This is an update from another question: This patent does not exactly change mankind, but it was an idea that I came up with a few years ago to make a product much better and stronger, while reducing costs (can get by with just 2 layers of foam). My patent is US9771133B2. I am working with a few companies on a licensing/royalty deal, and one of them said that they already had a patent pending on the same idea, but it had been rejected a few times since the initial 2013 (or so) filing date. I cannot find the pending patent that they claim to have. I suspect that they attempted to be very broad to cover many uses, while mine was always very specific to a floating water mat for recreational purposes. Assuming that they were too broad, are they out of luck? To give you an idea, here are a couple of companies that could use this to make their products better. The Water Mat, Aqua Lily Pad and Walmart.
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I cleaned up you question using some embedded links. This makes it easier to read and to find the linked pages.– Eric S ♦Dec 4, 2017 at 23:54
2 Answers
I'm going to preface this by stating I am not a lawyer. You should get legal advice from your attorney. It would be helpful if you specified the company that claims to have filed the failed application as we might be able to track it down. Unless it was only a provisional application, it certainly should have published. You do have an issued patent and they don't. There are procedures to try to challenge the validity of an issued patent including Inter Partes Review. These challenges are not without cost and reasonable licensing terms are often preferable to companies.
They way I see it, there are two situations. First is what you might do if you find someone actually infringing on your patent. It is a pretty straightforward patent to comprehend. You have two independent claims.
A floatable water mat comprising:
a first buoyant layer comprising at least one layer of foam, a top surface and a bottom surface opposite the top surface; and
a netting comprising crisscrossing fibers adhered to the bottom surface of the first buoyant layer, wherein the crisscrossing fibers form a plurality of openings therebetween, wherein each of the plurality of openings comprises an area of at least about 1/16th of an inch squared.
I'd say this claim would be pretty easy to circumvent if the opening of the mesh were less than 1/4th inch by 1/4th inch. However, if someone is making the product that infringes, they either have to license your patent, redesign the product or face a law suit from you.
A floatable water mat comprising:
a first buoyant layer comprising at least one layer of foam, a top surface and a bottom surface opposite the top surface;
a netting comprising crisscrossing fibers disposed at the bottom surface of the first buoyant layer;
and a second buoyant layer comprising at least one layer of foam, a top surface and a bottom surface opposite the top surface, wherein
the top surface of the second buoyant layer is laminated to the bottom surface of the first buoyant layer sandwiching the netting therebetween.
This claim is better in that it doesn't specify the mesh opening size. It doesn't require two foam layers with the mesh in-between.
If you can find a company actually manufacturing or selling a floatable water mat which implements all the elements of either of these claims, then you can sue them for infringement of your patent. The threat of a lawsuit is an inducement to license your patent. You would repeat this process with every manufacturer of an infringing product.
A second avenue to licensing is to convince a company that isn't infringing on your patent that they can produce a better product by implementing your invention. In this case, the company may request an exclusive license. This means only they can manufacturer the improved water mat.
Determining the most profitable approach to licensing your invention is business strategy and beyond the scope of this site. I can't express too strongly that your best course of action would be to discuss this situation with your attorney.
Your priority date is 09-08-2015 and is considered under first inventor to file rules. If another patent application has been on file since 2013, it may be treated under first to invent (if filing was before March 16, 2013) or first to file. Under either scenario, your invention is not going to hold a superior priority claim.
All of the correspondence you've engaged in, including the claim that another company was on file first, will need to be produced in any litigation you engage in over the patent. About ten years ago, most big companies started to push back hard on patent claims. It used to be that reasonable licensing terms would get you a license deal even in the face of potentially invalidating prior art. That is no longer the case. There are actually companies (Unified Patent comes to mind) that file post-grant review applications on their own when they believe a patent is not valid. After the America Invents Act created several new ways to invalidate patents, it is not uncommon for a patent to end up being challenged in an administrative proceeding while simultaneously seeing the same defenses raised in federal district court. The catch is that each defendant in a patent infringement case has a constitutional right to challenge the validity of the patent, but a single judge (or administrative panel) holding the patent invalid will wipe it out.
You apparently haven't filed a continuation. A continuation raises licensing/sale value substantially as it prevents people from developing work-arounds (for example, not infringing claim 1 by making the holes 1/14th of an inch). It also gives you a second bite at the apple in the event your primary patent gets invalidated. That's the downside to failing to file a continuation. The upside is that since there is no active proceeding at the USPTO, you'll want to check with your lawyer to be sure, but it is very unlikely that you are required to disclose to the USPTO the art that potential licensees have disclosed to you.
It is actually quite common to have multiple applications pending on a single invention and for the later inventor to get the issuance before the earlier inventor. However, the later inventor's patent will not be prior art to the earlier filed patent application, so the earlier filed one can still issue. This creates all kinds of licensing headaches, since licensees will hate licensing a patent only to be approached again for a license, this time to an earlier-filed but later-issued patent. In this situation, I've seen the earlier-to-file inventor send the later-filed patent to reexamination (or to IPR) in order to clear the field for licensing their own patent.
Bottom line is that you have an issued patent, but if you're aware of a previously filed application that renders your obvious or not novel, you may get into serious trouble asserting a patent you know to be invalid. This is an issue your lawyer needs to deal with.
In the future, I would be very careful about disclosing this kind of thing in a public forum. If somebody is approached for a license and they google your patent number, this page may well come up and give them plenty of ammunition for a challenge.
