Indianapolis, IN asked in Patents (Intellectual Property) for Indiana

Q: If you make an item and someone else patents it later, Can you still make and sell your item .

I made something in 2010 and sold some via a website. I did not patent it due to prohibitive patent cost.

Someone else patented a similar item 6 yrs later. When they received that patent the patent examiner cited my item and website in the approved patent.

Can I still make and sell my item without fear of legal issues.

1 Lawyer Answer
Peter D. Mlynek
Peter D. Mlynek
  • Patents Lawyer
  • Moorestown, NJ

A: This is a common question, that has been litigated a number of times. The good news for you is that the courts usually rule against the patent owner, and in favor of people in your position.

This has to do with fairness. If you are making and selling your invention, you cannot all of the sudden start infringing a patent that was filed after you’ve been selling it.

It also has to do with logic. Either your product lies within the scope of the claims or it does not. If it does not, then you are not infringing, and you win. If it does, then at least some of the claims of the patent are invalid, and you win.

There are instances when one person invented something, kept his invention a secret, and later a second person independently invented the same thing, got a patent, sued the first person and won. But this is not the case in your situation -- we know that you did not keep your invention a secret because the Examiner cited it.

Can the patent owner cause a problem for you? Well, yes, if you are a small operation and they have lots of money, even if you win, it will still be expensive for you. And there may be some bizarre situation that the court would find against you.

Make sure not to tweek your design that would actually bring you within the scope of the claims of the patent.

Good luck!

1 user found this answer helpful

Justia Ask a Lawyer is a forum for consumers to get answers to basic legal questions. Any information sent through Justia Ask a Lawyer is not secure and is done so on a non-confidential basis only.

The use of this website to ask questions or receive answers does not create an attorney–client relationship between you and Justia, or between you and any attorney who receives your information or responds to your questions, nor is it intended to create such a relationship. Additionally, no responses on this forum constitute legal advice, which must be tailored to the specific circumstances of each case. You should not act upon information provided in Justia Ask a Lawyer without seeking professional counsel from an attorney admitted or authorized to practice in your jurisdiction. Justia assumes no responsibility to any person who relies on information contained on or received through this site and disclaims all liability in respect to such information.

Justia cannot guarantee that the information on this website (including any legal information provided by an attorney through this service) is accurate, complete, or up-to-date. While we intend to make every attempt to keep the information on this site current, the owners of and contributors to this site make no claims, promises or guarantees about the accuracy, completeness or adequacy of the information contained in or linked to from this site.