Design patent infringment

[FlyingJGod]

Nevada
I currently hold a design patent and recently noticed that a company was selling what I believe to be my product in a popular mail order catalog. I wrote the company a letter and notified them that I believe their product may be infringing on my design and that I would be happy to give them a licensing agreement. They had a patent lawyer reply and he notified me by mail that he felt it was not infringing because it was not identical to my design and that they considered the case closed.
Their product would be my design minus a cover that I had put on it. However, in my patent I display the product without the cover in one of my figure drawings (exactly as their product is sold). How does Design patents work? Is this lawyer right or should I go see a patent attorney to pursue other means? And any tips on how to choose a good patent attorney? Thanks for any help you can give me.

 

[divgradcurl]

How does Design patents work?

Design patents work like any other patent -- you need to prove that the other guy is infringing on your design -- if you can prove that, you may be able to collect damages, and force the other guy to redesign his product or stop selling it.

Is this lawyer right or should I go see a patent attorney to pursue other means?

Why would you trust the other guy's lawyer? He's not working for you, he's working for them.

There's a reason the other guy's lawyer sent that letter. When you sent them a letter accusing them or potential infringement, that triggers "notice." Under the patent laws, if you are on "notice" that you are potentially infringing, you continue to infringe, and you are later found liable for infringement, you will be charged with "willful infringement," which carries with a penalty of tripleing any damages awarded for infringement.

However, you can avoid the treble damages and continue to sell your potentially infringing product if you obtain an opinion of counsel -- basically, if your lawyer does some research, and determines that the infringement case against you is not ironclad, your lawyer can provide an opinion of noninfringement, and that will protect you from a finding of willful infringement, even if you are later found to be liable for infringemet. So that's why the letter was sent to you, and why it was worded in that way.

You need to make a descision -- either let it go, or hire a lawyer to pursue this further. As far as finding a lawyer, you can use the links on this page, you can search for patent attorneys in your area by searching the attorney roster at www.uspto.gov, or you can ask around. You'll want to find an attorney who has some experience in patent litigation and patent law, if possible.

 

[auxbs]

However, you can avoid the treble damages and continue to sell your potentially infringing product if you obtain an opinion of counsel -- basically, if your lawyer does some research, and determines that the infringement case against you is not ironclad, your lawyer can provide an opinion of noninfringement, and that will protect you from a finding of willful infringement, even if you are later found to be liable for infringemet.

How much should an "opinion of counsel" cost? I was quoted by a local patent attorney $25K (!) for a formal opinion, or $5K for an informal opinion (which would not be useful in court). Are those reasonable numbers?? I'm in Arizona.

 

[divgradcurl]

How much should an "opinion of counsel" cost? I was quoted by a local patent attorney $25K (!) for a formal opinion, or $5K for an informal opinion (which would not be useful in court). Are those reasonable numbers?? I'm in Arizona.

Sounds high for a design patent opinion of counsel, but in the ballpark for a utility patent. It's generally a lot less work to do an opinion for a design patent than a utility patent, so it should be cheaper -- but perhaps if the attorney you had contacted hadn't done a design patent opinion in a while (or ever), he might need more time, and therefore higher cost. Try shopping around, and see if you can find something cheaper.

EDIT: Also, when I said the prices were "in the ballpark," I meant for an opinion from a large, national (or international) law firm in a major market, like SF, LA, NY, DC, etc. You should get a break for going with a smaller firm in a smaller market, so it may be worthwhile to shop around. On the other hand, I'm not from AZ, so maybe there are some local economic dynamics that drive the price up, who knows...