What Next? I feel screwed.

[Lectrospec]

CaliforniaWhat is the name of your state?
I'm brand new to this forum and have a serious question. In 1987, I applied for a patent that was eventually rejected. I recently found out that a patent was issued for the same exact product in 2000. The description and use are identical. In addition, when my patent was pending, an article ran in a nationwide trade publication describing it's use. What recourse do I have now?

 

[divgradcurl]

What recourse do I have now?

Recourse for what? How have you been harmed by this new patent?

In 1987, I applied for a patent that was eventually rejected.

Why was the application rejected?

I recently found out that a patent was issued for the same exact product in 2000. The description and use are identical.

The description and use are largely irrelevant -- the invention is in the claims. There are a lot of patents out there that would appear to be pre-empted by prior art, or simply be obvious -- but wehen you read the claims, you realize that the actual "invention" is much more limited than the title or specification would imply, and that the limits in the claims actually DO describe a new invention.

In addition, when my patent was pending, an article ran in a nationwide trade publication describing it's use.

That may or may not be relevant. You can invent different ways to do the same thing or end up with the same result. Just because two different inventions end up with the same result, or are used the same way, doesn't mean that one of them isn't entitled to a patent.

If you feel that this patent is going to keep you from selling your widgets, there are a coupl eof things you can do. First, you could simply collect up all of this "prior art" info and keep a file -- then if you ever get sued, it should be easy to put together a case for invalidity of the patent.

Alternatively, if it turns out that you really have a strong case for invalidity, you could file an application for reexamination with the USPTO. This really isn't that cheap, you'll probably need a lawyer to do it, and it could backfire -- if you file for reexam, and the patent officeeither doesn't grant reexam, or worse, does the reexam and still finds the patent valid, you can pretty much give up on ever proving the patent invalid in a later infringement case.

Another thing to consider -- a rejection from the USPTO, even on final, is not the last word -- you can always file a continuation or something to keep the prosecution going. However, if you accept their rejections, you end up abandoning the application -- and the law is very clear, you may NOT rely on an abandoned application to prove an earlier invention date, and you may NOT rely on an abandoned application as prior art. The magazine article, however, may be considered prior art.

Finally, even if there is apparently prior art out there, you need to read the issued patent to both a) figure out what the claims actually cover, and see if there is prior art on what the claims cover, and b) figure out what the inventor and USPTO cited as prior art -- if your magazine article was cited in the application or patent, then the presumption is that the examiner considered the art, but did not find it to be prior art, and that is a very difficult preseumption to overcome if you want to try and invalidate the patent based on that art.

But my first question is still the key question -- why are you concerned about this patent?

 

[Lectrospec]

feel screwed

Thanks for your lengthy reply. Wow, what an earful! I don't know alot about the issues that you raised, but here is my concern. Back in 1997 when I first filed for the patent, I didn't have a lot of money but found a lawyer that said he could handle it for a reasonable price. After several months and several corespondances from the patent office, his basic fee did not cover any additional work. I had to shell out more money for drawings and eventually received another correspondance citing draftpersons objection to the drawings which would require new drawings and resubmission along with a disposition of claims saying 1-20 are pending in the application and also claims 1-20 are subject to restriction. We then submitted new drawings and information and received the last correspondance on July 28, 1998. This last correspondance basically rejected all claims and sited prior art that was not really related to the new design. They gave me an additional 30 days to respond. Since it looked endless and I didn't have any funds, I abandoned the application in July of 1998. Maybe a better attorney would have been helpful but that's in the past. This patent application was for an electrical metallic tubing cutter that I had designed out of need in the trade. It had a special cutting blade that only cut through a portion of the tubing allowing the tubing to then be broken without having and jagged edge inside. It was especially useful on remodel work where existing conduits with wiring within had to be shortened. I was planning on marketing the idea and while the application was pending, I contacted several tool manufactures with the description an use for the tool. Most of them were not interested but one was and wanted to have further discussions once the patent was issued and a prototype could be sent to them. In addition, I sent a letter to a national trade publication describing the specialty tool. They published a small write up in their October, 1997 issue which described the cutter and how it worked and what it could be used for. They ended with giving my name and address for further details. When I abandoned the application in 1998, I thought that it was not patentable based on the examiners comments. Obviously I was wrong because in 2000, it was patented by another person. His abstract is for the same tool using the same cutting wheels used in the same fashion that I proposed. I still use this tool on my own jobs but would still try to market it. Do I hav a leg to stand on? Does the magazine article count? Thanks

 

[divgradcurl]

Do I hav a leg to stand on? Does the magazine article count?

