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Dealing with a conflicting patent - Q & A

Jay wants to know what he should do now, as he just found out the product he created has already been patented.

Rich Sloan:  We have Jay, out of San Diego, California on the show.  Welcome.

Jay:  Hey, Jeff and Rich.  How you guys?

Jeff Sloan:  Hi, Jay.

Jay:  I want to say thanks for all the work that you guys are doing.  I listen to you guys' show via podcast for over a year and I tell everybody about your website and your podcasts.

Rich Sloan:  God, you must be totally messed up by now.  You been listening for a year.

Jay:  Yeah.  A lot of information but it's so good.

Rich Sloan:  Okay.  Good.

Jay:  And it's funny, I listened to your interview with Pam and worked on my ideas for part-time and finally in February, made the leap, got out of corporate world and jumped on my own.

Rich Sloan:  Oh, congratulations.

Jay:  Thank you.  I appreciate that.

Rich Sloan:  See, now, Jeff, that's that strategy that you were just talking about.

Jeff Sloan:  Exactly.

Rich Sloan:  He kept the day job and --

Jeff Sloan:  How's it working so far, Jay?

Jay:  Oh, well, you know, it's working really well.  You know, I got a lot done working on it part-time but it was really for me for, you know, kind of like for my spirits and to make the commitment, I decided just to work on it full-time and it's been very beneficial.  I got a lot of work done.

Jeff Sloan:  Good for you.  We'd love to help you in any way that we can.

Jay:  Okay.  Yeah.  My question is, I've actually been working on an idea, a product idea.  I've done the research, the marketplace, created a business plan, got a prototype and in a matter of about a week, I learned that somebody had my exact product patented and my --

Rich Sloan:  Now, hold it.  Didn't you do a patent search way back at the beginning?

Jay:  Well, I did but, obviously I did not do one well enough.

Rich Sloan:  Okay.

Jeff Sloan:  Wait, let me ask another follow up question to that.  How did you -- you said you found out, how did you find out?

Jay:  The very beginning of my product development stage, I did a patent search and, you know, I didn't know anything, I was just so green.  And then after developing my product, going to a lot of intellectual property forums and listening to you guys and just talking to a lot of different people, I did a search again and, unfortunately, found my exact product.

Jeff Sloan:  All right.  Now, wait a second, Jay.  So no intellectual property attorney, no patent attorney has reviewed the claims section to tell you that you are, indeed infringing, is that right?

Jay:  Correct.

Jeff Sloan:  You know, you might want to -- sometimes, people think they're infringing, but they may not be.  There's several sections to a patent.  One is a descriptive section, I believe they call it the 112 Section where they do the written description of the invention.  The others is the drawing section, where they provide drawings and so on of the idea.  The third is the Claims Section which is, frankly, the most important and that claims how the invention is to be used and in what context.  And sometimes that's a lot more art than science.  The other parts are clearly, you know, factual and scientific and engineering-based and so on.  But the Claims Section is really an art of text in the way that you craft the use of the invention, the language for the use of the invention.  And the patent coverage is only limited to what the claims say.  There's independent claims and dependent claims, but many times a skilled patent attorney is really required to read those claims in order to determine whether or not you might be infringing.

Rich Sloan:  It might be worth checking that out.

Jay:  Yeah.  I think it's a great idea.  Based on my research and reading the patent, the claims description and everything, and forwarding that to several friends, more or less it's the exact product.

Jeff Sloan:  Okay.  All right. If you feel comfortable that it is the exact product.  So what are you going to do now?

Jay:  Well, here's the thing, the plot thickens.  I also learned in that week that the patentee let the patent expire.  They apparently didn't realize that you had to, you know, renew the patent every three years, seven years, and I think 11 years.  So they let the patent expire.

Jeff Sloan:  All right.  Well that means they can't prosecute you if you -- you can't infringe essentially on the patent protection, because it's lapsed.  It's void.

Jay:  Right.  Exactly.

Jeff Sloan:  So you have the right to produce this, you just don't have the right to get a patent of your own to block others from making, using or selling it.

Rich Sloan:  In case.

Jay:  Correct.

Rich Sloan:  But, that's only true if you go through the process Jeff just recommended, which is insuring that your claims would infringe on their claims.

Jay:  Exactly.

Rich Sloan:  So, in other words, you may be able to get patent coverage but you just can't patent what they have patented and what has now lapsed.

Jay:  Right.  Well, my question is before I learned that the patent was expired, I wanted to acquire the patent, So I wanted to ask you guys, what do you feel is the best strategy to acquire the patent or acquire the rights?  Should I call the inventor or the lawyers that created the patent or should I hire an attorney to do that?  What do you guys recommend?

Jeff Sloan:  In most cases, there are no more rights.  That person has allowed the patent protection to lapse.  So I'm not sure there may be any rights there.  You should work with a patent attorney to have an expert review what the current status of that application or that patent is and determine whether or not it can be of value to you in any way, shape or form.  If indeed it has lapsed, it is probably, likely of no value to you.

Jay:  Right.  What I'm thinking is, because I have a lot of products in the queue, and what I'm thinking is I may run into this situation again where somebody has already gotten a patent on it.

Jeff Sloan:  Yeah.  Go ahead.

Jay:  I was going to say, if that's the case, like, and I want that patent from that person, you know, would I go and try and buy that or license it, how should I do that?  Should I call that inventor of the patentee or should I have --

Jeff Sloan:  Yes.

Rich Sloan:  I'd definitely work with the inventor, not the attorneys. 

Jeff Sloan:  Inventor.  Yeah, exactly.

Rich Sloan:  Because as soon as you waive something like that in front of attorneys they see money.

Jeff Sloan:  Exactly.

Jay:  Okay.

Jeff Sloan:  Just go straight to the inventor.  The contact information is listed on the front page of the patent. Go there, find the information on the person, make the direct contact and attempt to either purchase or license the invention rights from that inventor.  And in many cases you can do just that.