Welcome to the forums!

Our encouraging community is a dedicated resource for innovators everywhere.

Learn about industry trends, common questions,
and stay informed of the latest happenings at Edison Nation.

infringement

firefitrandy's Avatar

Hi everyone, I've been a lurker here since I joined, attempting to absorb as much knowledge as possible...which seems an impossible feat in the vast world of inventing. I did submit my idea here a while back. While my idea wasn't up the alley of the board of decision makers, it has gained amazing popularity locally, and has been generating a lot of interest in my field statewide. 

While the idea started out as a way to help my field in the category of physical fitness, I was simply building something to use. My crews fell so in love with the 'prototype' that I started researching similar products. I guess that I did about 20 hours of research into something similar. I found nothing. Filed a provisional. A friend sent a link to a patented product that was in the category, yet completely different from a design and usage standpoint. I didn't think much about it due to the differences in design and usage...I admit that I made assumptions that I shouldn't have. Stumbled upon a first customer accidentally a few months later. Did a small showing of the product and sold 2 more. While 3 sales does not seem like a big deal, it is with the product I am selling. Started doing charity events using the product with nothing but positive feedback, not to mention helping people in a positive way. I had just met with a patent atty to file the patent, so I do not have it yet. He pulled prior artwork, found the other product in my field and said it was so far off from mine that we shouldn't have to worry about it. My patent pending doesn't expire until late October this year. 

Now comes the problem: I receive a cease and desist letter from IP attorneys representing an individual claiming I infringed on a patent. It was the other product in my field. My patent atty says his patent was the most poorly written patent he has ever seen. I know this is moot, because I will still have to fight this. The 2 points he says I am infringing on are so trivial that I'm not sure he has much grounds. My patent atty sent a response letter this morning. I'm sure that there are some people here who have run into similar issues, so I was wondering how anyone may have dealt with it.    

posted    Report this topic
Reply
firefitrandy's Avatar

I never used the term 'sled' while doing my search, and that is the category that it was apparently in.

posted    Report this post
firefitrandy's Avatar

So I decided to get a second opinion from another patent attorney, who also does the litigation if the issue arises. The attorney I had been speaking with did not. The 2nd opinion attorney says based on looking at the infringement claim, looking at the other parties patent, and looking at what I have, I should not stop what I have been doing because there is no way he would be successful in a suit based on the huge differences in the products. The guy is bluffing me more than likely. 

posted    Report this post
firefitrandy's Avatar

I guess I shouldn't say 'no way'...I know there are always ways. I also know those ways are usually financially driven. Hopefully this ends in the 2 of us(the other party and myself) realizing that there's plenty of room for both of us in the field,especially since we have products in the same field that do different tasks.

Crystal-Diane Nappi
posted    Report this post
firefitrandy's Avatar

His product has been on the market for 9 years. We aren't even geographically close to each other.

I agree with you on him being scared. Not only is my product gaining steam and popularity rather quickly, it is 1/5 the price of his and does more. 

posted    Report this post
firefitrandy's Avatar

Update: I actually spoke with the inventor of the product who claimed infringement. In a nutshell, he said he knew he couldn't beat me, but he has the financial means to slow me down or run me out of money as a startup company. Has anyone here run into this same type of issue?

 I have since filed to NPP, so now it is a waiting game.

posted    Report this post
chicagoinventor's Avatarg8_badge

Can't speak to your specific situation since we don't know the details. There is a big difference between prior art and infringing on a patent. 

For the sake of argument, let's speak in generic terms. Inventor A files a patent 10 years ago that is poorly written, and inventor B comes out with a similar product now. Inventor A will likely loose any infringement suit but it would not be possible for inventor B to get a meaningful patent issued because of the prior art. Any public disclosure of an invention is prior art, even if the disclosure is in the form of a poorly written patent. In this hypothetical example, anyone could start making a similar product and inventor B could not sue because of the prior art.

Did this help clarify things?

posted    Report this post