Q: can i use a patented tool?
I have a brand and I want to put out a product called the universal socket. I just found out there's a patent on this product, but could I still use it? Do I have to pay in order to use the patent?
A:
Short answer - it depends.
As a patent attorney, I would want to look at what actually is claimed in the patent vis-a-vis your product.
But if it's a case of clear infringement, it might be best to ask the patentee for a license.
A:
There are several questions to be answered. This will require a patent attorney but you should know the range of issues.
1) Has the patent expired at the end of its term or lapsed early for failure to pay a maintenance fee?
2) Will the patent expire soon so that you can start selling in countries without a patent and then start selling in the US once the patent expires?
3) Does the precise terms of at least one patent claim (every noun and every verb) read on what you want to do? If this is a design patent then the coverage is on a particular ornamental appearance and you may have more options to stay clear of the patent.
4) If 1, 2 and 3 don't resolve the problem -- is there a viable way to tweak your product so that it does not have some required feature in the claims. In other words, can you change the answer of question 3 from yes to no.
5) Is there prior art that the Patent Office did not consider that would render the relevant patent claims invalid as lacking a non-obvious step over the prior art?
6) Has the patent owner licensed others to make this product?
There are interactions between these questions. A patent that is about to expire may not merit an effort to redesign. A patent owner that has a track record of widely licensing the patent may mean that you do not want to take the time and money to try to invalidate the patent claims.
Good Luck
If you found this answer helpful, you may want to look at my answers to other questions about patent law are available at the bottom of my profile page at
https://lawyers.justia.com/lawyer/kevin-e-flynn-880338
Kevin E Flynn
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