Patents and new innovations

[toaster]

I came up with an idea for a cycling related product that is not currently available anywhere so I do a patent search and find that the invention was patented in 1989. Apparently, patents expire in 17 or 20 years so it's close to it's expiration date. However, the field of Patent Law seems so complicated and I would like to start to find a buyer, or someone to produce the item before 2006 or 2009.

My question for anyone who deals in intellectual property or patents for new products is:

Since this invention is not currently marketed, would it be better to seek permission to make and sell the item or wait? What about applying for a new patent with some improvement over the original design that isn't mentioned in the original patent document?

I'm not going to reveal the idea, BTW!

[mtflycaster]

You could:

File a provisional patent on the improvement at modest cost. That gives you a year before having to decide on whether to file a regular patent application and incur significant costs.

Try contacting the existing patent holder to see if you can get permission to build and market a prototype with their design giving the expectation that, if sold, you would give him/her a royalty until the patent expires. I am sure it has a 17 year life, so it would not be for very long. You would presumably also find out if the patent holder has already licensed the patent to somebody else (like a big company that may be more likely to come down on you hard if you infringe).

Or, ignore the existing patent holder, just file your provisional and try to market your design, informing whoever buys your design and builds that they may have to deal with the other patent holder (the "prior art") as well.

You might also have a patent attorney look at the claims of the existing patent and gve you an opinion as to whether youy design even infringes at all.

Good luck.

[mtflycaster]

Oh, and I should add that I am NOT an attorney, and advise that you should consult one before moving ahead and incurring costs.

[zap]

waiting is death.

try to investigate (talk to) current holder(s) further but do not give any indication as to what your plans are. is it an individual, small firm or large corp.? there's a reason why a patent was sought and granted in '89 and why it wasn't produced. you could learn quite a bit by investigating further. someone spent a lot of time and money for something that wasn't marketed. why?

any international patents? these could limit your global reach.

patent infringements can be costly and royalties can kill profit margins and, well, just complicate the deal. Also make sure there aren't other patents for something similiar.

since the patent office is quite liberal these days, you could make mods with clearly stated reasons for them and then apply for the patent. remember, someone else can do the same thing to you.

You need to finalize the patent issue before you can procede any further.

I too am not an attorney-but have been involved in this process from time to time.

[Andreu]

This is tough as right now if you do anything you may infringe the patent... or you can negotiate with a company to give them a split of the profits (royalty) for a given amount of time when they manufacture it. If the idea is good enough and there is opportunities to use it as a platform technology (i.e. there are loads of other ideas you can patent or capitalise on) then this maybe worth doing (but you would have to own virtually everything to do this i.e. patents, plant, buildings etc).

The idea of modifying the invention and patenting is good but usually in my experience the patent is written in such a way to cover all eventualities and it is normally very difficult to find a way around this without infringing. For example if I patented the wheel I wouldn't just write that the wheel was to be made of stone...I would make the context as broad as possible.

It is interesting that the company in question has not commercialised it. There are sometimes other more protective or strategic reasons for this. I have worked in areas where a company as patented a range of ideas to confuse the market because, basically, a patent can be an advert to other companies on areas or technologies they are working on.

I would reread the patent carefully and spot the obvious ways in which you maybe able to do anything. Talk to a patent lawyer or at least someone who can give you some advice free (try your local university - office of technology). Patent reading is a sure-fire way of sending you to sleep by the way so be prepared for a struggle.

There are many potential solutions. For example you could use a competitor to the company (who has patented the idea) and who maybe interested in working with you (and after all how are you going to manufacture the product?) or a range of partners if you are very clever i.e. source one raw material...use another partner to machine parts use another partner to glue bits together etc etc...it can be lucrative but risky doing it this way.

The downside of working with one company is that they usually will end up owning any rights to future modifications and you could lose all rights to future patents and royalties. The downside of working on your own is that you have to do absolutely everything yourself (and I mean everything!). A range of partners is attractive but can be a logistic nightmare as they all have differing needs and all want a slice of the cake.

Check out....http://www.frompatenttoprofit.com/System.htm
http://www.benwiens.com/patents.html

My opinion is that patent law is a very dry subject and sometimes it is better to talk this though with someone who knows what they are talking about rather than risk doing anything...but remember speed is the essence...once you have made your mind up, either way, stick with the plan and don't regret your decision even if you've decided not to go for it!

I am currently working on IP but in a European university context.
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Good luck!
:beer:

[lewislw1]

You could also check the US Patent and Trademark Office website or "Public Pairs" website from the USPTO to see of the maintenance fees for the patent have been paid. These can become expensive, especially toward the later years of a patent. If the patent is not being commercially used at that point, the owner often lets the patent terminate for failure to pay the fees. If they have paid, the fees, then it makes sense to talk to a patent attorney to evaluate (1) infringement; and ten (2) validity of the patent. The earlier advice to file a provisional patent also makes sense - although you can do this yourself (see the USPTO website), this is best done through a patent attorney, although that will increase your costs.

Len

[Andreu]

for a company in the UK and we were doing some IP work with a laywer in New York and they were charging us around $1500 an hour (that was about 5 years ago). Maybe they saw us getting off the LimeysRus boat?
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