Fraudulant claim of patent ownership

[shylock]

What is the name of your state? NJ

Hi all, this is my question:

Which, if any, federal laws are violated by someone whom threatens to sue another for damages, and demands they take down or edit a website, based on a claim to own a patent (not patent pending, etc.. but an actual patent) when in fact, they do not have a patent?
All this person has is the number for a provisional patent application, a 60 / xxxxxx number. I know this to be essentially, of it's own merit, worthless.
Is there a way to report him (if it comes to that) ?
Does it constitute harassment? or Fraud? or both?

His lawyer is currently trying to pose as a normal user to gain entry into my forums, as well, so I know they haven't given up yet.

The history of said device is probably significant here, so I should expound on this further.
The device in question, has been, in fact, in public usage for at least 20 years, in a basic form or another. It was generally accepted by a large number of my peers (and Internet retailers) to be un-patentable for this reason..
If need be, I can elaborate further, and provide links and examples of Prior Art.

His problem with me is, my website demonstrates how to make this kind of device yourself, based on my design, not his , and was on the Internet before this person's device even hit the market. None of the other makers of this device have any problem with me, and I've spoken to several of them. They all know it's public IP (for lack of a better term)

Add'ly, the product this person sells has been on the market now for 1 year and 11 months, this coming May will be 2 years exactly. It seems to me, that even if they'd made certain improvements for which they wanted a patent, they've already shot themselves in the foot by waiting too long and exceeding the statute of limitations on this kind of thing.

Thanks

(BTW, this guy is in Calif )

 

[divgradcurl]

Which, if any, federal laws are violated by someone whom threatens to sue another for damages, and demands they take down or edit a website, based on a claim to own a patent (not patent pending, etc.. but an actual patent) when in fact, they do not have a patent?

Probably none. There is a "false marking" statute that you could sue him under, potentially, but since the damages are limited to $500 -- and you have to split that award with the government -- it hardly seems worth the effort.

A patent application, and certainly a provisional application, is entirely unenforceable. Your best bet is probably to ignore him. If he starts interfering with your business, you can sue him in California for tortious intereference and unfair business practices under Business and Professions code 17200 -- and some of the 17200 subsections allow for the possibilities of legal fees and costs if you prevail.

If he does try and sue you, this should be easy to get dismissed on motion, because with no patent, he has no claim -- plus you would be in a good position to countersue for sanctions and fees under Fed. R. Civ. Proc. 11.

If you have relevant prior art, you may want to consider filing a protest. Any member of the public may file a protest against a pending application. See http://www.uspto.gov/web/offices/pac/mpep/documents/1900_1901.htm#sect1901 for more information, and info on how to do it.

 

[divgradcurl]

One other thing -- just because he has a provisional patent number doesn't mean that the statutory bar has run, or the he doesn't also have an application in the works. Pending applications are usually published only after 18 months have passed since filing, but if he is only filing in the U.S., he can keep the application secret until (and if) the patent is actually granted. So you may want to be careful not to totally dismiss this guy as a crackpot -- a lot of what happens in the USPTO is secret, at least until a patent issues, and there are a lot of this that could be going on -- claiming priority back to an abandoned application, for example -- that may make the effective filing date a lot earlier than you may think.

Or the guy may be a crackpot with an expired provisional, who knows. But you may want to do some due dilligence to try and find out.

 

[shylock]

Thanks, I think the protest from may come in handy.

I'm not a business, and I'm not worried about him disrupting any income of mine, because it's just a hobbyist site I run; it's just that I put a lot of work into my website and the information within is all public knowledge, I shouldn't have to take anything down or remove any bits. It's a matter of principle, mostly.

A few more questions or comments:
A patent applicant can claim "patent pending" merely after filing a provisional. That strikes me as highly unfair, because that may scare off valid competition who have a right to make or sell similar items; and being that a provisional isn't examined, that seems to create an unfair advantage to the applicant. If the patent is denied, the others may have already lost too much money and time to start back up again.
Therefore, I see great potential for abuse of the provisional app.
I think that PP or Patent Applied for should only be allowed after filing a non-provisional, but then, I'm new to this.

This next question sort of leaves the area of patent law, but, to try and order, say, a Cease and Desist order requires some form of grounds, doesn't it, and must be gotten through a court. I can't imagine anyone could get a C&D based on only a PPA - as you said, it's unenforceable. However, I'm sure he could dream up some other ridiculous charges. I would definitely want to recoup any legal fees I incurred as a result - I'm just a private person.

