Q: I’m trying to determine if this patent is what I’m looking to create - https://patents.justia.com/patent/8656283

A: Thanks for caring enough about doing the right thing to ask a question. The technical term for what you are asking is called freedom to operate (FTO) or sometimes "clearance". You are asking whether there are concrete legal rights that exist that would impinge on your freedom to operate in the manner you wish to do. To do this correctly, one would need to carefully study both your proposed product and the claims of the relevant patents. I will not do that here, but will provide you with some general tools so you can prepare to talk with a patent attorney.

You have found one patent that concerns you. There may be more than one.

Information about utility patents can be found at http://www.flynniplaw.com/services/legal-services/united-states-utility-patents.

You may want to do some searching for other relevant patents using the tools taught here http://bit.ly/Patent_Searching. A good cross-check is to look for patent assets assigned to the company with the existing product. https://assignment.uspto.gov/patent/index.html#/patent/search

A general description of Freedom to Operate work is found http://www.flynniplaw.com/services/legal-services/143-freedom-to-operate.

As you have found at least one patents or pending applications that is a potential problem then it is time for a patent attorney to sort out whether it is a near miss or a real problem. Sometimes the patent has expired or has lapsed for failure to pay a maintenance fee to renew the patent rights. Sometimes you can modify your design a bit and be clear of the patent. See http://www.flynniplaw.com/services/legal-services/freedom-to-operate/design-around-guidance.

In some instances, one can take a license from the original patent holder but that adds another layer of costs and some entrepreneurs do not want to explore that option.

A FEW WARNINGS

1) There may be patent applications ahead of you in the pipeline that have not surfaced yet as published applications. So searching may not identify all potential problems. Searching will reduce your risk of a problem but not drive the risk to zero.

2) Each country has its own patents and trademarks. So being free to operate in the US does not necessarily mean you are free to operate in Canada or Australia. The US is such a big market that many companies located outside of the US do seek patents here so our list of patents is well-developed but there are patent rights other places that do not show up here.

NOTE -- in some countries there is a lesser form or utility patent called a utility model. This type is not available in the US and is easier to get. So an item that would not be able to get a normal utility patent in the US may have a utility model patent in another country. https://en.wikipedia.org/wiki/Utility_model

Kevin E Flynn

A: I could not answer both of your questions because of word limits on answers so here is an answer to the second question -- patent expiration that is generalized so that other people can benefit from the guidance.

GENERAL RULES ABOUT THE TERM OF A PATENT

In the United States, the old rule was generally 17 years from date of issue. There are very few patents or pending applications under that set of rules as any US patent application filed after June 8, 1995 is under the new rules.

The new rules allow for a term of 20 years from the filing date of the first non-provisional application. So if someone filed a provisional application first and then a set of one or more non-provisional applications, you ignore the provisional application filing date. The 20 year termination can be altered by one of several events.

1) The patent term can be extended if the PTO was slow to perform certain tasks and this exceeds times that the applicant was slow to perform other tasks. This is very complicated and somewhat goofy in application but you will see the net result on the front page of the patent as Patent Term Adjustment days. This can range from zero to several years worth of time.

2) The patent term can be extended to make up for time that the patent owner could not use the patent as the patented product was awaiting regulatory approval -- such as FDA approval for a new medical device.

3) The patent term can expressly disclaimed by the patent owner. This is a rare event but would show up in Public PAIR.

4) The patent term can be linked to the termination date of another patent for the same general idea held by the same patent owner. This is called a terminal disclaimer. This is much less important now that both patents subject to the terminal disclaimer will have a common patent application in their histories and would have similar term limits from the 20 year rule.

5) The patent term can end early if the patent owner does not pay a maintenance fee when due. This is necessary to keep the patent from terminating at 4, 8, or 12 years from the date of issue of the patent. This is complicated as there is a relatively liberal policy to allow the PTO to accept late payments and revive the patent. You should check with a patent attorney before proceeding as you think the patent is dead from failure to pay a maintenance fee.

6) There are other events such as litigation, reexamination, and a process called reissue that can cancel some or all of the claims and in some instances amend or add new claims. If a patent is very close to what you propose to do, you may want a patent attorney to look at the full range of issues to ensure that the claims have not changed or been invalidated.

Hope this helps.