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Over time I have developed a process and system for performing a core task in my field. The system is genuinely revolutionary, reducing the time required to perform the work by a factor of between five and ten.

I have only used the process and the tools that implement it for my own personal use, and it has matured to the point that I would like to commercialize it. In doing a prior art search, I found a US patent issued in 2015 for an essentially identical concept, issued to a dominant company in the space, but as far as I can find, it has never been developed into a commercial product. From interviews I've done with others in the field who would be prospective customers, it's clear that a commercial product based on the concept would have serious commercial potential.

As I understand it, my options are one or more of the following:

  1. produce and sell the tool in a country not covered by the patent

  2. approach the company and propose a licensing agreement

  3. improve upon the claims covered by their patent

  4. find some innovation not covered by their claims

So my questions are:

  1. Am I correct that those are my options?

  2. Are there any other options I may not be aware of?

Thanks in advance!

  • 5. find prior art and invalidate their patent, but this requires suing or can be used to more easily obtain a license. – FarO Nov 15 '19 at 14:11
  • You do not need to improve on the claim - modify the independent claim by removing one item and another original – Moti Nov 25 '19 at 2:14
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It would be best if you could provide the actual patent number. Many people confuse patent applications from actual patents. Applications may or may not get issued, and the claims are almost always narrowed in an issued patent from its application. Also, if we know the patent number, we can help identify equivalent foreign patents.

I'll try to answer your questions one at a time:

  1. produce and sell the tool in a country not covered by the patent

This is certainly an option, but you should be advised that companies often patent the same invention in multiple countries, so you need to look for those. Of course this option limits your potential market.

  1. approach the company and propose a licensing agreement

This is typically the best option if you want to avoid getting sued. You will of course reduce your profitability by the licensing terms. There is every possibility that the patent owner may decline to license the patent.

  1. improve upon the claims covered by their patent

Although you may be able to get a patent on an improvement to an existing patent, this doesn't, by itself, get around infringing on the original patent. If you implement every step of even a single claim of an existing patent, you infringe on it. An improvement patent can sometimes be used to improve your licensing terms by virtue of a cross license.

  1. find some innovation not covered by their claims

If you can avoid infringement then that is great and you avoid paying licensing fees. You can potentially patent the innovation. You always have to be aware that there is potential for other patents that cover the "other innovation".

  1. Am I correct that those are my options?
  2. Are there any other options I may not be aware of?

I think you covered the options pretty well. Perhaps the only other option would be to find some basis upon which to invalidate the existing patent. This, I believe, is not a simple process for existing patents, but if the document is actually an application and you can identify some relevant prior art, this might be an option.

Please be advised that I am not a patent lawyer and this is not legal advice. The best course of action is probably to consult with an actual patent attorney to evaluate whether your idea actually infringes this or other patents. These are called "freedom to operate opinions". Many people misinterpret the breadth of specific patents because the title and body of the patent can sound quite general. However, the claims specify what is covered. For instance a claim might state you have a process implementing steps A, B, C and D. If you can implement your process with steps A, B, C but not D, you don't infringe. If you can implement your process with steps A, B, C and E where E and D are not equivalent, you still probably avoid infringement. Consulting with a patent attorney is the best way to evaluate claim language.

  • Thanks, Eric. The patent is a full patent (not just an application), and it's valid until 2030. It is for a software-implemented method, so essentially I would be producing and selling downloadable software. It appears that option 1, operating in a patent-free zone (where I happen to live, at the moment), might work. I'm not sure the question of selling from a patent-free zone into the US is settled, legally speaking, but I'm looking into that now. – user325826 Nov 13 '19 at 20:45
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    @user325826 I added some text to the answer so please read that. I believe if you sell in the US you risk an infringement suit regardless of where you are selling from. Software patents are really tricky and court decisions have impacted the enforceability of earlier patents. As always, it is best to consult with a lawyer. – Eric Shain Nov 13 '19 at 20:50
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    @user325826 concerning points 3 and 4, you would like to replace "claims" with "patent specification". The patentability of any claims of an invention you may come up with should be novel and non-obvious over the prior art. Prior art relates to any disclosure, not just the claims. Eric Shain's is a very complete answer covering the different options. – the Europeist Nov 13 '19 at 21:25
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    @theEuropeist I'm not quite sure if your comment was also directed at my answer. Clearly patentability over some other patent needs to reflect all sources of prior art, not just what is in the claims. What I was trying to get at with my response to question 3 was that by getting an improvement patent doesn't mean freedom to operate over the original patent. – Eric Shain Nov 13 '19 at 23:14
  • @EricShain No, it was directed at the options 3 and 4 written by user325826. To me, it seems that user325826 is considering that the claims are the only part of the patent that may prevent you from patenting another invention, but as you point out, Eric, it is the whole disclosure that is relevant for patentability of another invention. – the Europeist Nov 14 '19 at 11:49
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There is another option. You can try to find a way to implement your solution without infringing at least one element of each claim.

As an example, if the claim is "Add chemicals A, B, and C together in approximately equal quantities to generate compound D", and you find you can generate compound D by adding 20% A, 20% B and 60% C, you're likely ok (ask your lawyer first). Similarly, if you can generate compound D by adding chemicals A, Y and Z, you're likely ok.

There are complicating factors (doctrine of equivalents comes to mind), but the normal rule is that you don't infringe a patent unless you infringe each element of at least one claim.

Of course, even if you find a non-infringing workaround you need to be careful that there isn't another patent that covers your workaround (or if their specification describes your workaround and they have a pending continuation, they could later file claims that cover your workaround).

Bottom line is if you're thinking of starting a business implementing your invention, you need to get a lawyer who knows patent law to advise you as to whether your workaround does the trick.

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