New product--must use old fastener??

[hollymayk]

What is the name of your state? CA

Hi,

I am patenting an invention. My invention makes use of a fastener, but I just found the patent on the fastener I want to use, and it was patented in 1996--obviously not 20 yrs ago.

What do inventors in this situation do--use an out-of-date fastener?

If products can't incorporate the newest technologies (i.e. fasteners in this case), then how do the inventors manage to sell them? Do you just design your invention to be legal, but suggest alternative parts when trying to sell it or license it to manufacturers?

Thank you for any response.

 

[divgradcurl]

What is the name of your state? CA

Hi,

I am patenting an invention. My invention makes use of a fastener, but I just found the patent on the fastener I want to use, and it was patented in 1996--obviously not 20 yrs ago.

What do inventors in this situation do--use an out-of-date fastener?

If products can't incorporate the newest technologies (i.e. fasteners in this case), then how do the inventors manage to sell them? Do you just design your invention to be legal, but suggest alternative parts when trying to sell it or license it to manufacturers?

Thank you for any response.

Are you working with an attorney or an agent? If so, perhaps that person can help you design-around or otherwise advise you on how to deal with the patented fastener.

Whether or not the fastener has no impact on whether or not your invention is patentable or not. If you were to obtain a patent, then if you actually wanted to manufacture your invention (or sell the rights so that someone else can manufacture the invention), then you'll need to figure out how to deal with the fastener. It may be as simple as obtaining a license from the fastener manufacturer, or buying the fasteners at retail to use in the manufacture of your product -- both would likely be perfectly legal. However, if you were to manufacture your own fastners without a license, that would be infringing. But again, it will depend on your invention, and what the other patent (for the fastener) covers.

If you design you invention to be "legal," there are a couple of potential probalems with that. First, if you have a "legal" invention, but then give advice on how to build your invention in such a way that it is infringing, then you could be liable for contributory or vicarious infringement. Second, if you design your invention with one fastener, then it is possible (depending on the specifics of your patent) that using the other fastener creates a "new" invention which is not covered by your patent, which means you would haveno control over it.

Again, if you are working with an attorney or an agent to get your patent filed, then they can help you with these questions.