Patent pending/Trademark/Copyright

[mommydrivesah2]

undefinedI live in Houston Texas. I have several questions: A neighbor says she has applied for a patent on a decorative feather & trim bottle topper she "came up with". I saw one, liked it and started making them (before she said anything about patents) Not out of spite, just easy and cute. I sell them along with other items I make for gift baskets, etc. I don't call them what she does but she now has sent me a "Non-exclusive" licensee agreement saying that i can only sell 15 at a craft show i am in charge of and any others i have to pay her. "Licensee shall not be obligated to pay Licensor for the sale, donation, gift or other conveyance of fifteen (15) Licensed Items. In the event that greater than fifteen items are conveyed in any way to a third party and for any reason whatsoever, Licensee shall pay to Licensor upon demand but in no event later than thirty (30) days after the close of the Wee Wuns Holiday Market, a flat sum of twenty dollars ($20.00) for each Licensed Item over fifteen that are manufactured up to one hundred that are manufactured. Licensor shall have the right to audit Licensee’s accounting books upon demand in Licensor’s sole discretion and demand payment for any errors. In the event that Licensor fails to maintain adequate books, Licensee shall pay Licensor $1700.00 upon demand and adequate documentation that Licensee manufactured greater than fifteen Licensed Items, which can be, but not limited to, visual documentation of more than fifteen Licensed Items offered for sale by Licensee. I also have to include "Licensee agrees to affix to each item a legible notice reading “Licensed from KAS Creations, Patent Pending.” I don't have the time and money to get a lawyer for this. By the way, she says her husband's best friend is a patent lawyer and that's where these blurbs are coming from, something she had typed up.

Do I have to sign this? What if I don't? How can she stop other people from wanting to make and sell them? It's a crafty item that doesn't take a rocket scientist to cut and glue. How long does it take to get a patent? Can i continue to make and sell them? Am I obligated to show her my invoice book? I'm a little irritated by the whole thing. Thanks so much for your time! Michelle

 

[divgradcurl]

Do I have to sign this?

No. Until she has a patent in hand, she has nothing enforceable. A "patent pending" is just a warning to others that the applicant has indeed filed for a patent, and that someday that person may be issued a patent -- but there isnothing enforceable until the patent actually issues.

You mentioned copyright and trademark in your titles as well -- has she tried to claim any copyright or trademark rights in the design, or has she just brought up the pending patent?

What if I don't?

Who knows? Maybe she'll try and sue you anyway -- but without an issued patent, she's out of luck.

How can she stop other people from wanting to make and sell them?

Well, she can't stop others from wanting to make and sell them, of course -- but if she obtains a patent, or has some other "rights" to the design, she can enforce those rights -- that's the whole point of a patent!

It's a crafty item that doesn't take a rocket scientist to cut and glue.

Irrelevant. Although many patents are for very complex inventions, they don't have to be. Even very simple inventions can be patented if they meet the criteria for patentability. In this case, if she really has applied for a patent, it sounds like it would likely be a "design" patent, which is a patent on the design of an abject, and not a patent on any functionality (if any) of the object.

How long does it take to get a patent?

Generally 2 to 4 years.

Can i continue to make and sell them?

Yes. And you can continue even if she DOES get a patent -- it's just that you might be infringing!

But if she doesn't yet have a patent, or any other rights (trademark or copyright) to the design, she can't stop you (or anyone else) from making and selling the designs.

Am I obligated to show her my invoice book?

Not from what you've written.

Here's the deal -- if she has applied for a patent, until the patent actually issues, she has exactly nothing. The DAY the patent issues, however, she can sue for infringement of the patent. Damages, however, only start from the day the patent issues (and only if you have been made aware of the patent pending status of the invention). You may want to go to www.uspto.gov and try and search the applications to see if she even really has an application in progress -- you may not find anything, because if it hasn't been 18 months since she applied nothing will be published, and design applications aren't usually published anyway, but you can always check.

If she is claiming copyright or trademark rights, then you would need to look into things a bit further to determine what rights she has and whether or not she can enforce them against you. You should push back, and state that you will not sign anything until she provides some evidence of the ownership of rights that she can enforce. Make her prove to you that she actually HAS a patent, or that she intends to pursue you under trademark or copyrighe, before you do anything.

