Patent It Yourself - PDF Archive

428 | Patent it YOURSELF
If you can’t find any U.S. patents and the product or
process is relatively new, you shouldn’t feel free to copy it
because it may be the subject of a pending patent application.
It’s not possible to search pending U.S. patent applications,
since they’re kept secret unless they are published 18 months
after filing. You can search published U.S. applications
and you can often find some pending U.S. applications by
searching for published corresponding foreign applications,
which are all published 18 months after filing. (To search
published foreign applications, use one of the database
searching services listed in Chapter 6, Section H.) Also, if the
probable owner of a patent application you want to research
has been selling the product under a trademark, such as “the
Zorch widget,” investigate the item in the PTO (trademark
applications are not kept secret) to obtain the date of first use
of the trademark in the United States. It’s likely that the filing
date of any patent application is just before the date of first
trademark use.
If you find an applicable in-force patent or patent
application, and you don’t think you can break it, avoid it,
or get a license at a reasonable royalty, consider designing
around the patent or using older (nonpatented) technology.
3. What to Do If an In-Force Patent Is Applicable
If there is an in-force patent applicable, and you still wish to
manufacture the product, you have several alternatives:
• Although I don’t advise it, some companies manufacture
or use the product or process and hope that the
patentee won’t catch them. When they do this, they
usually follow a good accounting practice, by keeping
reasonable royalty reserves (see Chapter 16 for what is
a reasonable royalty) in case they’re ever caught. Also,
they usually analyze the patent, or have a patent attorney
do so, to see if there are any good defenses to show
that they were not a “willful” infringer, since willful
infringers may be subject to triple damages or attorney
fees in a lawsuit. They must always be aware that the
patent owner may discover the infringement, and
sue them, and get an injunction prohibiting further
manufacturing. Although the idea of manufacturing
without a license may seem deceitful, risky, and
inadvisable, it is done frequently in the U.S. (but not
commonly in Japan). The infringer simply takes the
full-speed-ahead-and-damn-the-torpedoes attitude
and hopes to be able to negotiate a favorable settlement
or break the patent if caught.
• You can ask the patent owner for a license to manufacture
under the in-force patent. However, here
you take the risk, if you aren’t familiar with the
patent owner’s practices, of being refused a license.
Moreover, you’ll have shown your hand, so that if you
do manufacture, the patent owner will be looking out
for you and will certainly sue or accuse you of willful
infringement in short order.
• You can make an extended validity search to try to
“break” the patent. You should use a professional,
experienced searcher to do this and should expect to
spend several thousand dollars in order to make the
widest and most complete search possible. Also, you
should order a copy of the PTO’s file of the patent
(see Fee Schedule for cost) to see if there are any
weaknesses or flaws in the patent that are not apparent
from the printed patent itself. Again, the services of
an experienced attorney should be employed here,
because breaking patents requires a highly skilled
practitioner. If the attorney feels that the patent can
be invalidated or is not infringed, you can have them
write a “green-light letter” to you, explaining in detail
why it would not be likely that you would be liable for
infringing the patent. This letter can show you are not
a willful infringer and thus avoid treble damages or
attorney fees if you are sued.
• If you find highly relevant prior art, you can bring it to
the attention of the patent owner and ask it to disclaim
or dedicate the patent to the public. Or, you can send
the art to the PTO to be put in the file of the patent (35
USC 301) or apply to have the patent reexamined (35
USC 302; see Section N, below).
Defending Against Method (Process) Claims
Effective November 1999, if you are commercially using a
method or process that has been patented by someone
else and your use preceded the patent’s filing date by
more than one year, you have an absolute defense against
an infringement charge. However, this defense is personal
to you and will generally not invalidate the patent. (35
USC 273.)
• Your last alternative is to review the claims of the patent
and then try to design around them. Often you will
find that the claims of a patent, upon analysis, have
one or more limitations that can be eliminated in your
product or process so that you can make the patented
invention even cheaper than the patentee. Alternatively,
you can design around one of the elements of the patent,
make an improved device, and get your own patent on