Regarding the whole issue of Prior Art, it is out there in spades, but - in the event his own people are scouring the net looking for references to his product or similar products or my site, I wouldn't want them to stumble upon this post, therefore, I've avoided any specifics so far.
I hate to ask, but would it be okay if I PM'd you with the devices and URLs in question, as well as some links to examples of Prior Art, for your opinion? I won't do that without your prior permission though, as that'd be a bit rude of me I think. One of the operators of one of the sites I cite as Prior Art wrote me in response to my inquiry, and said, "I believe he mentions our name as being the originator (in his product documentation), so I wouldn't worry about his threat as we can substantiate our position on this product". That was comforting to hear. At least two of them "have my back" so to speak.

Lastly, I'm not sure I follow you on the statutory part. His device has been on the market now for 23 months. I figured if he doesn't have a patent by now, he can't get one(?) -but then I figured he can't get one anyway because of Prior Art

Thanks!

 

[divgradcurl]

A patent applicant can claim "patent pending" merely after filing a provisional. That strikes me as highly unfair, because that may scare off valid competition who have a right to make or sell similar items; and being that a provisional isn't examined, that seems to create an unfair advantage to the applicant. If the patent is denied, the others may have already lost too much money and time to start back up again.
Therefore, I see great potential for abuse of the provisional app.
I think that PP or Patent Applied for should only be allowed after filing a non-provisional, but then, I'm new to this.

Well, the law says you can use the term "patent pending" after you've filed for a patent, so if you want to change this, you need to change the law.

"35 U.S.C. 292 False marking.

(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words "patent," "patentee," or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word "patent" or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public - Shall be fined not more than $500 for every such offense.

(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States."

This next question sort of leaves the area of patent law, but, to try and order, say, a Cease and Desist order requires some form of grounds, doesn't it, and must be gotten through a court. I can't imagine anyone could get a C&D based on only a PPA - as you said, it's unenforceable. However, I'm sure he could dream up some other ridiculous charges. I would definitely want to recoup any legal fees I incurred as a result - I'm just a private person.

A cease and desist letter is just a letter asking you to do something. It has no force of law, anyone can write one, and there is no penalty for ignoring it. There may be some legal issues associated with a C&D letter -- for example, it may serve to put an accused infringer "on notice" sufficient to start the damages clock running, and it may open the sender up to declaratory judgment jurisdiction -- but in general, all a C&D letter is a request to do something or stop doing something.

If you think the C&D letter is baseless, you can ignore it. Or you can use it to open up a dialog between you and the other party. But the C&D letter has no legal authority behind it.

Regarding the whole issue of Prior Art, it is out there in spades, but - in the event his own people are scouring the net looking for references to his product or similar products or my site, I wouldn't want them to stumble upon this post, therefore, I've avoided any specifics so far.
I hate to ask, but would it be okay if I PM'd you with the devices and URLs in question, as well as some links to examples of Prior Art, for your opinion? I won't do that without your prior permission though, as that'd be a bit rude of me I think. One of the operators of one of the sites I cite as Prior Art wrote me in response to my inquiry, and said, "I believe he mentions our name as being the originator (in his product documentation), so I wouldn't worry about his threat as we can substantiate our position on this product". That was comforting to hear. At least two of them "have my back" so to speak.

No, and here's why. I am not your lawyer, and what you are asking for is a legal opinion. I can't give you a legal opinion without becoming your lawyer -- and I can't do that without ensuring that there are no conflicts of interest with you or the other party. In other words, you would have to engage my services (or my firm's services) in order to do this.

Your best bet is to sit down with a local attorney who can review all of the facts and advise you accordingly.

Also, the fact the they are scouring the world looking fro prior art is generally a good thing for you, because any relevant, material art that they find MUST be submitted to the patent office to be considered during the examination of the patent application. If they fail to disclose all of the art, they open themselves up to a defense of inequitable conduct if they ever try to enforce the patent, and if they are found to have behaved inequitably, they will lose the patent altogether.

Lastly, I'm not sure I follow you on the statutory part. His device has been on the market now for 23 months. I figured if he doesn't have a patent by now, he can't get one(?) -but then I figured he can't get one anyway because of Prior Art

The rule is that you must file for a patent within 12 months of the first public disclosure of something that embodies the patent -- for example, on a patent for a device, the first public disclosure of the device. It can take years for a patent to actually issue, the key is when the patent was filed for. So long as the patent (or a provisional patent) has a filing date that is within 12 months of the first public disclosure, then it is possible to obtain a patent, even if it takes years to obtain the patent.

