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can they make you stop selling your own invention? Can they make you pay them licensing fees for something you designed way before they did? I designed a unique baby outfit in 2008 and started selling it at trade shows and to the public in the same year. I filed a non provisional patent in 2009 but a lawyer advised me not to pursue it as it was costly and most clothing patents were rejected. Wish I had gotten better advice because fast forward to 2017 and I have received a cease and desist letter from someone who invented the same design in 2011 and was granted a utility patent in 2016. They are demanding a licensing fee or for me to stop selling it. I would love to know if I have any legal recourse as I have put a lot of $ and time into developing my patterns and have been growing this line for 8 years.

  • Can you link the patent you are worried about? – Eric Shain Mar 23 '17 at 15:05
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    Your clothing designs are prior art to the patents issued. Unfortunately patent examiners often only look for other patents and not other sources of prior art. If the facts you stated are correct, you should win a suit, but you are going to have to hire an intellectual property lawyer to guide you. – Eric Shain Mar 23 '17 at 17:24
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In short: as long as they have a valid patent, they can do that.

However, if what you say is true then you have a very good position for negotiation.

I strongly advise you to contact a patent lawyer to assist you. If you cannot do that, answer the cease and desist letter with proof that you were selling the product before their patent. But note however that if you understood something wrong or only had a similar product or they don't believe/understand what you are telling them you lost valuable time. (Normally invalidation takes more time then litigation, so time is critical here. - Germany) In the US invalidity can be a good defense against a suit, but it will cost a lot of money to go through a law suit anyways.

  • The Supreme Court just ruled on a copyright case that may allow you to sue them. natlawreview.com/article/… – Eric Shain Mar 24 '17 at 14:33
  • That is a fantastic outcome for artists. Thank you for the reference. – babywit Mar 24 '17 at 16:19
  • Key phrase is "valid patent". One of the first defenses in an infringement is "your allegedly inventive claim is not legally valid." Hence the phrase "killer art". Proof of prior public use invalidates later patents by ANYONE. – Upnorth Dec 22 '17 at 4:27
  • @Upnorth in the us. – DonQuiKong Dec 22 '17 at 5:18
  • @DonQuiKong. Yes, in pre-AIA it denied patentability if "known or used by others in this country" (i.e., the USA). For completeness, now it says, "in public use, on sale, or otherwise available to the public" prior to the filing date. Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where prior public use or public availability occurs. MPEP 2152.02(c). R-11.2013. Effective for patent applications filed on or after March 16, 2013. – Upnorth Dec 22 '17 at 18:48

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