I wonder if I’ll ever need to wear a tie again, I thought, as I walked through the exhibit floor. After all, I’m a casual, west coast kind of guy. Seriously, who invented ties anyway . . .
Wait.
I walked back a booth or two for a closer view. “That looks a lot like the product my client’s getting ready to launch. Huh. Better find out what’s going on.”
They’ve Got a Patent (!)
After a little research, we learned that this other company had filed a patent application on the product. Not only that, but a patent had issued the previous day! How’d we not see that coming?
Well, it turned out that the patent had been filed with a “nonpublication” request, which means it wasn’t something that would turn up in a search. You can do that if you file a request confirming that “the invention disclosed in the application has not been and will not be the subject of an application filed in another country.” Regardless, that doesn’t help in this situation. We’ve got a potential problem here in the US.
So now what?
Okay, so your competitor has a new patent. Is there anything you should do? Anything you can do?
The answer is yes. Probably. Here are some ideas. (This assumes you haven’t been sued or threatened yet.)
1. Perform an Infringement Analysis
One thing you should figure out pretty quickly is what your exposure is. Does it appear your product infringes the claims of this new patent? Reviewing a product’s relationship to patent claims is a fairly complex and difficult legal analysis. You should definitely contact your patent attorney, if you haven’t already. Basically, though, you’ll want to know whether or not you have a good noninfringement position.
2. Find a Safe Harbor
Performing a search of the prior art may identify a “safe harbor.” This might be an expired patent that shows a public domain way to make the same type of product. Even if that way arguably would infringe this patent, the fact that the safe harbor reference is prior art means it can’t infringe. You could then consider adopting that safe harbor design. This is more complicated than I’m making it sound here, so as always, involve your attorney in the analysis.
3. Determine Strength and Enforceability
Have your patent attorney do a thorough analysis of the competitor’s patent, in terms of its strength. Are the claims broad? Too broad? Did something get disclaimed during prosecution? Do you know of some important prior art that the examiner didn’t consider? There are many aspects of a patent application that provide clues as to how much of a concern the patent really is. Does the competitor have any more active applications in this space? Continuations? A PCT application? If so, you’ll need to consider how those applications fit into the equation.
4. Consider Whether It Makes Sense to Purchase or License
If you think the patent is a problem for you, just don’t want to deal with it, or see an opportunity to expand your own portfolio, you may want to consider making an offer to purchase it from the other company. Maybe even purchase the other company entirely. Alternatively, you could consider a licensing deal, where you pay royalties, or a cross-licensing agreement where both sides license each other’s IP.
5. Challenge the Patent!
If it’s new, that competitor’s patent is vulnerable to a challenge under the USPTO’s “Post Grant Review” program (PGR). During the first nine months after issue, anyone (including you) can officially challenge the patent at the Patent Office, for any reason related to patentability. After 9 months, it can still be challenged, but the challenge must be based on prior art (i.e., it can’t be based on other things, like “indefiniteness”). This second type of challenge is called an Inter Partes Review (IPR).
In addition to these two challenges, any person can request that the USPTO reexamine a patent at any time, if he or she can show that there’s a question of patentability that is both substantial and new, and that the new question is based on prior art patents or printed publications. This type of challenge is known as an Ex Parte Reexamination, because the process then essentially goes forward without the person who requested it. It’s basically a re-do of the examination process by a USPTO examiner, using the newly submitted documents.
The PGR, IPR, and Ex Parte Reexam processes are all fairly expensive, but they’re used quite often to challenge patents.
Dealing with someone else’s new patent can be nerve wracking. However, as you can see, there’s an action plan available. A successful strategy will take everything into account and determine the best way forward for your company. Stay positive!
As always, talk to your IP attorney or contact us if you’ve got any questions.
Photo © 2018 Dave Bourgeau
Blog Post © 2019 Kolitch Romano LLP
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DISCLAIMER: This article is intended to give the reader an overview of the topic, and does not constitute legal advice as to any particular fact situation. Facts matter, and every situation is different. In addition, laws and their interpretations change over time and the contents of this article may not reflect these changes. You are strongly advised to consult competent legal counsel regarding your particular situation.