Karen, this topic was just discussed in the “strollers and….” forum.

Thank you Julie I will go check it out.

Karen,

Under 35 USC section 287, a patent owner is required to mark goods embodying the invention with the patent number. The owner’s failure to mark the product runs the risk that the patent owner will not be able to collect damages from infringers during the time that the product was distributed without patent markings. (This obligation to mark does not apply to a patent that has only method claims.)

A proper patent marking with the words “U.S. Patent” followed by the patent number. Many manufacturers choose to provide a more detailed patent marking, such as “May be covered under one or more of the following U.S. patents…”.

http://www.vernmaine.com/publications/patent-ar...

http://www.law.com/jsp/cc/PubArticleCC.jsp?id=1...

http://www.designnews.com/article/7662-Wrong_pa...

Thanks Gizmo. Do you know if you can abbreviate, i.e. U.S. Patent # 745 instead of full number? I’ve seen this done…

Karen. I would say the entire patent number needs to be on the product. If it’s only a partial it’s like not having any markings at all. Im sure if you call the USPTO help line they will have the answer.

Karen,

Once the patent is awarded the entire patent number must go on the product packaging in a readable format. It does not have to go on the product itself, but in consumer goods it must be displayed on the packaging.

In addition to the patent number – country of origin must be displayed as well, made in China (or just China) USA… Most people think the “Made in the USA” thing is all about pride; it’s actually required by law.

Just a side note, if you have an application on file (even a PPA) you can use the term “Patent Pending” or “US Patent Pending” if you choose, but you are not required to.

thanks perfect exacty what I did! Thank you.

Just to clarify – once a patent is awarded it should go on the product packaging in a readable/noticeable format. It does not need to. In order to collect damages, you must be able to show that the infringing party was notified or should have been aware of their infringement. The best way to accomplish this is generally a cease and desist letter. Including the patent # on your packaging, however, helps this cause almost effortlessly, and provides evidence that you are taking steps to provide constructive notice of your intent to enforce your patent – it goes something like that.

You should always include the patent number on your packaging. I am just trying to say that you shouldn’t get paranoid and assume you are screwed in a situation where you are not able to do so for whatever reason…

Thank you.

I have a new issue that I’m not sure what to do about. My original patent was done through patent attorney A (which I wasn’t fond of for good reasons but he did get the patent). I know have patent attorney B advising me through my license deal and product development.

Here is the scenerio, I am considering having my new attorney try to go back to the examiner and broaden my claims. But the attorney warns me there is always a chance of the examiner invalidating my original patent (a risk they need to warn me about).

Since I am about to go to market in 6 months or so with a product marked with my current patent, what is everyone’s thoughts… Do I try to strengthen the patent and broaden claims or just let it go and go to market with this product? I only have until Nov. of this year to go back if I wanted… Anyone ever try this? Did you have luck broadening claims? Cautionary tales for me? Thanks hard decision….

Ive never heard of anyone being able to go back and broaden claims on an issued patent …..Maybe Im gonna learn somrthing on this subject….

Hi Karen,

I’m having my patent broadend as we speak, my lawers said I had a very good chance of those claims beinng granted. It is now in the hands of the examiner but no word yet if the claims have been granted or not and it’s been a year+. Everyone has two yrs to do this starting from the date the patent was issued beyond that 2yr period you can no longer make changes to it. I was not told doing so would invalidate my patent though, more so it could be rejected thats all and if excepted they would be added to my existing claims. I took my lawers feelings and went with it because it would strengthen my patent and hopefully I won’t be out 6k.

Bill…aren’t you actually supposed to for best results imprint the patent # ON THE PRODUCT ITSELF….and if you can’t then you put just on the packaging.

This all matters to the infringement case in court, there is no single authority, just a consensus of patent attorney’s recommendations….as a result of infringement past cases. New cases can change general thoughts and practices like the Supreme Court decision with Sate Bank recently on a major methods patent now possibly changing all methods patents in every way.

It is not necessary to showcase the patent # or patent pending but you cannot sue for back damages if you do not and you can sue for back damages when your patent issues if you label patent pending but not triple damages. You can sue back to when you were published in the USPTO’s Gazzette. For this reason an inventor may choose for early publication.

