building almost identical application (mobile) to another business in different jurisdiction

Question

Background I have spent the last 3 years researching a business model/method and then completed building a mobile application that functions in a specific way. I never did any "prior art" research before building my product.

Upon completing the mobile application i stumbled across a "patent pending" for an almost identical product, with very similar business method. Reading their method sounds exactly the same, much like Lyfts would sound the same as Uber :) I also discovered their screen designs are somewhat similar but different enough to not infringe on any copyright.

However their patent pending is in a completely different jurisdiction to me.

They also filed their patent application before i had built my product. My product is not yet launched in my jurisdiction, and i have not filed any patent for my product.

My questions are: If this companies' "patent pending" was to be accepted in their jurisdiction, and then they were to apply for the same patent in my jurisdiction, assuming my business is now operational, can they shut my business down if their patent gets accepted in my jurisdiction?

And if they were to file a patent in my jurisdiction, what can i do to protect my business - for example can i "alert" my local IP body in advance that i "exist" so their patent filing will become "invalid" on the grounds its not "novel" in my jurisdiction?

thank you so much in advance...the more details i understand the better!

Answer 1

There was a time in previous centuries when local novelty was a factor but now the patent laws of all significant countries have world-wide novelty requirements so that avenue will not help.

You don’t say if they filed after you conceived if your invention. That used to matter in the US. An earlier inventor could get a US patent due to a “first to invent” law. As of 2012 the US joined the rest of the world in becoming a “first to file” country so that doesn’t help.

It is possible that they can’t get a patent at all due to prior art. It is possible that the time requirements to file in your jurisdiction have passed and it is too late to file there. You should be able to look up the date of their priority - filing directly in your jurisdiction (assuming both places honor the Paris Convention) must be done within a year. An exception would be a PCT filing within the year that provides them the opportunity to delay choosing particular jurisdictions to pursue.

Although the patent seems very similar to your project it is possible that any claims they are able to get granted in any jurisdiction if interest do not actually “read on” your product.

Another positive possibility is that even if they get coverage in your location a third location with a suitable, large market, might be open to you to address.

However it is also possible that some other patent in your location is already in place and will be a barrier.

Answer 2

Patents are limited by country. So if there is no patent in the country you are doing business in you should be okay. However there is a limited time to file patent applications in other countries after the first filing. This is generally one year. Patent applications usually publish after 18 months so depending on when the application of concern was filed, you may be able to determine if equivalent applications have been filed or not. As George White points out, having a patent applied for does not mean a patent will be issued.

One thing I will caution you about. Patents only limit what is in the claims. Many people new to patents read one and assume everything described is protected. This is almost never the case. You often see broadly written patents where the claims only define a very narrow bit of technology. Long complicated claims are almost always narrow in scope as you only need to avoid a single aspect of a claim to avoid infringement. Also, claims are very commonly edited to be narrower on issued patents compared to their application.

The bottom line, in my opinion, is that you need to consult with a patent attorney to evaluate the pending patent application you are aware of and perhaps search for other patents as well. Patents are legal documents. Only an actual attorney can advise you on whether you have freedom to operate for your mobile application. This is simply one of the costs of doing business. As I am not an attorney, this is not legal advice.