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Since you do not have a duty to disclose prior art to the USPTO, you could approach your competitor and try to negotiate a license for their patent pending technology. However, there are two caveats to this approach.
First, your competitor does have a duty to disclose prior art to the USPTO. If they learn about the prior art in the course of negotiations with them for a license, they would need to disclose that prior art to the USPTO if the patent has not yet issued. The patent could be declared invalid if they later sued an infringer and it came out during litigation that they did not disclose known prior art.
Second, it is much easier to notify the USPTO of this prior art while the patent is pending than after the patent issues. You would only have to pay $180 and would have six months after the application was published to file the prior art with the USPTO (under the new rules of 37 CFR 1.290). The USPTO will only consider written documents, so there would need to be some kind of published document relating to the prior art you found, such as a company brochure showing or describing the feature.
I would be happy to assist you with this matter whether you decide to negotiate with your competitor or submit the prior art to the USPTO.
It is a very rare occurrence that an infringement goes from infringement straight into litigation. There is always a dance that goes with it, usually starting from the side of the infringed party. From there discussions take place, and usually resolution is achieved. If you have a hammer knowing that you can invalidate their patent by showing prior art, then I'd probably just operate under the radar and hope it goes unnoticed by them. In truth, there's probably a good chance that their patent won't actually get registered due to the prior art so it may be a non-issue in the first place.
The easiest way is to fail or never amount to much. Patent litigation, like taxes, comes with success. I typically hope for patent litigation because it means I have reached the point where it is worth litigating.
It may not be possible to eliminate the risk of an infringement claim against your invention. However, with thorough research and informed design, you can minimize the likelihood that your patent infringes on an existing claim. To avoid patent infringement, ensure your innovation will later pass the test for literal infringement and the doctrine of equivalents requirements.
Patent infringement searches unearth specific patent claims that your proposed innovation may infringe upon. The result of this type of research is an assessment of the risk of infringing on an existing patent with your new technology. To avoid patent infringement, it is best to complete a patent infringement search early in the innovation cycle, so that your product can be designed around existing claims. While this process sounds like a patentability search, the two are different because they serve different purposes. An FTO search aims to assess the likelihood of infringement; a patentability search focuses on proving novelty.
Besides if you do have any questions give me a call: https://clarity.fm/joy-brotonath
Related Questions
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Where do l go to sell my patented idea?
First of all, what you have is a provisional patent **application**. For now, the provisional patent application is not publicly available. This can be a big advantage to you. You can use this time to improve your invention and file additional provisional applications. If you don't plan on making/practicing the invention yourself, you should make sure to try to think of everything possible regarding how that invention can be improved. This would (hopefully) come naturally to a practicing inventor. When you file your non-provisional application, your disclosure will be made public ("published") 18 months from the filing of the non-provisional. While your applications are not publicly available, I suggest waiting until you file your non-provisional application(s) to talk to others. Quite often, provisional applications do not have the detail or the scope that the non-provisional will have -- due to the time spent on getting drawings accurate and making sure everything is included in your non-provisional applications. It is best to have a complete application before talking to practicing companies. Sophisticated companies will take advantage of information not disclosed in your provisional application to file their own patent applications. If your applications are not publicly available (or even they are published), you should sign confidentiality agreements (non-disclosure agreements) with anyone you talk to about licensing or buying your invention. Keeping track of who you talked to with confidentiality agreements can be the basis for "notice" of the invention by an infringer -- when they eventually steal your invention. You can sell your idea anytime, but a provisional application is worth a lot less than a non-provisional application which is worth less than an allowed application or issued patent. Provisional applications are generally not as complete as they could be -- and require additional time and finesse to complete the non-provisional application. In terms of appearances, if you are not willing to put in the money to file the non-provisional application, the invention is likely not worth that much money. Companies as well as non-practicing entities may look at provisional applications, but not for long, and will not give you the kind of money that you may get from selling a fully examined patent. Of course, it depends on how good your invention is.AP
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We're developing a web product with a team of 10 developers. How can I protect my source code if anyone leaves the company?
If you're using source control, it's easy to track source and control access — or revoke access — if someone leaves the company. Also, your developers should have signed a contract about the project itself that clearly places the source code under your/the client's/the company's control, and if/when they leave, they release all rights to code created under that contract. You can never be 100% sure, but these small steps will at least ensure a legal high ground should anyone steal code. Good luck!JL
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I have an idea of a hardware product, that has received good feedback until now.Should I fill for a provisional patent or start an indiegogo campaign?
The answer: do both. The first thing you need to know about patents is that the U.S. now has a first-inventor-to-file system after the American Invents Act (AIA) went into effect in 2013. I have to disagree with Dan above: for hardware inventions especially, a patent is an important part of the business plan. The first inventor who "races to the patent office" now is typically the winner. This means if you do not file for a patent on your invention, you can lose the rights to your invention much easier than before the AIA. The next step is to think about how a patent fits into your business plan. A patent application is but a tool in your bag when starting up. A crowdsourcing campaign on a site like Indiegogo can validate the idea. But it also puts the idea out to the public and starts the 1-year clock ticking on when you can get a patent. For hardware startups, however, if you're not thinking about a patent upfront -- you're likely leaving a massive amount of your product's value on the table.JP
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Can i create and sell my invention before filing for a provisional patent and maintain my rights to the invention?
The answer is yes, but it always depends. Let me begin by saying that the more knowhow, etc. involved, the easier it is to sell something without any patent protection. Otherwise, you are trying to sell something without protection and you get no protection until the patent issues, which may take years. The acquirer may just run with it (I would) without licensing knowing there is no cost until your patent issues. Then, when you file, they will see your claims and try to modify their product around your claims. It is slightly vicious in nature. That said, I may not act much different if you file first, unless I can buy your patent or the license costs are very inexpensive. Secondly, many countries have absolute novelty and you will not be able to protect your invention there ever, even if a licensee arises and wants to enter those markets. This too, is a serious limitation for licensing. My conclusion would be that you are underfunded to address your IP and that I can get away with murder. Filing the application is your way of telling people that you are serious. That said, it is not necessary and I have a lot of clients that file later or never file.GF
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If I come up with a coaching methodology / formula, is it protected under Copyright?
(I'm a small biz attorney who helps people with copyright, trademark, and other IP law, and I'm answering per U.S. law.) As soon as you take your idea and put it into a tangible format (write it down, create an infographic, record a video), then that writing/infographic/video is automatically protected by copyright law. You can record the copyright on it too, which makes it easier to protect and get damages from other people taking it. But the formula itself would be probably protected under trade secret law or patent law. Patent law obviously takes a bit more effort, because you have to apply for the patent and get your application examined by the USPTO, which takes years and $$$. Keeping it protected under trade secret law means you have to make an effort to keep it secret (which may not work if you are disclosing it as part of your marketing efforts), such as keeping it confidential and requiring NDAs. As someone else said, the other terms you use might be protected under trademark law. If a member of the public would use those terms to link your products/services with the source of the product/service (aka, your company), then they could be trademark-able. There are some state law protections for trademarks, and you can also file to register the trademark with the USPTO and get more protection. Hope that gets your started!EP
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