Also, I have heard…and nobody knows what can happen for sure in court, you can lose your patent for not displaying your patent #’s on packaging or product…or can lead to losing your patent as a major cause.

People don’t know, you MUST take certain steps to protect and enforce your patent or YOU LOSE IT…in court…because you allowed “the public domain to have it”

In other words too…if you allow a bunch of infringers to make your product…guess what…you are letting the public use your idea/invention and could very well lose your rights to the patent in court…right Bill?

“Bill…aren’t you actually supposed to for best results imprint the patent # ON THE PRODUCT ITSELF….and if you can’t then you put just on the packaging.”

That is probably correct. It makes sense.

“Also, I have heard…and nobody knows what can happen for sure in court, you can lose your patent for not displaying your patent #’s on packaging or product…or can lead to losing your patent as a major cause.

People don’t know, you MUST take certain steps to protect and enforce your patent or YOU LOSE IT…in court…because you allowed “the public domain to have it”

In other words too…if you allow a bunch of infringers to make your product…guess what…you are letting the public use your idea/invention and could very well lose your rights to the patent in court…right Bill?"

Yeah…

It goes something to the extent of, if you are seen as purposely trying to hide the fact that a product is patented, and then creep up on infringers, or what not, it can be seen as inequitable conduct (I think that phrase applies). Failing to include a patent number on your product and/or its packaging where it would be relatively easy to do so could help to support such a finding. However, it shouldn’t, by itself, support such a ruling, and if you have a good reason as to why you were not easily able to include the patent number on the product and/or its packaging, it shouldn’t matter.

While we are on this subject. I may even prefer patent pending because nobody knows your final claims. Are they going to make thousands of knockoffs and spend lots of money on an expensive launch when you any day now can flash your freshly granted patent at them and make them stop infringing.

Patent pending can be more intimidating than a granted patent because your claims are not final until the patent issues. Let’s say I want to get around your patent real bad. I’m a big company. I put my corporate lawyers on your patent all day to find a way around…..or decide to do a REAL patent search….one that costs $5000 just for a search to prove your patent invalid.

Here’s what you can do that I like for more protection. File another patent for your idea. On something else, get picky, make a slight change…whatever. This way you can say U.S. Patent 1,678,435 other patents pending. Nobody knows your final claims because you have another patent pending….even if you think it probably will never issue.

Ron I think you’re absolutely right. I ran out of time and to do that and simply went with U.S Pat. # xxxx, but after all I’ve learned I 100% agree with your thinking! That’s is my concern, the big guys working around it, because my patent is a bit narrow…. but maybe when we get to the packaging phase I could add additional pending—now I just need to think about what claims/changes to make..

Tim so glad to hear you are going through this right now (the patent broadening), you have to keep me posted as it progresses! I get the first sample of my product this month from China so I figured I’d wait to see how it functions first before deciding to move forward (in case I do want to add modified language etc.) In my next life I am becoming a patent attorney, these hourly rates make me doubt at least think real hard before all the things I know I should do (getting an additional patent on file, broadening, etc. etc.)

Tim/Ron do you know…if you are going back to the examiner to try and broaden claims would that allow you to say you have a patent and a patent pending? Or is that just wishful thinking on my part… If they did grant you the broader patent does your same patent number apply with claims simply revised or would they issues a completely new patent number?

Hey Ron by the way nice story in the past issue, good job!
PS My back hurts just a little more every time I look at your thumbnail image ;)

Question: For someone to be infringing on your patent must they be infringing on ALL your claims (at the same time) or if they just copy one of your claims does that clarify as an infringment? I’m thinking not, as each indenpendent claim might not be unique but the sum total makes it novel and unique, any insight here is appreciated.

Hi Karen,

I’m not positive but I believe that you keep the same patent # because you are actually amending it and not thinking of a whole new idea from it. so my understanding is I’m adding more claims to my existing patent. I will be speaking with my lawyers this coming week and I’ll find out for sure and will let you know what they say. I’m not sure about the patent pending status though, sorry.

