    I still wouldn't get a lawyer, I'd ignore it. Then THEY have to spend more money
    on lawyers trying to get your attention, and I'd still ignore it. And hopefully,
    I could ignore it until they go broke or give up.

    I may be wrong on this, but in the US, if you fail to defend a patent, it becomes
    pretty much void, correct? You can't go after company A for infringing on your
    patent if you ignore that company B is infringing on your patent also.

    If that's the case in Canada, and you said there are "many fish in the sea"...
    You might be free and clear anyways.


    This is just a thought. If you wanted to infringe on a patent, could you get
    10 different little companies to make the widget and force the patent holder
    to pay out the nose to come after 10 companies instead of just 1, and bankrupt
    them on legal fees? Or have one company selling only small qty's to a limited
    audience and flying under the radar, and then pull out that company when you go
    to court?

    Just thinking out loud. The patent system is so stupid. I was messing
    around on E-bay a while back and some dude was selling just a standard step
    clamp to hold down a vise, but the edges were rounded, and it was patented...
    What the heck is the point of that?

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    If you paid good money to hire an attorney to represent you in a Patent Infringement case...would you call the offending party?



    The few times I needed an attorney, one important thing was drilled into my head...all correspondence goes through them unless told otherwise. Again I'd think their attorney would have offered the same advice...why pay for legal advice and not use it. Unless of course they do not have attorney.


    Now if you get a formal letter from an attorney representing them, that is a slightly different story. However, a formal letter from an attorney is often "lets see if this works" before we really get started step.



    My very limited understanding of patent pending means they filed for a patent and have a year to attain one. A 10 year old patent pending I'd think is not worth the paper its written on.


    Like others, my advice is worth every penny your paying.

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    My understanding is any feature on their product can't be patented if it was sold by anyone before they filed their patent claim.

    In many cases the best defense against an infringement claim is to attack the underlying patent itself. Either that claimed feature has already been patented, or the claimed feature has already been available for sale on the market before they filed their patent claim. The search by the patent official is typically neither broad or deep.

    You also need to document a timeline for your product. If you sold product that has features covered in their patent filing prior to their filing date, those features are unpatentable. When did you introduce those features to the marketplace, who bought them, and what promotional literature do you have to document those sales.

    My guess is the fellow just filed his patent claim and is all ate up with how much money he is going to make from his patented product.

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    Been there.

    Got a letter from a company, then a letter from the lawyer. Drank a bunch of coffee and then read their patent, and in what I can only call caffeine induced clarity, I could actually read a patent. Since the law says a patent claim must be a single sentence, it results in paragraph long sentences, unreadable to most. I found that what they thought they were patenting is not what they patented, because they needed to not try to patent the object they were modifying.

    I called his lawyer and explained my point, he agreed and that was the end of it

    Patents can indeed be pending for a very long time, that is a strategy to lengthen the effective length of a patent.

    It is a rare and almost unique patent that really prevents you from making a particular thing, but a patent is a license to sue. So, even if they are wrong, if you are taken to court, you will spend money, and it is frequently cheaper to settle or pay a fee than fight over principle.

    YOU need to see their patent which should be public record,to see if they even have a point.

    Many people think you can patent an idea, you cannot. You patent a method, in detail. And it must be non obvious. In my case it was obvious that to connect two things you need to make a thing that fits this and a thing that fits the other, and my competitor patented a way of doing that, which is different from how I did it, and not related to the specific details in his patent.

    The thing also cannot exist previously, prior art as they say.

    You cannot patent a spoon.

    The first guy to make a spoon could have patented it, but all the clever wannabe spoon makers would study his patent and find a detail left out, or a detail over described that give them an in and boom, off ya go.

    So get a hold of this supposed patent pending and see what it says

    Drink a buncha coffee

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    The patent process is slow, but essentially never 10 years slow. My guess is that they applied for a patent, had it rejected, and are hoping you aren't savvy enough to figure that out. Do a quick search to see if you can find the patent application. It will have been made public 18 months after filing.

    If you find the number, go here: https://portal.uspto.gov/pair/PublicPair

    That portal will tell you what happened with the patent. It's actually pretty cool, you can read all the examiner's notes, lawyer correspondence, final decisions, etc.

    I would ignore them for now and if they come back again, ask them for the patent number. If they say it's still pending, ask them for the application number. $ on them being full of shit.

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    Quote Originally Posted by Milland View Post
    Depending on your laws, record any conversations you have with their lawyer, and ideally with a witness in the room listening in too. Be sure to inform them that they're being recorded at the beginning (again, CA laws permitting). If nothing else, it helps you keep a record of the topics and comments.

