Q: Please help me with following patent for a foam water squirting toy: US7571837B2 by Prime Time Toys Ltd.

We would like to make a foam water squirting toy for promotional use but I want to make sure we are allowed to do so. Thank you for explaining what exactly is patented and what we are allowed to make.

3 Lawyer Answers
Kevin E. Flynn
PREMIUM
Kevin E. Flynn
Answered
  • Patents Lawyer
  • Pittsboro, NC

A: A product does not infringe the title of a patent, or the abstract, or the drawings and the specification. To be within the scope of the patent owner's ability to exclude, the product needs to infringe at least one claim in a patent that is still in force.

So the first step is to ensure that the patent has not lapsed. You can see my answers to other questions so see how to determine whether a patent is still in force.

Getting back to the claims, to understand what is in a patent, you take the text of the independent claims and think of each noun, verb, relationship as a link in a chain. You infringe that claim if you have each of the links or a legal equivalent. Often, you can look at the set of required elements (the links) and you clearly do not have one of them. If that is true for each independent claim, then you do not have a problem.

A dependent claim adds more links to an existing chain. The dependent claim can add links to an independent claim or to a chain of an independent claim and one or more other dependent claims. You cannot infringe a dependent claim unless you infringe the independent claim at the top of the chain. A dependent claim starts out with something like "The widget of claim 1 wherein [[add some additional limitation]].

Sometimes the words in the claims have non-standard meanings. The patent specification serves as the dictionary. I have redefined the word patient to include not only humans but animals under care of a veterinarian or a mannequin simulator used for training a medical professional.

Sometimes the meaning of a phrase is clarified during the negotiations with the USPTO examiner. This material is available in PDF form through a system known as Public PAIR.

Sorting out the precise edges of a patent claim often requires the work of a patent attorney but sometimes it is real clear that you do not have anything like one of the required claim elements and you can feel free to proceed.

I hope that this helps.

Kevin E Flynn

Peter D. Mlynek
Peter D. Mlynek
Answered
  • Patents Lawyer
  • Moorestown, NJ

A: Congratulations on your business, and I am glad that you are worried about patents before you start making your product.

In addition to what Kevin Flynn mentioned, which I agree with, a couple of points:

This is the type of question that you should hire a patent attorney for. You need to sit down with the attorney (either in person or over the phone), and discuss various designs. If you are early enough in the design process where you are still flexible with what your product should look like, it should not be a terribly painful exercise. This should not be too expensive.

If you really want to make and sell something that is pretty close to what is patented, then you should ask the attorney to provide you with a Non-infringement Opinion. This opinion will do 2 things for you: it will tell you that you are not infringing; and if you are ever sued successfully for infringement, it will mitigate your damages.

Good luck!

Griffin Klema
Griffin Klema
Answered

A: You should get a formal legal opinion from a patent attorney, often referred to as a freedom to operate opinion, or non-infringement opinion. Expect to budget about $5,000 for that legal work.

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