Hi Tim,

Any word form your attorney, how are the additional claims coming…anything I should be aware of before I think of doing this (besides the dollars ;)

Do you know if adding additional claims to your approved patent will make it another patent #, so you’ll have two numbers or original reissued? If your new claims are approved, do you get a new issue date? So for example if your first patent was issued in 2009 but new claims are issued in 2011, do you then have 20 years from 2011 or 2009 for your patent rights?

Ron K: In a previous post you said: “Here’s what you can do that I like for more protection. File another patent for your idea. On something else, get picky, make a slight change…whatever. This way you can say U.S. Patent 1,678,435 other patents pending. Nobody knows your final claims because you have another patent pending….even if you think it probably will never issue.”

My question however is, my patent issued in 2008 and since everyone has two yrs to broaden their claims from their issue date, could I even get another patent to say patent pending???…or if I tried to get picky and make a change like you suggested would they say that must apply to my currently issued patent?

How different would a change or addition need to be to qualify for a new patent rather than the examiner addending the original? Obviously they will see mine when reviewing the new art…

Boy I wish EN would host monthly webinars for us all to chat and ask questions…

Karen, earlier today the editor of Inventor’s Digest was proposing that very idea…an online patent symposium. It was earlier today on an “official” thread.

Hi Karen,

I did speak with my attorny’s but it was about paying the maintenance fee on the patent and I forgot to ask about the extra claimss sorry. When I do find out anything new I will be sure to post it and let you/all know.
I’m prety sure that broadening the scope of an existing patent gives it more claims and there for more strength against infringement but I don’t think you get issued another patent #. If anybody knows for sure please post it and that is also a great question about the length of time on the patent because if it does thats a plus. Again if anybody has an answere to that question please post it. Thanks

Karen…I forget why my patent agent does not like CIPs (Continuation in part) to add to a patent…he likes to see a new patent filed. I think this is because with a CIP you do not get added years protection.

Think of this situation more as business. I am talking about filing another patent not a CIP previously. You can send in anything on that application and then say on your package your patent # (the one issued already) and other patents pending. For the few thousand dollars spent on the patent application it looks strong on the pckaging and nobody ever knows your final claims to figure a way around you….so will they invest to try and knock you off when your other patent can issue and they have to get out of the market?

Doing this is actually more of a marketing strategy and one I like. I learned the importance of this tactic 15 years ago reading the book by Ron Popeil (The first infomercial superstar…the original)

Ron Komorowski
Inventor of Handi-Straps
www.handi-straps.com

Thanks Ron, I’ll get the book too and read through. Yes trying to learn as much as possible before hitting the phone with the attorney and dollars start piling up.

I just didn’t know from the USPTO’s standpoint if they would LET you get a new patent or if you were still under the 2 year mark if they would force a CIP on you…

So if I made a shoehorn granted under patent 123, and 6 months later wanted to have all the claims in that shoehorn plus an additional claim, if they would allow me to file a new patent, or if they would say oh you want another claim you must get a CIP (since your under 2 years) and can not get a new patent number issued. Didn’t know if there were rules in regards.

Kevin cool to hear about the symposium, I love that idea and would love the chance to meet all of you, virtuallly or otherwise. So nice to speak shop with so many other passionate folks.

Tim thanks for the update, I too will keep you posted, haven’t reached out to my attorney becasue I’m still having nightmares about the cost of him helping me seal a licensing deal. And I even read the Nolo ‘How to make the best licensing deals and redlined the entire contract myself’ but still cost 4k in the end, ugh…my next life I’m coming back as a patent attorney or making lots of friends ;)

Karen,
I think you will find it difficult to appreciably broaden your application after its issue date. A certificate of correction may be available – but you won’t get to re-write the claims. Indeed, as of the “Notice of Allowance” – prosecution on the merits is closed.

Further, a ‘Continuation’ application will not be available if the patent was granted and no related application was continuously pending during all times after the initial patent was granted.

I also don’t recommend Ron’s strategy of filing an application evenif you think it will never issue. While some people have used this method, it would fail miserably if the application was found out to be not a bonafide application – for example if you wrote on an internet forum this was your intention. I think this ultimately would be viewed as a serious abuse of the ‘patent pending’ label privilege and I’d avoid such approach.