    Don't bluster, don't let the lawyer rile you up. Keep calm and even tempered.

    Do some searching on applicable patent law and rules regarding "Pending" patents. At least in the USA, there are time constraints, and if they've been exceeded without a patent being issued it may not be protected (or able to be in the future) if the technology has already been disclosed by sale of the product or tech.

    But you ultimately need a lawyer to properly advise you, and choosing the right person is vital. One option is if you have any law schools in your area, find out if they offer any services to business, or can recommend a graduate who deals in patent law.

    Good luck, let us know how it goes.
    Another thing that will work in any state, including those that require recording consent from both parties is to take careful notes during the conversation and then send that individual a certified letter that begins with something like "During our recent phone conversation on xx/xx/xx my understanding of our conversation was ...." and ends with "If you have a different recollection or feel that I have misinterpreted your comments please respond in writing within 30 days with your interpretation of our conversation."

    I am far from an expert on intellectual property but when I worked on development projects for various companies we were told the importance of dating all our work papers, drawings etc. in case another firm developed something similar and there was a conflict regarding patent rights.

    If this is a bluff they may back off but if it goes deeper you will require an intellectual property attorney.

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    Some people are scared to death of lawyers, I don't see any reason to waste a penny on one in this instance. I think the guy is blowing smoke up your ass. Patents take a year or so, not 10 in this country, not sure about the great white north. They legally can't do anything to you until a patent is granted. I would ignore the guy's threats and just deal with things as they come along. In a land far away and another place in time I knew a guy who made a very good living knocking off Rainbird products. He went through their patents with a fine tooth comb and altered the copies just enough to be outside the realm of patent infringement. If a patent doesn't cover every minute detail it is pretty useless to use to get awarded damages for infringement.

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    You can google patent search to seif find if the patent exists. That may take 3 full days. A lawyer will hire a patent search at your expense so likely an easy grand with just doing that.

    I would not rush to securing a lawyer based on a phone call.

    If you truly infringed then it is past history and he has to act on it. Nothing is going to change with rushing into throwing money out the window.

    Google Patents

    Basic Search - Canadian Patents Database

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    Quote Originally Posted by gustafson View Post
    but a patent is a license to sue.
    Good post, but the above is incorrect. A patent is an obligation, nay, a requirement, to sue.

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    Most probably an attorney would tell you not to discuss it with anyone much less on an open forum on the internet.

    Never know when your being led by responses to help you reply with a desirable response.

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    Good advice in this thread.

    "They" whoever they are don't have a granted patent - so legally they can't do anything.

    Just to be clear this is a UTILITY patent not a DESIGN patent. (is that right ?).

    Even if a patent is granted you have the right to "Perform" the invention.

    "They" can only come after you for license fees (after a successfully prosecuted lawsuit*) if they had a granted patent in YOUR territory / whatever territory you are selling into that "They" have granted patents for. Usually if the invention is theirs + granted patent, license fees are levied in a positive minor percentage (cooperative kind of way) rather than a crippling destructive kind of way. [Sometimes cross licensing is possible + useful support from the host company.].

    ALL communications should be carried out in writing AND they need to provide the patent number(s) for the provisional filling / patent they are trying to get granted. Sounds like they have gone 50 rounds with the Patent examiners and still have not arrived at a claim language that would go to grant. Ten years is too long.

    It's entirely possible you would have the ability to "Bust" their "Non" - granted patent (anyway) - they run the risk of that.

    As people have said, "Their" un-granted patent is now in the public domain with zero actual protection for their claimed unique or novel features.

    "These guys" sound like idiots in the sense they don't seem to understand patent law. - Who ever these people are - .


    The point about "Submarine patents" probably doesn't apply in this case. One's under the radar that are constantly added to or modified.

    Don't give them anything/any improvements that you implemented they can work into their designs and products they didn't think of...

    I would not speak to them over the phone regarding technical or legal matters; everything in writing.


    __________________________________________________ ___________________________________


    * "They" run the risk of having their IP be formally blown to smithereens/ "Busted" in court if they are unable to successfully prove/prosecute their case.

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    Quote Originally Posted by michiganbuck View Post
    You can google patent search to seif find if the patent exists. That may take 3 full days. A lawyer will hire a patent search at your expense so likely an easy grand with just doing that.

    I would not rush to securing a lawyer based on a phone call.

    If you truly infringed then it is past history and he has to act on it. Nothing is going to change with rushing into throwing money out the window.

    Google Patents

    Basic Search - Canadian Patents Database
    I agree patent lawyers are about $400 / hr.

    If they don't have a granted patent then you haven't infringed. [In the case of Utility Patents.].

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