My point went beyond that, as there are ways to claim priority back to earlier applications, even abandoned applications, in some cases. The key is the "earliest effective filing data" or "priority date," that's the only date that matters for purposes of determining whether or not there is an "on-sale bar" (the invention was publicly disclosed more than 12 months before the priority date of a patent on the invention), and is the only date that matters to prove that a particular piece of art qualifies as "prior art" or not.

 

[shylock]

Well, the law says you can use the term "patent pending" after you've filed for a patent, so if you want to change this, you need to change the law.

I know.. I'm just of the opinion it's a wonky law. But of course, there could be another side to it I'm just not considering.

"35 U.S.C. 292 False marking.

(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, *snip* - Shall be fined not more than $500 for every such offense.

(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States."

Very enlightening! Though I definitely see what you mean about the worthwhileness of it. I snipped the quote to save space, I hope that's okay. Should he contact me again with claims of a "patent", I think he might find that paragraph very interesting.

A cease and desist letter is just a letter asking you to do something. It has no force of law, anyone can write one, and there is no penalty for ignoring it. There may be some legal issues associated with a C&D letter -- for example, it may serve to put an accused infringer "on notice" sufficient to start the damages clock running, and it may open the sender up to declaratory judgment jurisdiction -- but in general, all a C&D letter is a request to do something or stop doing something.

If you think the C&D letter is baseless, you can ignore it. Or you can use it to open up a dialog between you and the other party. But the C&D letter has no legal authority behind it.

Now that's interesting. I was told that you couldn't ignore a C&D, you had to either comply, or file to "resist".

No, and here's why. I am not your lawyer, and what you are asking for is a legal opinion. I can't give you a legal opinion without becoming your lawyer -- and I can't do that without ensuring that there are no conflicts of interest with you or the other party. In other words, you would have to engage my services (or my firm's services) in order to do this.

Your best bet is to sit down with a local attorney who can review all of the facts and advise you accordingly.

Understood. (And believe me - while I'm at it - I truly appreciate the help you've given me, with the understanding that this isn't actual "counsel")

Also, the fact the they are scouring the world looking fro prior art is generally a good thing for you, because any relevant, material art that they find MUST be submitted to the patent office to be considered during the examination of the patent application. If they fail to disclose all of the art, they open themselves up to a defense of inequitable conduct if they ever try to enforce the patent, and if they are found to have behaved inequitably, they will lose the patent altogether.

I agree with that - I just didn't want him to see this particular post via a search, figure out who I am, and that I didn't actually have an attorney (yet, anyway), - keep them guessing and uncertain, as it were.
As it is, I'd really rather avoid any legal confrontation, if possible, because even if I win (as a private citizen), it's still expensive - at least, initially, unless I recoup all costs, and there's no guarantee of that either.
My dilemma is balancing my principles against my wallet, but I'm standing my ground so far because I'm still convinced I'm in the right and being unfairly harassed by a crackpot.

The rule is that you must file for a patent within 12 months of the first public disclosure of something that embodies the patent -- for example, on a patent for a device, the first public disclosure of the device. It can take years for a patent to actually issue, the key is when the patent was filed for. So long as the patent (or a provisional patent) has a filing date that is within 12 months of the first public disclosure, then it is possible to obtain a patent, even if it takes years to obtain the patent.

My point went beyond that, as there are ways to claim priority back to earlier applications, even abandoned applications, in some cases. The key is the "earliest effective filing data" or "priority date," that's the only date that matters for purposes of determining whether or not there is an "on-sale bar" (the invention was publicly disclosed more than 12 months before the priority date of a patent on the invention), and is the only date that matters to prove that a particular piece of art qualifies as "prior art" or not.

Ah, I see now. I don't know when he filed, so that does leave a few things uncertain. I believe there to be Prior Art going back at least to 1989, if not older, but as to whether he did himself in, I see what you're saying here. Even trickier, I don't know if there was ever a patent for this lil' gizmo.

I've tread very lightly so far, though and that appears to be a good strategy thus far.

And so, I thank you very, very much for all your time and effort!

 

[divgradcurl]

Now that's interesting. I was told that you couldn't ignore a C&D, you had to either comply, or file to "resist".

You never have to reply to a C&D letter. Now, if you were served a complaint, well, that's different story -- that you either have to answer (by filing an answer with the court), or face a default judgment.

Until a lawsuit has been filed, and you have been served with a complaint, you don't have to do anything, because the court hasn't been involved yet. And only a court can compel somebody to do something (in this context).