One of our patents is stuck in an Art Group that has a pretty bad backlog. (# 3662) It was filed Jan 2009 and we'll be lucky to have a first office action by 2012. The App will publish ~ July 2010.
Q: Can China (or ?) flood the market before we get our patent, and...
Q: What, if anything, can we do about it?
We won't likely have the actual patent grant until sometime in mid-2012, best case, unless the USPTO throws some additional resource on their backlogs....
If it matters, we probably won't file a PCT due to the expense involved. If we can manage to sell the application rights (pre-grant), which is our intention, the assignee will most definitely want PCT or foreign filings, but the clock is fast-ticking down on that option.
Any patent will have little to no effect on chinese infringment. They will copy, sell, and when caught (finally) after a lengthy legal battle, will disappear into the woodwork.
Thanks! But maybe I should re-phrase my question...?
A US Patent grants certain OFFENSIVE rights. Which means, once granted, imports can be stopped at the border (assuming the authorites have a modicum of intelligence -- which may be an invalid assumption in any case!).
I'm asking about the period between when the patent application is published online, and when we actually are awarded the patent. (some 2 years later, at the current rate) Presumably, we won't have any capability to stop imports until those offensive rights (i.e. the US Patent) are granted. (?)
Also, it is my understanding that even if someone infringes, they are not liable for money damages for infringement which occured PRIOR to you noticing them that they are infringing.
Normally, I wouldn't worry about this. But this is about a $30M deal, and the attorneys are not exactly helpful... :( I was hoping someone here had the "real-world" scoop on this.
Because we have no intention to manufacture or sell, (or file internationally) all we're selling is the rights to the domestic IP Application. (Though we may yet file the PCT. Still to be determined..) Therefore, we "have" to go the patent route.
Otherwise, I think the best offensive rights are to be "first-to- market", and "best" in price/performance. That way, you cause potential new entrants to question whether they can get enough market share to be worthwhile.
Anybody ever run into this "problem". Domestically, it's a level playing field (I guess). But the USPTO backlog is so bad in our Art Group, it makes me wonder how anything gets to market that new and novel.
What? You just roll the dice and take your chances? No wonder America is screwed.
On Fri, 30 Oct 2009 09:38:25 -0700, mpm wrote: [snip]
If your IP is a software method you will want to follow the Bilski case that will be heard by the Supreme Court. They may rule that software only patents are invalid. Google Bilski and read some of the amicus briefs. You do know that there is a patent on how to use a play ground swing? True. Also the patent on using a laser pointer to play with your cats. The US patent situation is out of control.
What is the technological lifetime of your patent idea? You are going to be 4 years getting the patent. What market will be available for your product 4 years from now or will product technology have moved on to the next great thing?
There are times where the patent route is the way to go. Some long lived product, say a transistor structure or something else that might be on the market for years.
For a $30M deal be first to market, make money and use all the money you will spend patent filing, that will not block China, for R&D on your next product.
The courts screwed the pooch with the 1998 State Street patent award. It is now almost impossible to completely guarantee that any new, complex, software system does not infringe on multiple software or business patents. You have to have a full patent group, spending many man years just researching possible infringement areas. You can also spend 10s if not 100s of man years looking for the prior art that would knock these bogus patents off.
Also you will have to take steps to enforce your patent. That means lawyers and some group spending their time researching other products in the market looking for possible infringement. It can quickly reach money critical mass and become a big sucking black hole.
Hopefully the Supreme Court will put some sanity back in the process.
AIUI, you have no rights unless and until a patent issues.
IFF a patent issues, you have offensive rights back to the date of publication. I.e., you can sue for royalties for infringing devices from that date forward.[*]
-- HTH, James Arthur
~~~~~~~~~~~~~~ [*] 35 USC 154 (d)(1)
In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b) [...] (A) (i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an inven- tion into the United States; or [...]
Oh! Well, we could probably live with Date of Publication. I understood money damages were limited to the date of notice to the infringer, which you would then have to litigate, etc...
I mean, not that we care all that much about that aspect. ..provided we have the rights assigned by then anyway. (fingers- crossed)! I think we're more worried about China flooding if it takes longer to close the deal.
This is not a software patent. Although, there is a microcontroller in the hardware. The Patent App does show a high-level flowchart, but our Independent Claims are all about hardware. We do have a Method claim tacked onto the end, as well.
Offensive rights of patents are *way* overrated. Large companies spend money on patents for DEFENSIVE reasons. Small companies don't have enough money to use them offensively and rarely have a need to use them defensively.
Invalid assumption. You haven't enough time or money.
That's the normal time.
Nope. Until the patent is granted you have no rights (and that's all you have "rights", after).
Not true, though it doesn't matter. If they show you the middle finger, what are you going to do?
Pay them $100M and they'll be 3x as helpful.
You've been hearing the "real-world scoop" here. You can't afford it, particularly for a paltry $30M.
No, you really don't and if you "had to" you'd better just forget the whole thing. You *can* license a product without patents.
We could buy all the opium from Afghanistan ( to keep it from becoming street drugs ) and *force* the Chinese to take it in return for WalMarts full of cheap tchotckies.
Concerning infringers, especially WRT IT, litigation seems to be the only way to "stop" the undesirable action - and then only *after* the court order, and sometimes not even then..
This may (big may) work, if the item is wholely covered by the patent, and you can show how it can be identified easily as infringing. If the patented technology is embedded it gets much more difficult. Success with this technique is questionable (as you say) but bottom line, they will crush you long before your patent has been issued!
(see above!)
Not a chance.
The odds of collecting any damages from a Chinese company are negligable. It is a complex situation (I can cite case law, if you would like, but basically it is very difficult).
They are not helpful because they know they can't resolve your problem!
Good luck. Selling patents that have not been proven is difficult to impossible. Been there, done that, I'm still poor.
True. Publication, here, counts as notification. I think. You could always send intermediate patent-pending nasty-grams to be sure, just in case.
Publication is supposed to a) give others notice that something is about to be patented and b) give them a chance to object beforehand. It's definitely _not_ intended to give infringers a head-start; hence the ability to demand royalties back to the date of publication.
Not really. At least not in this case. Our Buyer has not balked at the price. But they move glacially slow, and there's litigation going on on the background. Not with us, but it still has some bearing on getting the deal done more quickly. Also, there's also a regulatory issue -- but we'll close the gap on that in the coming weeks.
I thought this whole publication thing was more about foreign patent filings than anything else. And, maybe a weak attempt to suppress multiple later filings by wanna- be inventors. (?)
If something is filed here, and the US waits 4 or more years to patent it... within that time, it's reasonable that someone in some foreign land may also come up with the idea.
Then we're back to questions like: Who really invented the television, or the telephone, or fill-in-the-blank.
I don't know what you think a patent has to do with your buyer or the price he has agreed to, unless he's foolish enough to think a patent will protect him. ...or maybe he wants to frame it or something.
They? You mean the USPTO? They always have.
I once went through a similar project. A company came to us with a deal we couldn't refuse. Free money, in fact. By the time the lawyers got done dicking with it the market went away.
There are always regulatory issues. A patent doesn't help here either. ;-)
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