Sorry Ron, – didn’t mean to pick on you today!

Joe thanks for setting me straight on the reality of it all.
And I would not fill out a patent just to something willy nilly in the system, I would certainly think of something worthy to improve upon my original idea…hey thinking of improvements is what I do so I hope I can do the same for my own ideas (but I do think doing that has the added benefit of someone not knowing what future improvements are coming down the pike).

Hmm, all very very confusing. Like a big patent puzzle….

I’m trying my best to figure out what to do so I can tell my attorney, ‘do this’…instead of him charing me to think of what’s best but alas I’m feeling the best is to ask his advice.

From this thread I’m concluding three things:

1) If I want to use my existing patent to “re-licence” it in the future to others, I guess time and money “trying to broaden claims” may be worth the investment

2) If I want to better protect my product onc it hits the market it seems filing an additional patent could help strengthen future editions of the product with new novel features and comes along with the added benefit of someone not knowing how I plan to strengthen it

3) Probably both is the way to go. And all are expensive. So maybe I’ll do nothing ;)

Reaching the giving up point, or at least the pay 1000 for attorney advice point.

Wish their was an inventor group in Allentown PA…closest is Philly, not happening but boy could I used people to talk to, thanks all for helping to advise me.

But wait there’s more… who can answer this riddle:

if you have this as claim 1) a sock that is made with a 90 degree angle, limited to purple color and made of bamboo

If someone makes a sock in the future with a ‘90 degree angle, limited to purple color (but makes it out of straw not bambo) since they violate part of your claim #1 are they in trouble, or as long as they didn’t violate the entire claim as written they are safe from infringement???

I don’t understand long claims I see on patents….how they decide to put all of it in one long claim #1, or why they don’t break it up in various claims…
so why not:
Claim 1) A sock
Claim 2) At a 90 degree angle
Claim 3) Limited to purple
Claim 4) Made of Bambo

Which is better? All of the above tied into one long Claim #1, or separated as shown above into multiple claims? Which should you strive for??

Does anyone agree I need an outlet? Why didn’t I go to the housewares show I could have talked people to death on the bathroom line or coffee line ;))
Hope you get what I’m asking…

Given all claims are trying to describe what the device is, the fewer parts, the harder it is to come up with different ways to get around the patent. The problem with claims with fewer parts is that they tend to run into more prior art problems such as “Claim 1) A Sock”.

My limited understanding of infringement is that all parts of a claim must be involved. If someone comes out with a product that violates nine out of ten parts of your claim, they are not infringing because they found a “better” way of making your product with less parts.

There was a story in ID last year about a person who got a patent for a product and a company came along and beat them to the market with a similar product and did not infringe on the patent because they did not use all parts of any claim. The person did not engage a lawyer or agent early on with the patent and did not know that claims should always have the minimum number of parts.

Thanks Dond,
Dond or Don? Yes yesterday I read the Nolo chapter on independent and dependent claims and learned ALOT!
You are correct the reason folks can’t leave it too broad is that it could run into prior art…you are also correct that for someone to infringe it says that they indeed must infringe on all of the parts of your claim… which still leaves me confused when I read approved patents… it seems so many patents are including these little minute details (color, type of material) I can’t not understand for the life of me when you would include putting in specifics like that knowing that if someone leaves out part of the claim they won’t infringe. Really seems unfair that a company can exclude or make something slightly different and not infringe.

My advice to any new inventors out there, do not rely on your patent attorney alone!!! Read these Nolo books and be able to question your attorney intelligently on why he is including details into your claims that might be better left out for future protection!!!

Karen, as you know from the Nolo book that to get a patent the requirements is the idea must be novel and un-obvious from the prior art. Typically making a small change to an existing patent will not get you a new patent because of the stated requirements. If a manufacturer or a lone inventor can get the same results of an existing patent, but using less parts or less labor or less materials and not infringe on the patent I think they should be rewarded for the achievement.

You will typically find minute details in the dependent claims, where they further help to enable “one skilled in the arts” to make the claimed invention. I second your recommendation that inventors work closely with their patent attorney/agent and that they make sure the idea is reduced to it’s absolute minimum.