Q: Do patents cover all designs or does it cover the entire concept?

I am being accused of copyright infringement by a company because we make the same product but in different ways. We both make hock socks (protective socks for rabbit's feet) The other company makes them with 3 different fabrics a solid toe and velcro or button around the ankle. I make mine with 2 fabrics and velcro on both the top and the bottom. They have patent in Europe and claim to have pending patents in Canada and the US with retroactive consequences. Yet to show proof. I do not have any patents I just make and sell them in Canada and us. Can they tell me I am not allowed to make my boots even though our designs are different?

2 Lawyer Answers
Peter D. Mlynek
Peter D. Mlynek
  • Intellectual Property Lawyer
  • Moorestown, NJ

A: Patents cover the invention that is described in the claims of the patent. A patent may indeed cover all hock socks, or it may cover just a very specific type of hock socks. Without knowing more, we can't really tell you.

Given that you've been contacted by the patent owner/patent applicant, you can't let this just slide. You need to go find a patent attorney who will be able to look at your hock socks and the patent, and hopefully, the attorney will tell you quickly that you are OK. If the attorney won't be able to tell you that you are OK, you'll need to consider your options -- you do not want to get into a situation where you'll spend tens of thousands of dollars to win. If you are close, the patent attorney may be able to tell you how you could re-design your product so that it is out of the scope of the patent application.

Good luck!

Kevin E. Flynn and Marcos Garciaacosta agree with this answer

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

A: I will augment the first answer and not repeat the points made there.

For someone to seek pre-issuance damages in the US, they would have to send you a copy of the published application and your product would need to be within the scope of the claims in that published application. Further, they would need to get those claims without substantial amendment to avoid prior art. This area of patent law is called provisional rights (but has nothing to do with provisional patent applications).

An arrow in your quiver in the US is the ability to located relevant prior art and insert that into the process after their patent application publishes. There is a limited window for this but it can help the US Examiner reject the claims or at least cause them to be greatly narrowed. Either would make your life easier in the US and may impact what is going on in Canada. (It seems that in some instances Examiners in one system peek at what is going on in another system)

Collecting and submitting prior art is not a DIY project. You should consult with a patent attorney.

I hope that this helps.

Kevin E Flynn

Marcos Garciaacosta agrees with this answer

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