Told I was Infringing,How do I really Know??

[masterofchaos]

What is the name of your state?Nv
I posted this in another forum by mistake, sorry for the double post.
I started making and selling an item about a month ago, I received an email from a person last week who said I was infringing on his patent pending. He said he had 2 patents pending on this item, one for design and one for the application or use of the item. The item is basically taking 2 everyday items from an electronics store and putting them together to do what I want them to and the manufacturer of the parts actually offers them together to be put together I am just doing this for the consumers and selling them already together. I really don't think it is patentable and think this guy is stating this to keep competition away. He stated that he has forwarded this to his attorney, I have not been notified by an attorney as of yet. How can I determine if he is telling the truth or just saying this to stop competition in the market place? can the purpose or application I offer them for be patented? I don’t wish to infringe on anybodies patent but don’t see a reason to stop just because someone says to he has a patent. How do I go about this? Thanks in advance

 

[divgradcurl]

What is the name of your state?Nv
I posted this in another forum by mistake, sorry for the double post.
I started making and selling an item about a month ago, I received an email from a person last week who said I was infringing on his patent pending. He said he had 2 patents pending on this item, one for design and one for the application or use of the item. The item is basically taking 2 everyday items from an electronics store and putting them together to do what I want them to and the manufacturer of the parts actually offers them together to be put together I am just doing this for the consumers and selling them already together. I really don't think it is patentable and think this guy is stating this to keep competition away. He stated that he has forwarded this to his attorney, I have not been notified by an attorney as of yet. How can I determine if he is telling the truth or just saying this to stop competition in the market place? can the purpose or application I offer them for be patented? I don’t wish to infringe on anybodies patent but don’t see a reason to stop just because someone says to he has a patent. How do I go about this? Thanks in advance

First off, if all he has is a "patent pending," ignore him -- he has nothing. A pending patent cannot be asserted against anyone, as it gives the holder no rights. Until and if a patent actually issues, he has nothing he can use against you.

If you know the guy's name, you might want to search www.uspto.gov to see if he actually does have a pending patent -- you can search published applications by name from the search page. However, not all applications are published, so if it's not there that doesn't mean for sure he doesn't have an application in the works.

If he DOES have a patent, then there are a couple of things to think about. First off, if he puts you "on notice" that you may be infringing, and you continue to infringe and are eventually found liable for infringement in court, you could face triple damages due to "willful infringement." However, a notice of infringement must, at the very least, contain the patent number(s) that you are allegedly infringing so that you can do a study yourself to determine whether or not you should cease and desist or whether you should wait and see if he will sue you. Plus, even if he does have a patent, and gives you the numbers, an opinion of noninfringement from your lawyer will protect you from a charge of willful infringement and allow you to keep doing what you are doing until you get sued.

How can I determine if he is telling the truth or just saying this to stop competition in the market place?

Hard to say. But unless and until he identifies patent numbers of issued patents (not pending patents) and accuses you of infringement, you really have no obligation to pay any attention to him at all.

can the purpose or application I offer them for be patented?

That's not a question that can be answered without an in-depth review of the facts surrounding your invention. Talk with a patent agent or patent attorney to see if your device and application can be patented.

I don’t wish to infringe on anybodies patent but don’t see a reason to stop just because someone says to he has a patent. How do I go about this?

Like I said, you might want to search the USPTO website and see if he has any patents or published applications. If he does, then maybe you might want to seek the advice of an attorney, who can review the patents and/or applications in light of your product and other relevant facts and advise you accordingly.

However, if you can't find any patents or published applications, then you really have three choices. First, you could throw in the towel and give up, but that's probably an overreaction! Second, you could ask him to provide you with patent numbers or patent application numbers so you can make your own determination of the likelihood of infringement (that's the "put up or shut up" approach). Finally, you could simply ignore him, and wait until he (or his lawyer) contacts you again. Number 2 is probably the safest bet overall, but if he really used the terms "patent pending," then he probably has nothing (maybe nothing more than a worthless provisional patent application), and I would be tempted to go with number 3, and just ignore him.

 

[masterofchaos]

My state is NV,

Thanks for clearing things up for me on this. I'll take option 3 on this one. A couple follow up question though, what reason is there or what determins if an application get's published or not? and if a person or company doesn't have a patent or pending patent but advertises with the words "patent pending" or "patented" and doesn't is there a law or statue that makes this illegal, is there a watch dog for this or a place to alert the USPTO of this dishonest practice?. What penalties if any are there for falsley stating you have a patent pending or a patent ? I ask because it seems to me that if there were no penalties or watch dog than anyone could include this in advertising and nobody would no who does and who doesn't own a patent therefore making the whole process a fiasco. Thanks again for the info.

