Q: good day.referring to the patent at this link:https://patents.justia.com/patent/8381623this is my patent from 2008
I offered to sell the patent to Fiskars in early 2009, after a long distance call they went quiet on me.
I just discovered that they went ahead and claimed the patent for themselves. My patent was published in a journal in South Africa shortly after South africa joined the international patent union. Fiskars was aware of my patent when they made the patent above, i have an email from 2009 where i reached out for contact for the cutting board. Following that we had a long distance phone call, to which i have witnesses from that time.
What can you do for me? What would you need from me? There are also other boards following the same principles from other companies, after my original patent and following Fiskars first launch of their product.
if you follow this link:
https://www.greengazette.co.za/search
and click search, type falencikowski into the search bar and hit enter, you will see my published patents for the cutting board.
A: You will need to retain a U.S. patent attorney to sit down with all pertinent documents to fully assess the situation, including but not limited to reviewing the "prosecution history" of the Fiskars patent (does it cite your SA patent?). The claims of the patent are key - if the claims in the Fiskars patent are the same as your original disclosure, and if your documentation suggests that the invention was indeed taken from you, then the Fiskars patent may be invalid and/or monetary damages might be available.
Timothy John Billick agrees with this answer
A:
This is a fact intensive question that will require an attorney to step through the details. I have not taken a position on whether the Fiskars patent overlaps with your South African application.
But as a general matter, if a US Patent was filed on the invention of another, then there is a process to sue in federal court to fix the list of inventors on a patent. If you actually invented the claimed technology and are added as an inventor, then you have the right to use the patent in the US and license others to use the invention.
If you are the only inventor, then the other inventors should be dropped from the patent and their assignee would lose the ability to use the invention or license others to do so.
This is a fairly rare process. I have only drafted papers to make this happen once in my long career. It is litigation and has the expense of litigation so not a matter to enter into without some thought.
Let me know if you want a referral to a litigation firm to handle this matter. I no longer work on patent litigation matters.
I hope that this helps.
Kevin E Flynn
FLYNN IP LAW
Timothy John Billick agrees with this answer
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