 

[mommydrivesah2]

Thanks for your Help!

Thank you for your reply!! Generally what I thought, but wanted to see another opinion. No she doesn't have a trademark or copyright thing that i know of. I think she may have JUST filed for a patent in either september or October. She didn't disclose her "patent" app;lication or number if she filed electronically...which I will ask her for if she decides to pursue me. I haven't and won't sign anything, i think she is mad because she can't do a show that I am in charge of and I will be selling there. Again, thank you for your time!!
Michelle

 

[shakespeare]

Requesting Clarification of Your Response Re Patent-Pending

Dear Divgradcurl,

I live and work in both New York and Pennsylvania. I read your thorough and incisive response to the original "patent pending" inquiry with great interest. However, there is one part of your explanation that's not entirely clear to me. You state:

"Here's the deal -- if she has applied for a patent, until the patent actually issues, she has exactly nothing. The DAY the patent issues, however, she can sue for infringement of the patent. Damages, however, only start from the day the patent issues (and only if you have been made aware of the patent pending status of the invention)."

It appears you are saying that the holder of the patent can only sue for damages that occurred on the day of patent-issue or later. However, you then indicate that the accused infringer can only be sued "if [he or she has] been made aware of the patent-pending status of the invention." If the only infringement for which an infringer can be sued must be dated from the day of the patent-issuance or later, how is it relevant whether the accused infringer has "been made aware of the PATENT-PENDING status of the invention"?

More specifically, suppose someone decides to imitate a product for which there is a notice of patent-pending, but to cease all sales from the day of patent-issuance forward. As long as all financial gain based on this imitation takes place *before* the issuance of the patent, does the holder of the (eventual) patent have any legal grounds for suing the imitator?

If not, in what sense does the "patent pending" notice protect the creator of the original product?

Thanks very much for any insight you can give me into these issues.

 

[divgradcurl]

It appears you are saying that the holder of the patent can only sue for damages that occurred on the day of patent-issue or later.

That is correct. Until the patent actually issues, the patent applicant has nothing that they can enforce. The "monopoly" that a patent gives you does not start until the date the patent issues.

However, you then indicate that the accused infringer can only be sued "if [he or she has] been made aware of the patent-pending status of the invention." If the only infringement for which an infringer can be sued must be dated from the day of the patent-issuance or later, how is it relevant whether the accused infringer has "been made aware of the PATENT-PENDING status of the invention"?

I guess that what I wrote was a little confusing. The rule is, damages for patent infringement do not begin to accrue until an alleged infringer is put on "notice" of the alleged infringement. There are a couple of ways of doing this. One is to actually send a letter or something to the alleged infringer, telling them what they are doing constitutes infringement (or might constitute infringement), and telling them which patents (by number) you feel they are infringing. Only then do damages begin to accrue.

Another way of putting someone "on notice" is by "marking" your products with your patent number(s) that cover your product. If you manufacture a widget, and mark the widget with your patent number (or put the number on the packaging if you can't market the widget yourself), then alleged infringers are automatically "on notice."

The problem with marking is that you don't know the patent number until the patent issues -- so what about products that are manufactured and sold prior to the issue date of the patent? The law allows you to "mark" your product with the phrase "patent pending," and this has the same result as marking your product with the patent number -- it puts all potential infringers "on notice." The damages clock still doesn't start until the patent actually issues, but the "patent pending" making covers that grey area between the issue date of the patent and when you start manufacturing and selling the widget with the actual patent number marked upon it.

More specifically, suppose someone decides to imitate a product for which there is a notice of patent-pending, but to cease all sales from the day of patent-issuance forward. As long as all financial gain based on this imitation takes place *before* the issuance of the patent, does the holder of the (eventual) patent have any legal grounds for suing the imitator?

For direct infringement, no. Now, if the patent covers a process or a method, there could be other avenues for suit, such as inducement to infringe, etc. But if we are talking about widget patents, for example, and the manufacturer stops manufacturing, selling, or offering to sell the widgets prior to the issue date of the patent, then the patentee would have no recourse under the patent laws against the manufacturer.

If not, in what sense does the "patent pending" notice protect the creator of the original product?

The term "patent pending" itself provides no protection -- it only helps to start the damages clock once a patent issues. Until a patent issues, there is nothing enforceable, period.