I read your background, and I still can't figure out what your legal question is. But here's a coupl eof points, maybe your answer will be found in them:

1. The magazine article may be "prior art" that could potentially invalidate part or all of the patent. It will depend on whether or not the article gave sufficient information to "disclose" the invention fully, and what exactly the claim terms of the patent cover. The claim terms ARE the patent -- you shouldn't look to the title or specification and jump to conclusions -- only the claims count.

2. In addition, if you are actually using the invented tool, and can prove that you had been using it prior to the application for the patent, that is also potentially invalidating.

3. It kind of sounds to me as if you are interested in trying to get a patent (or this patent) for yourself. If that's the case, forget about it. The best you can do is hope to invalidate the patent.

If you have a legal question, please post the question and I'll try and answer it.

3.

 

[Lectrospec]

feel screwed

California

Thanks for the info. I'm pretty clear on what you said. The magazine article pretty much describes the claims to a T. Rather than try and get the patent invalidated, would it be possible for the other inventor to have me added to the patent so we could try and jointly market the idea? Would it be possible to persuade him without it looking like extortion? I do have signed statements from several trusted people saying that they have read and understand how the cutting blade works, a copy of the page from the magazine article and an unopened mailed letter to myself disclosing the idea.
In addition, I am still in contact with the machine shop that made up the special cutting blades and I'm sure they would issue a letter validating my claim. Thanks again for all your help. Bill E.

 

[divgradcurl]

Rather than try and get the patent invalidated, would it be possible for the other inventor to have me added to the patent so we could try and jointly market the idea?

No, because you are not "joint inventors" as defined under the statutes. And before you get any ideas, inventorship on a patent is not something to be taken lightly -- incorrect inventorship can invalidate a patent.

I do have signed statements from several trusted people saying that they have read and understand how the cutting blade works, a copy of the page from the magazine article and an unopened mailed letter to myself disclosing the idea.
In addition, I am still in contact with the machine shop that made up the special cutting blades and I'm sure they would issue a letter validating my claim.

Well, then you can either hold on to all of this information, and wait and see if a patent gets issued, and then you have a warchest of prior art that can be used if you ever get sued for infringement. Also, you could file a protest -- see another post in this section that I wrote that discusses protests. But it's likely to late for YOU to obtain a patent, since you've been using the invention for more than a year (a lot more than a year), unless you've been using the invention only in private.

Also, remember -- a "patent pending" or a patent application is nothing -- until a patent actually issues, you have nothing that is enforceable, and, as you found yourself, not all patent applications end up with issued patents.

 

[Lectrospec]

feel screwed

California.

Thanks for your quick reply. On last thing; I'm assuming the patent has been issued on the tubing cutter as it showeds up on the U.S. Patent Office data base with a patent number. I'm not quite sure what you mean by "incorrect inventorship can ivalidate a patent". Even though you said I cannot be added to the patent, would it be possible to enter into a separate binding agreement with the inventor agreeing to share in all costs and profits of a marketing campaign. Would this be considered extortion if I contacted him and proposed this idea rather than trying to have his patent invalidated? Thanks, Bill E.

 

[divgradcurl]

On last thing; I'm assuming the patent has been issued on the tubing cutter as it showeds up on the U.S. Patent Office data base with a patent number.

That sounds like a correct assumption.

I'm not quite sure what you mean by "incorrect inventorship can ivalidate a patent".

If the inventorship is incorrect on a patent -- the patents either lists inventors who were not part of the inventive process, or fails to list inventors that WERE part of the inventive process -- a court may find the patent invalid for incorrect inventorship. Doesn't happen often, but it can happen.

Even though you said I cannot be added to the patent, would it be possible to enter into a separate binding agreement with the inventor agreeing to share in all costs and profits of a marketing campaign.

I guess potentially that is possible. There is certainly nothing illegal about it.

Would this be considered extortion if I contacted him and proposed this idea rather than trying to have his patent invalidated?

No, but you might want to be careful -- rather than work with you, he may just decide to sue you for infringement. I guess that would give you the opportunity to try and prove invalidity -- however, keep in mind that invalidity is NOT easy to prove. A patent, once issued by the USPTO, is presumed valid by the courts, and that presumption can be tough to overcome -- it requires "clear and convincing" evidence, which is a higher standard of proof than the usual "preponderance of the evidence" standard that is typical in civil cases.