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new products and patent application

Postby sandrawhit » Tue Sep 14, 2010 4:39 pm

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Hi! I have questions about how products that have recently come on the market might affect my pending patent application. I have a utility patent application and I just found out about a product that reads on one or 2 of my claims. The product is not exactly like mine but it reads on my broadest claims:

Assuming there is no patent pending for that product right now:
1. What is the company likely to do if they find out about my patent?
2. Is there anything to stop them from filing their own competing patent? Is there a time limit for when they can do this?
3. If they filed for a patent, would it become an investigation over who first thought of the idea?
4. Who would get rights to the broadest claims of these 2 conflicting patent applications? Or would both patents have to be written so they are narrower and do not compete with each other?
5. If they were proven first to invent, would that make my patent application useless if they can claim the broader claim?

thanks so much for your help!

Re: new products and patent application

Postby sandrawhit » Tue Sep 14, 2010 4:42 pm

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I thought of one more question:
6. Could the company that made the product, argue that they are the first to invent even if they don't or can't file a patent?

Re: new products and patent application

Postby Scrupulous » Tue Sep 14, 2010 6:40 pm

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sandrawhit wrote:Hi! I have questions about how products that have recently come on the market might affect my pending patent application. I have a utility patent application and I just found out about a product that reads on one or 2 of my claims. The product is not exactly like mine but it reads on my broadest claims:

Assuming there is no patent pending for that product right now:
1. What is the company likely to do if they find out about my patent?
2. Is there anything to stop them from filing their own competing patent? Is there a time limit for when they can do this?
3. If they filed for a patent, would it become an investigation over who first thought of the idea?
4. Who would get rights to the broadest claims of these 2 conflicting patent applications? Or would both patents have to be written so they are narrower and do not compete with each other?
5. If they were proven first to invent, would that make my patent application useless if they can claim the broader claim?

thanks so much for your help!


1. My guess is that they would never become aware of it, unless you brought it to their attention. I think it'd be tough to predict, but others on this forum probably have some good feedback on that.

2. Nope...and there is no specific time limit.

3. Quite possibly, but it's not guaranteed unless the examiner is deliberately informed of the situation.

4. The party with priority (earliest inventorship in the US) is entitled to the broadest claims they can get, all else aside.

5. Maybe for your original goal. But you could always use your ap as the basis for protection in other countries. Also, if your illustrations were of sufficient quality, you could continue your ap as a design patent. There may be other things you could do, as well.

I thought of one more question:
6. Could the company that made the product, argue that they are the first to invent even if they don't or can't file a patent?
6. Yes. But that could simply be a matter of amending your claims so that they're not anticipated by their product. BTW, it would be pricey for them to challenge your case.

Re: new products and patent application

Postby sandrawhit » Wed Sep 15, 2010 9:38 am

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Scrupulous wrote:1. My guess is that they would never become aware of it, unless you brought it to their attention. I think it'd be tough to predict, but others on this forum probably have some good feedback on that.

2. Nope...and there is no specific time limit.


Thank you again! I really appreciate it so much. I have some followup questions:

Regarding Question # 1: This relates to my question in a previous post about duty to disclose. If I disclose this new product to the patent office as information relating to my application, would the patent office call the company and inform them that my patent application competes with their product? Or does the patent office keep it confidential and just use the information in relation to evaluating my application? I am leaning towards to disclosing the information to the patent office because I don't want the company to be able to argue in the future that I didn't do my duty to disclose and possibly invalidate my patent.

Regarding question #2: I was thinking about it last night and wouldn't the time limit for them to file a patent be 1 year after their product became public knowledge or came on the market?

I am feeling a bit depressed about this because I do not have the finances to get into an argument with a company about my patent. I'm not sure who would be proven first to invent. I guess there really is nothing I can do about it except to decide whether or not to disclose this information to the Patent office and hope for the best.

Also I was hoping that this company could be a potential licensee for my idea. Now I am thinking it would not be wise to approach them with this idea until they could no longer file a patent for their product.

Or possibly I could approach them in a very non-threatening way without telling them the broad scope of my patent in the hopes that they would license the more specific part of my idea. Would that be stupid?

Would it be possible to structure a deal so that I agree not to sue them for infringement on the broader claims and in return they will not challenge my claims with the Patent office?

Re: new products and patent application

Postby Scrupulous » Wed Sep 15, 2010 8:23 pm

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sandrawhit wrote:Regarding Question # 1: This relates to my question in a previous post about duty to disclose. If I disclose this new product to the patent office as information relating to my application, would the patent office call the company and inform them that my patent application competes with their product? Or does the patent office keep it confidential and just use the information in relation to evaluating my application? I am leaning towards to disclosing the information to the patent office because I don't want the company to be able to argue in the future that I didn't do my duty to disclose and possibly invalidate my patent.

Yes, that's it exactly. And no, the PTO will not notify them.

sandrawhit wrote:Regarding question #2: I was thinking about it last night and wouldn't the time limit for them to file a patent be 1 year after their product became public knowledge or came on the market?

Yes, in your situation, it would be a year from the time they or you publicized it, whichever came first. In general though, say it was never pubbed by either of you, it goes to whoever conceived it first, was diligent in reducing it to practice from then on, and is willing to swear to that. (There's more info on RTP in these forums, if you look for it.)

sandrawhit wrote:I am feeling a bit depressed about this because I do not have the finances to get into an argument with a company about my patent. I'm not sure who would be proven first to invent. I guess there really is nothing I can do about it except to decide whether or not to disclose this information to the Patent office and hope for the best.

Also I was hoping that this company could be a potential licensee for my idea. Now I am thinking it would not be wise to approach them with this idea until they could no longer file a patent for their product.

Or possibly I could approach them in a very non-threatening way without telling them the broad scope of my patent in the hopes that they would license the more specific part of my idea. Would that be stupid?

Would it be possible to structure a deal so that I agree not to sue them for infringement on the broader claims and in return they will not challenge my claims with the Patent office?

There's probably no need to worry about it now. It costs nothing to submit an IDS on your case, and it might save a whole lot more trouble down the road, as you say.

You are making some very astute considerations and observations. There may be others here eager to comment on them...