Legal Question in Intellectual Property in New York

another's patent pending idea similar to mine
I came across a website that sells a product similar to something that I was going to attempt to patent. their site says that their machine is ''patent pending''. I cannot view their their patent due to it not being published. I feel that I can not pay a patent attorney to compose a counter patent , with my inventions particulars, due to the fact that we do not know what their invention/ pending patent specifics are. 1) is there a way around this? what is the next step? 2) If I DO NOT choose to follow through with my patent and I proceed with the invention / idea, and I get financiers, production, and I market and sell the machine successfully, what legal pitfalls do I open myself up to? is it ever heard of that the other party, the one with the patent pending, catches wind of my success and instead of a lawsuit would rather have a percentage of the sales?

thanks

Asked on 7/03/07, 4:27 pm

2 Answers from Attorneys

Nancy Delain Delain Law Office, PLLC

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Re: another's patent pending idea similar to mine

A patent grants the patent holder the right to exclude others from making, using, selling, offering for sale, or importing an infringing device within the United States.

You can't know their patent until publication, which will happen (unless they limit their foreign rights) 18 months after the application was filed.

It may well be that your invention is patentably distinct from theirs, and you will need to write your application to show how your invention is distinct from theirs. It may be (only in the US) that you were first to invent the invention and are therefore entitled to the patent. This is established through a process called an "interference."

If you proceed with production of your idea and their patent comes through and is good, you can be prepared to pay them for licensing rights until their patent expires (typically 20 years from the date of filing), and/or you may face a patent infringement lawsuit. Should you be found to be infringing, and should the infringement be found to be willful, you could be held liable for treble damages to the patent holder plus their attorneys' fees. Patent litigation often ends up costing $millions. THAT's something no one can afford.

I know it seems expensive, but in the long run it would be far less expensive for you to hire a patent lawyer/agent now to help you work around their invention, handle the interference, or tell you to drop your interest in the invention. The US Patent & Trademark Office maintains a current listing of all attorneys and agents registered to practice before them at http://des.uspto.gov/OEDCI/ . You can search at this page for someone closeby.

Good luck.

Nancy Delain,

Registered Patent Attorney

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. THIS POSTING DOES NOT CREATE ANY ATTORNEY-CLIENT RELATIONSHIP BETWEEN US. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Answered on 7/05/07, 2:51 am

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