 

[divgradcurl]

A couple follow up question though, what reason is there or what determins if an application get's published or not?

The default rule is that all patent applications get published after 18 months. If the patent is also going to be filed in other countries, then the application MUST be published after 18 months; however, if the applicant is only filing in the U.S., and has no plans to file in another country, then the applicant may request that the application not be published.

But the applicant has to ask -- if they fail to request non-publication, then the default rule kicks in, and the application gets published.

if a person or company doesn't have a patent or pending patent but advertises with the words "patent pending" or "patented" and doesn't is there a law or statue that makes this illegal, is there a watch dog for this or a place to alert the USPTO of this dishonest practice?.

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 same 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.

Unfortunately, the fine is only $500, and this has to be tried in Federal Court, so it's probably not worth the effort to hire a lawyer and sue unless he has done this many hundreds of times...

However, if you do find out that he doesn't really have a patent, and you really do want to do something, find out what state HE is in, and look to state laws (in both your state and his state) on unfair competition, maybe your state or his state has a strong unfair competition law that would give you a) a chance to litigate in state court, and b) a chance to recover more than $500. For example, if he is in California, Cal. Bus. & Prof. Code 17200 can be a powerful tool against someone doing something like what you describe -- see if similar rules exists in your state or his state.

 

[masterofchaos]

Great info Thank you,

I believe I have done as thorough a search as I can using the USPTO search site and have not found anything pertaining to this product, can I assume with reasonable confidence that there is no such patent or pending patent (except those not published) or does it really take a Patent agent or attorney to do a search on the product and do they have access to Unpublished patents and aplications, in other words is there something about doing a search that makes there search more thorough than the one anybody can do on the USPTO Site. Seeing how I have seen estimates of $750.00 for a search I am wondering if it is money well spent or not.

Also how big do the diffrences in design have to be to be considered a different product or does that have to do with the make up of the aplication and details of the applicants design.

I understand to get the absolute definitive answeres I should consult with an agent or attorney and show them my product and aplication of use but I am trying to get a grasp on weather it's worth spending the money going after a patent on my product or not.

Thanks very much for your willingness to help clear things up for me.

 

[divgradcurl]

I believe I have done as thorough a search as I can using the USPTO search site and have not found anything pertaining to this product, can I assume with reasonable confidence that there is no such patent or pending patent (except those not published) or does it really take a Patent agent or attorney to do a search on the product and do they have access to Unpublished patents and aplications, in other words is there something about doing a search that makes there search more thorough than the one anybody can do on the USPTO Site.

A patent agent or attorney has no more access to applications that you do. The advantage an agent or attorney has is experience in knowing what keywords to use and how to search -- in your case, however, since you are keying off the name of an inventor, then there really isn't any value in hiring another to do your search.

However, if you are interested in the broader question of whether or not your invention is patentable, then the experience of an agent or attorney is almost a necessity -- it's not always easy to look at a patent and understand whether the claims cover your invention or not, unless you have some experience and a knowledge of what the caselaw is likely to say.

Also how big do the diffrences in design have to be to be considered a different product or does that have to do with the make up of the aplication and details of the applicants design.

Again, this is somewhere where you will want an experienced agent or attorney to guide you. There aren't any set rules, and the answer in your case will be dependant on an understanding of ALL of the relevant facts and issues in your particular case.

I understand to get the absolute definitive answeres I should consult with an agent or attorney and show them my product and aplication of use but I am trying to get a grasp on weather it's worth spending the money going after a patent on my product or not.

Nobody can answer that question for you. You may try and shop around to see if there is someone who can give you a free or low-cost evaluation of the patentability of your invention, that might be your best bet.

But as far as infringement is concerned, like I noted above, forget about it until this guy pops back up again, then demand proof.

 

[masterofchaos]

Thanks very much for allowing me to pick your brain, your information has cleared things up for me quite a bit. Chasing the American dream is at the very least a complicated ordeal, with the help of poeple like you who seem to be in the know the system and guide lines don't seem so overwelming anymore. This is a great forum and a very valuable tool to anyone with questions about the subject of Patents. Thanks again!!!!