Springfield, NJ asked in Patents (Intellectual Property) and Products Liability for New Jersey

Q: If I wanted to produce this type of device, how do I go about contacting the inventors of this patent?

I want to commercialize a tennis ball mower that collects balls directly into a basket at an elevated height, so that one does not have to ever bend down to pick up any balls. This patent seems like that is what they are describing, but I am uncertain. Currently on the market there is a tennis ball mower, but one still has to bend down to pick up the basket of balls once the balls have been mowed. Overall, I just wanted to know how I should go about contacting these inventors if I was serious about moving forward with production of this product.

1 Lawyer Answer
Kevin E. Flynn
Kevin E. Flynn
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Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: I do not know the specific patent number you are referencing so I will give a generic answer.

NOTE -- some of these steps can be done in different orders but I listed the easier steps first.

1) Calculate when the term for this patent if all maintenance fees are paid. See my profile for a prior answer to the process to sort out the patent term. It is sufficiently complicated that pasting the answer here would limit my ability to answer the rest of the process.

2) Next check to ensure that the maintenance fees due 4 years after a patent issues and again at 8 and 12 years have been paid. If they have not, then the patent is lapsed for failure to pay maintenance fees (note there is a liberal policy to allow people to pay the fee late so consult a patent attorney to confirm that the deadline is sufficiently passed so you can rely on the failure to pay the fee).

3) The first two steps were easy. If the patent did not expire and did not lapse from failure to pay the maintenance fees, then you need to sort out if what you propose to do would fit within the scope of any of the issued claims. If you have every noun and every verb that is present in an independent claim, then you are potentially infringing the claim. Many inventions that improve a device still have all the nouns and verbs to infringe the original device patent. Sorting out the close calls on whether you infringe a claim is a job best handled by a patent attorney. But sometimes, it is a no-brainer as the claim calls for features that your proposed device does not have.

4) If you get to the point where the patent is still alive and you think you proposed product may infringe, then it is worth giving thought to whether you can tweak the product to no longer infringe. This is normally done with the help of a patent attorney. For additional information on designing around a patent, see -- https://www.flynniplaw.com/services/legal-services/freedom-to-operate/design-around-guidance.

5) If designing around is not practical, then you may want to contact the current owners of the patent to see about a license.

Patents get sold just like houses get sold. When the patent is sold ("assigned"), there is a place to record the transfer of ownership. You can look for the current owner of the patent here -- https://assignment.uspto.gov/patent/index.html. Now if the current owner did not record ownership, the records won't be correct, but this is the best place to check.

6) If you do want to try to license the patent rights from a third party, you should talk with a patent attorney or an attorney that drafts licenses that is familiar with patents to understand what terms should be in a patent license and what is reasonable before you make an offer or start negotiation.

I hope this high level road map is useful.

Kevin E Flynn

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