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  • So let's suppose that I have been granted a patent in the US.
  • I then license out this patent to a manufacturer to market the product in the US.
  • The manufacturer obviously believes in the product, since they bought the rights to it.
  • Hence would they try to beat me to the punch and claim this patent for themselves in other countries like China and the EU?

Are there documented cases of this happening? Is it commmon?

2 Answers 2

1

Once you have an issued patent, and even before that if your application is published you have firmly made it prior art to any application anywhere in the industrialized world filed later than yours.

If anyone files for the same thing anywhere it will be rejected as not being new, unless it is you filing under some international convention that gives it priority to your filing date in the first country.

As an issued patent it should come up in any search done by a patent office.

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If you really follow these steps, which I do not recommend, the manufacturer will not be able to patent the same product in other countries. By then the product will be a part of the common knowledge.

To answer your question: Not being able to patent an idea because it already exists is pretty common, but probably not very well documented... :) :)

I do not recommend the steps above, as they are wasting your resources. You do not need to wait till your application gets granted. And if you license your product within 12 months of the application, you may file new patents in different countries/regions claiming priority from the previous application.

The manufacturer, being not the owner the first application cannot claim priority. His "invention" won't be newer than yours.

I would try these steps instead:

  • file an international patent application;
  • license it to a manufacturer within 30 months of filing;
  • decide the countries in which your patent application should enter together with the manufacturer.

Please also note, there is no such thing as a standard license agreement. It is a contract between you and the manufacturer. The conditions of this contract are based upon the agreement between you (your lawyer) and the manufacturer (its lawyer). Search for a lawyer skilled in licensing in order to avoid (common) pitfalls of licensing.

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  • I have no idea what your second paragraph means. You have 12 months after filing an application to file in other countries whether or not you license it. The OP says they already have an issued patent so the 12 months is almost certain to be expired. I think there is worthwhile info here so perhaps try to clarify.
    – Eric S
    Feb 14 at 1:27
  • The first paragraph explains it, as you write. But the questions of the OP were: Is it documented? Is it common? And the second paragraph answers these questions: Having an idea, which already exists is common, but underdocumented ...
    – picibucor
    Feb 14 at 22:26

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