Q: What would the legal processes and costs be if we develop very similar tech to patent #20210022609?

Our tech uses similar electronics to patent #20210022609, with the addition of piezoelectric power supply. This is our first experience of IP law as a start-up so I would be grateful for a run-through of the legal processes required.

-Would be possible to develop similar tech for market without directly collaborating with other patent owners?

- What are the costs associated with shared licensing/collaborating?

- What are the typical legal costs of reaching such an agreement?

- Is it wise to contact this inventor directly?

2 Lawyer Answers
Bill Hulsey
Bill Hulsey
PREMIUM
Answered
  • Intellectual Property Lawyer
  • Austin, TX

A: The US Patent & Trademark Office website (www.uspto.gov)provides guidance along these lines. If you desire more specific guidance, please let us know. I wish you great success in this endeavor.

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

A: Let me help get you oriented.

1) 20210022609 is NOT an issued US patent. It is publication of an application for patent. It is part of a family of patent applications filed by Northwestern University including a PCT application which is the front end for many patent systems in the world including the US. https://patents.google.com/patent/US20210022609A1/en?oq=20210022609

2) They have filed a petition to make special via the Patent Prosecution Highway program so that indicates that they have received a assessment from a patent examiner in some system that these claims are allowable so you should make plans as if these claims will issue although that is not guaranteed. You can follow the progress of this application using USPTO Public PAIR. https://portal.uspto.gov/pair/PublicPair

3) It is unlikely that this is the only relevant patent application or issued patent. You should have someone do a Freedom-to-Operate search and let you know whether what you hope to do is clear of other patent rights and if not--can you tweak your design to get clear. See https://www.flynniplaw.com/services/legal-services/freedom-to-operate/opinions and https://www.flynniplaw.com/services/legal-services/freedom-to-operate/design-around-guidance

This is not a trivial task but just like a developer of houses invests money to assess the quality of soil and other issues that would impact the ability to have a successful project before buying the land and moving forward, it makes sense to invest some time and money to look for landmines before moving ahead with your project.

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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