Worldwide Patents Pending

indublin

Can anyone explain in Layman terms what "Worldwide patents pending" means.

I was looking into an idea but when i googled it, a company in the US is already selling the product with worldwide patents pending. does that mean there is no point in me even going any further and how long does it normally take for a worldwide patent to be granted. what if i did go ahead here in Ireland could they take a case against me at some stage ?

Joseph

If you wanted, you could approach them and look into the possiblity of getting licensing rights?

patftrears

indublin wrote: »

Can anyone explain in Layman terms what "Worldwide patents pending" means.

I was looking into an idea but when i googled it, a company in the US is already selling the product with worldwide patents pending. does that mean there is no point in me even going any further and how long does it normally take for a worldwide patent to be granted. what if i did go ahead here in Ireland could they take a case against me at some stage ?

Patent pending means they have applied for the patent but not registered it.
It give them 12 months protection for the idea before they have to spend all the cash registering the patent, they can extend the 12 months for a further 6 months.

1. Could just be a bluff check the relevent patent register to see if it has been covered in Ireland.

2. If it is a product read the patent document, it could only cover a small aspect of the product and you could change it so you're not in breech of the patent and still have the same product.

di11on

Yeah - whatever it is, just put an MP3 player in it, now it's a whole new product :-)

515

Firstly, there is no such thing as a 'worldwide patent'. The closest thing to that is what is called the Patent Cooperation Treaty. That basically means that you can put off deciding which countries to get a patent granted in for a few years while the basic admin is done centrally. But you then need to get it granted in each country seperately.

This is probably what they mean, although they may be at a further stage where they have chosen a number of strategic countries to file in. So maybe US, UK, Germany, France, Japan... could be a long list, but might not be.

A patent can be pending for several years. They cannot sue until they have a granted patent, but at that point can sue for all the prior use from when they filed their patent application.

What will decide if you are in breach of the patent is whether they have a patent pending in Ireland. Chances are that such a small country isn't worth protecting for them. If that was the case you could make, sell and use the idea in Ireland (and so could anyone else), but you could not export to countries where they have patents.

You really need to find out for sure what their protection is. Search for their patent online, there are free searches you can run. You should get enough info from that. You probably should ask a patent agent to double check if you are going to go ahead with it, better to lose a few quid on that now than a fortune in legal fees later.

They may also have design registrations and trademarks... so before you invest too much be sure to get professional advice.

And deaddude is right, even if they have patents here you could get a license from them to use the idea and simply pay them a royalty. Or you could buy the Irish patent (or any other country) from them.

t-ha

di11on wrote: »

Yeah - whatever it is, just put an MP3 player in it, now it's a whole new product :-)

If it covers the same area as some of their patent's claims you'll still need to fork out something. Also, as someone else mentioned, the patent may not be filed in Ireland. They have to be done country by country in Europe and it's an expensive business so they may have just gone after the main players.

indublin

Thanks for the Info , I might just arrange to meet a patent agent and check and see, as you said "better to lose a few quid on that now than a fortune in legal fees later" , nothing ventured ...

maninasia

One of the advantages of a small country like Ireland is that it is not common for businesses to register their patent here due to cost, most businesses will skip out all but the largest markets or focus markets.
It is extremely expensive to try to register in every country.
It's also very expensive to prosecute patents and you need deep pockets and also to be able to collect evidence of patent infringement in the first place. As in, it is up to the patent holder to find infringement and prosecute the case. You must understand though that even 1 sales to a patent holiding territory and you could be up sh%t creek! (therefore in your marketing you would have to state available in Ireland only).
Check where is the patent filed, if not in Ireland and your sales are only in Ireland then you are okay. In practice most 'worldwide patent pending' is a bluff and they usually have filed in the major markets only.

Even if there is a patent filed, in practice many patents can be avoided with some minor adjustments.

indublin

I spoke with a Patent Agent and he told me its not possible to patent a product which is already for sale in another country. it can not be just changed or adapted to sell in this country,which was what i was trying to do.
Only brand new products/inventions can be Patent. I tryed contacting the Company who are selling the product in the states but no reply.

How do companies protect themselves selling in Ireland, do they just take the risk of competition. if i cannot patent the new product and the company in the US wont sell me a license is it a case of just letting it go and move on !!!

Very frustrating as I know this idea would work if adapted to Ireland, but if i did just push ahead everyone and anyone could just sell it unless i am missing something !!

515

Well no idea is completely new... everything is an adaptation of something that has gone before. But to be patentable the idea needs to be 'novel' or to have 'an inventive step'. I assume from your post that your modification doesn't reach that threshold.

Now to your question. The situation is slightly different from what you are thinking. Firstly, do you know if the existing company have a patent in Ireland?

If they do have a patent here then you need to get a license from them to make, sell or use it here. If you cannot get in touch with them, you cannot procede. If you did procede they could sue you.

If they don't have a patent here then anyone can make, sell or use the idea, there is no protection (except copyright, tradenames etc maybe). So you don't need to make contact with them. This does of course mean anyone else can do it too...

The protection you would have is that most people won't get off their backsides and challenge you. You can also use trademarks, name recognition and your first-mover status to maintain an advantage over anyone else who came along. It all really depends on the idea and your business skills.

First step though is finding out if their patent covers Ireland.

indublin

Tks 515 for the reply, yes your right my modification would not be enough
for it to be a new inventive step.

This US Companys website says at the bottom that they have worldwide patent pending which i know can take years to come through. they have been up and running since 2006.

I was told it will cost me anything from 1500 to get a search to see exaclty
if there "worldwide patent" covers Ireland.

so does that mean if there patent does not cover here i could plan ahead and try it,but if at any stage they did decide to cover ireland i would then have to stop selling.

515

Firstly 1500 for a patent search is crazy... I got one done when I started out for 300 and it was still a rip off. If you know what you are looking for you should be able to find the patent yourself, the databases are available:

Try here for European patents, but you can also select WIPO which should be what you're looking for. You can also try here for US patents... If you still can't find the info you need try calling the Intellectual Property section of Enterprise Ireland and explain what you are looking for, if you ask them nicely I'm sure they'll do a quick search for that for you.

It may be possible to see from the application they have filed whether they can still claim Ireland in the future. The thing about patents is that once they rule out Ireland they cannot re-elect it... So if they have already narrowed their countries down to the major markets you should be fine. But if they are still at an earlier stage then they may still have the option of selecting Ireland.

I'm still baffled as to why they wouldn't respond to your request to license from them... are you sure they are still in business?