Patent infringement advice

[hockeydad]

What is the name of your state? WA

I need some advice on the subject of patent infringement. I will try to keep this as brief as possible.
I had an idea about 3 years ago to create an after market addition to an existing product. About two years ago, I began working for a company in the industry which uses this product, and I designed and developed the new piece, which we used in our business. I initially did a patent search and did not find anything like it. This new product worked fantastic and was truly unique, in a very competitive market. About a year ago I left that company and started working for a company in the same industry on the distribution side. I have mentioned this new product to some of my clients, and they love the idea, as does the company I'm working for. So now I've got "ka-ching!" going off in my head and I'm ready to retire, but I am told by one of my new potential clients that they think they saw a patent for this in one of their own searches. I looked again and used the name of the person they thought was on the patent and sure enough, he has a patent on exactly this product. The patent app pre-dates anything I have done on it. Neither he nor his company have done anything with this yet.
So my question is- what are my options?
I'm hoping there is some magical loophole floating around out there, but I am not optimistic.
I guess it makes the most sense to me to approach this person and his company and see if they want to go in on this together, but why would they?
And am I potentially hanging myself by bringing to their attention the fact that I already produced and used this?


Any help is greatly appreciated.What is the name of your state?

 

[divgradcurl]

So my question is- what are my options?

You could continue to infringe, and hope you don't get caught. You could contact the patent owner and try and purchase the patent or license the technology. You could try and "design around" the patent, and develop your own product that doesn't infringe yet still does what you need it to. You could go into another line of work. There are lots of possibilities -- but the patent isn't just going to magically go away.

I'm hoping there is some magical loophole floating around out there, but I am not optimistic.

When was the patent issued? In order for an issued patent to remain valid and enforceable for it's entire life, maintenance fees must be paid at 4, 8 and 12 years -- if the maintenance fees haven't been paid, then the patent may be invalid. You could go to the USPTO website, go to the public PAIR page, and type in the patent number and check the maintenance fee history, if a fee period has come and gone without payment, the patent may be unenforceable. The patent holder has a year to pay the fees, so a whole year has to pass before the fee window closes.

Other than that, there isn't any "loophole." The U.S. does not have a "use it or lose it" rule, nor does it have a "compulsory license" rule. The only real "loophole" is this maintenance fee business.

I guess it makes the most sense to me to approach this person and his company and see if they want to go in on this together, but why would they?

If they are not practicing the patent (creating the patented product) or licensing the patent to someone else, then the patent isn't making them any money. Maybe they can't afford to produce the product themselves; maybe they have no interest. Who knows. But they may be willing to sell or license the patent to get some profits from the patent.

And am I potentially hanging myself by bringing to their attention the fact that I already produced and used this?

The answer to this depends on what your plans for the future are. If you are planning to keep quiet and keep trying to fly under the radar and make the product without permission, then yeah, it would be stupid to alert the patent owner to your presence and potentially infringing products. However, if you intention is to pursue a licensing agreement, or try and buy the patent or try and enter into a joint venture or something, then you really don't have anything to fear from contacting the patent owner. Once you contact them, it's always possible that they will immediately sue for patent infringement, but it's unlikely. First, they can't get any back damages -- damages only accrue from the time you are notified by the patent holder that you might be infringing, so even if you yourself know you might be infringing, that doesn't start the damages clock -- only a letter from the patent holder or the filing of a lawsuit starts the damages clock. Second, a recent supreme court holding appears to dramatically reduce the effectiveness of suing for injunctive relief, so that too will serve to make it less likely that the other party would immediately just sue. They might, but it seems unlikely.

You might want to consider talking with a local attorney who has experience in patents to help your review the patent, figure out how strong it is and what it might be worth, and help you negotiate for a license.