A competitor has a patent pending on my technology

弁理士

Hi,

This issue really needs to be discussed with an attorney at length for specific legal advice. It will be a complicated question to answer with several possible threads for you to pursue (in conjunction or individually). First, please note that the US is first to file now, so I'm assuming they filed first and have priority.

In general, one could approach this in three ways: try to get a license from them if they get a patent (perhaps cross license agreements), attack them now from obtaining a patent (hire an attorney to do third party submissions if possible or post grant procedures), or work around them (and/or file in the "area" with patentable differences).

Depending on the facts, you may have a defense of prior commercial use, so they can't prevent you from doing what you've been doing even if they get a patent. That would need exploration. It's a very fact specific inquiry.

Also, please note that willful infringe is treble damages, so that needs exploration.

In short, hire an attorney to go over the options you may have depending on the specific facts of your situation.

Hope this helps!
Mary

IPコンサルタント

As already communicated by Mary, if patent is already filed and pending than your application will most likely refuse but I have a different view than Mary before even going for any of these option you need to go Validity/Invalidity and even before licensing technology, you should conduct a Validity Search to see whether the licensor has a legitimate claim to the patent. Similarly, a Validity Search can confirm your patent claims and potentially increase or decrease the fees charge for licensing technology.

Also I like to know one thing before filing patent why you didn't did prior art search or novelty report. Experienced attorney or lawyer in IP field conduct this search, just to save few dollars not you have increased you litigation cost. If you have seen a patent attorney before, your situation would have been different. As per your information please note that US is first to file now, as Mary already communicate as they filed first and have priority.

But even before going for license and other option, I recommend you to do
1. First and foremost conduct a validity/invalidity search which give you clear picture whether you are infringing their patent or not.
2. If yes than please seek permission from them for license/Assignment agreements but before going for licensing conduct Infringement analysis report search as mentioned before to check novelty in their patent technology.
3. If you can proved prior commercial use hire an attorney to raise objection now or you can raise objection on publication of such patent by patent office but that would be too late, you have to prove your case and for that you need attorney.

In your case validity/invalidity search is very important without this you cannot continue and take necessary steps, it might be the case that your both patent is infringing someone else's patent, first and foremost get your status clear. Let us know If you like to go for same, we can help.

弁理士

There are a lot of facts missing here for a realistic solution to be provided to your problem. Firstly, you say that you have been working on a tech solution for six months, but you did not mention when the competitor filed his patent application, and as has been noted, the US is now a first-to-file country, so if he obtains a patent, he will have the patent rights to the technology. Under the AIA, Section 102, one can obtain a patent unless the subject matter has been in public use or on sale before the competitor filed his patent application - so the question is, did you publicly use your solution or was it on sale before the filing of the patent application by your competitor?
Secondly, what you should do, and basically all you can do, at this point in time, is to monitor the patent application because it is not yet a patent - therefore there are no specific claims that define what is patented - patent application claims are basically meaningless - the competitor, as of now, has no patent protection because the patent hasn't issued as yet, and when it does issue, the claims may be significantly different from the application claims. So monitoring the application, following the prosecution of the application within the patent office, would be the best you can do at this point, keeping in mind or being aware of what is being claimed and possibly anticipating what the final, issued claims will really comprise - then you would have to decide if you do infringe the claims, can you design around the patent claims, whatever. This should definitely be discussed with a patent professional.