4

If I have suddenly realized that my issued patent infringed an earlier issued patent, and I have been notified by the original inventor of this infringement, even though my patent was granted, what can I do to cancel it/withdraw it to avoid litigation. It is a pretty clear infringement, and I do not believe my chances would be good in litigation.

Advice?

  • Contact your patent attorney. I don't know exactly the process, hopefully someone else will be able to help with that, but regardless, once we're talking about a risk of litigation (and generally beforehand in patents, too), you should get an attorney. – Matthew Haugen Jan 22 '16 at 19:18
  • Can a patent document infringe on anything? No. At best, the original inventor can claim that your patent is invalid. You can only infringe with a product of some sort. As long as you're not selling/offering what's patented, you have nothing to do really. – Kuba Ober Mar 31 '16 at 20:29
2

One patent cannot infringe another patent.

Suppose a patent claims a widget comprising X, Y and Z. In that case making, using or selling such a widget (comprising X, Y and Z) might infringe the patent.

Are you making, using or selling what the other guy claimed in his patent? That may be a tricky question to answer because it requires an analysis of his claims. There is no need to assume that the answer is "yes".

Based on the information given in the question, there is nothing you need to do to your patent.

2

Assuming you have your patent issued AND you make and/use the patented product AND that product infringes another patent, the following is my suggestion.

Suppose your patent claims product comprising A, B and C. And another's patent ("superior patent" hereinafter) claims only A and B. Then, if you produce or sell product having A, B and C, you are infringing superior patent, because your product have A and B. It does not matter your product also has C.

If such being the case, the patent holder of superior patent CANNOT produce or sell product having A, B and C.

So, safest way to avoid infringement suit from superior patent holder is to stop producing and selling product having A and B.

Next option is to propose the holder of superior patent for cross-licensing each other's patent, which avails you to use the superior patent and avails title holder of superior patent to use YOUR patent.

You must not withdraw your patent. By doing so, you will lose the second option.

0

You don't need to withdraw or abandon issued patent. Original patent assignee of prior patent might send you notice since he believes that you might be using said patent and making benefits. Since his patent covers the broader claims he can ask for royalties.
If you are not selling our using said claimed product just notify in reply to such notice. In any case withdrawal or removing your granted patent doesn't help. I will also recommend that you contact any attorney for reply.

0

In the past I filed for patent on behalf of my employer. It was rejected because of prior art which I wasn't aware of. Still the lawyers did their magic and eventually the patent was granted. If your patent is important for your business I suggest consulting patent lawyers. You may file continuation-in-part application and change you claims to work around the prior art.

  • 1
    The question concerns an already issued patent, not an application. – Riccati Jan 27 '16 at 23:54
0

You need not withdraw your patent. A patent is a "negative" right. It does not entitle you to do something it prevents someone else to do anything that falls within the scope of your claims. As long as you do not do anything that falls within the scope of the "original inventor's" patent you have nothing to worry about. A patent cannot infringe another patent. If you are certain that the "original patent" is prior art as far as your patent is concerned and renders your patent invalid, I would suggest that you let your patent lapse by not paying the renewal fees.

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.