Q: I am an online seller and received a letter in the mail from another company regarding an item that has a patent pending
I received a certified letter regarding a silicone pipe that I currently sell on many platforms including my own website. The company stated that they have a patent pending on it and that I have to: immediately stop marketing the product, remove the product from all selling platforms and send them all of the pipes that we currently have in stock. This patent is pending so I do not know how to proceed. The letter stated we have 14 days or they will take legal action. Also our pipes have a different logo on them and we did not know about this pending patent until the letter.
Thank you in advance for any advice you can offer!
A: This situation merits working with patent attorney to sort out the current status and possibly to intervene to help the Patent Office reject or at least narrow the claims.
As a preliminary step, you may want to check on the status of the pending application using USPTO Public PAIR. https://portal.uspto.gov/pair/PublicPair You may see that the Examiner has already rejected the claims and is awaiting their response. If so, then you may not want to do anything.
Technically, they have no power to command anything while the application is pending. They can put you on notice of their pending claims and possibly obtain pre-issuance damages through something called provisional rights (has nothing to do with provisional patent applications).
It is possible that you sell a competing product but none of their pending claims match on you. You may want a patent attorney to review the pending claims against your product. https://www.flynniplaw.com/services/legal-services/freedom-to-operate/opinions
It could be that their claims require a quirk that you could live without. So maybe you adjust your product to stay clear of their quirk in the claims. This is called design around. https://www.flynniplaw.com/services/legal-services/freedom-to-operate/design-around-guidance
You may want to set up monitoring of this application so you see how things are progressing and close down before their patent is issued. https://www.flynniplaw.com/services/legal-services/monitoring-third-party-applications Likewise, you may want to conduct a patent search and find some prior art to help the USPTO reject their claims.
As you can see there is a fair amount of nuance here so this is not usually a do-it-yourself project. Time to hire a patent attorney with the right skills.
I hope this helps.
Kevin E Flynn
A: By the way, -- not knowing of their pending application does not change whether your products may someday infringe any patent that is issued. Patents apply to innocent infringers. (People who did not copy but infringed).
Patent law has a mechanism to punish people that ignore known patent rights by allowing the judge to increase the damages by a multiplier of up to 3.0. This is know as willfullness.
As they don't have a patent yet at all, discussion of willfullness is is premature but you may face this risk if they get the claims in their published application and you continue to infringe their patent after it issues.
I hope this helps.
Kevin E Flynn
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