University asking us to purchase a License

[xapeila]

What is the name of your state? TX

Hi Everyone,
This is becoming a nightmare. We got a letter from a University that has filed an Application 7/04 we have been selling our software since 8/03 we too have filed a patent around that time in 2003 (not granted yet). We do not know the contents of his app. we will get a copy soon.

Can someone ask us to pay a license now based on his application.

Thank you for your replies,
Xapeila

 

[divgradcurl]

Can someone ask us to pay a license now based on his application.

Of course they can ask -- but until someone has an actual, issued patent, they have nothing that is enforceable, so buying a license now would certainly be premature. Besides, the scope of the claims will almost certainly change before (and if) the patent is actually issued, so trying to determine infringement now is just an exercise in futility.

Further, sending someone an unissued application and saying "see, when this issues you are going to be infringing, get your license now" is NOT sufficient to put someone "on notice" of infringement to start the damages clock, so you don't have to worry about that either. If all they have is an application, you can tell them to take a hike, and come back and see you when, and if, their patent actually issues.

Further, even if you did agree to a license now, such a contract would be unenforceable as against public policy.

Now, this analysis is based on what you've written -- if you have an attorney, who has access to all of the facts of your case -- listen to them. But, in general, until a patent actually issues, the applicant has NOTHING that can be asserted against anyone else.

 

[xapeila]

Thank you for your reply : ).. This University purchased several licenses of our software. We do plan to submit our software to the USPO as evidence of possible prior art to maybe cause it to be rejected or amended as soon and the app becomes public record.. They offered to send us a copy of the app, but we have to sign a confidentiality agreement..

Thank you! Xapeila