Asked in Patents (Intellectual Property) for Florida

Q: Looking to know if I violated a patent

I want to start a distribution of a product I manufacture out of the states and need to know if I dont violated some patents I found online that belong to a similar company such as mine

2 Lawyer Answers
Kevin E. Flynn
Kevin E. Flynn
PREMIUM
Answered
  • Patents Lawyer
  • Chapel Hill, NC

A: First Question is whether you will be doing anything in the United States.

If your clients are not taking delivery in the US and you are not making the product in the US, then you may not need to worry about a US patent.

On the other hand, looking for US patents is often a quick way to learn of patent rights that may be duplicated in other countries. A patent attorney can use a US patent or published application to look for other members of that patent family.

For a really new product, there is a risk that the newly filed patent application is not visible yet as the norm is that the applications publish at 18 months and can stay hidden longer than that in some situations.

I hope that this helps.

Kevin E Flynn

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

A: You are going to have to hire a patent attorney to tell you this.

You are looking for a patent attorney to provide you with a Non-infringement Opinion (if you have a specific patent(s) that you are concerned about), or a Freedom to Operate Opinion (if you want to make sure that there are no patents that will prevent you from making or selling your product).

Just like anyone else who is seeking to make, sell, or use a product that has been around for less than 20 years, you should have an FTO opinion done. Whether you go without it, or you spend a little money on a patent attorney to tell you orally that you are good to go, or you have the patent attorney do an extensive search and give you a long written opinion that will cost lots of money, depends on how risk-averse you are, the size and profitability of your product line, and competitive the field, etc., is a business decision. For some businesses it is really needed, for others it makes less sense.

If you know of a patent that seems to cover what you are making, you really need to seek a qualified patent attorney. The attorney will provide you with a Non-Infringement Opinion, which will tell you that you are OK to make and sell your product. Again, it could be just an oral or informal opinion if it is clear that you won't be infringing, but if the patent is just too close to tell without really digging into it, then you really need to spend the money for a written formal Non-Infringement Opinion.

There is no legal requirement that you get an opinion done, but if you get sued the patent owner will not be able to collect treble damages. What this means is that if you get sued, you'll be able to pull out the Non-Infringement Opinion, and tell the court to the effect: "Look, I was concerned about infringing this patent, so I hired a patent attorney that told me that we won't infringe this patent."

Your business attorney should be able to provide you with several names of suitable patent attornies. Alternatively, you can find one on your own. And remember, unlike the majority of legal questions, this deals with federal law, so you can hire a patent attorney anywhere in the US.

If you wish, send me an e-mail on this issue.

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