4 ms·

Is it possible for someone to file a patent and then come back and sue me after their patent is granted? Yes. The date of the patent application is the determ

by Vivtek 15y ago

Is it possible for someone to file a patent and then come back and sue me after their patent is granted? Yes. The date of the patent application is the determining date for a patent. I'm thinking that since they filed the application after you were already online, you're probably more or less OK, but patent law is weird. Am I even in danger or is this just an empty threat? My money's on empty threat.

qeorge 15y ago
My money is on empty threat too. If he had a real case, he'd have "come harder" than he did (i.e., you'd have gotten a letter from an attorney, at least) Best of luck, bud. Don't let it distract you too much. :)
- deadsy 15y ago
  Filing a patent doesn't mean anything at all. If the patent issues AND the claims read against your practice AND the filing date predates your practice of the invention then he could reasonably claim infringement. Sending an email to someone simply because you have filed is amateurish. The guy sounds like an idiot.
- throwaway16189 15y ago
  It was like "I am the CEO of blah, we just filed a patent..." stuff like that. I should have realized this sooner, that if it was indeed a real challenge from someone with actual meaning they would have come with lawyers, and not some guy claiming to be a CEO of somewhere. Guess I got the jitters too quickly. I feel better now though :)
- swombat 15y ago
  This excellent article comes to mind: http://swombat.com/2010/12/15/how-to-handle-lawyers-threatening-you http://swombat.com/2010/12/15/how-to-handle-lawyers-threaten...
hugh3 15y ago
I don't think it's even an empty threat. He's worried that you'll mess with him. He's filed for a patent application on something similar to what you do, but which does not in his opinion cover what you do (because he couldn't patent it if you did). He's sent you an email to specifically clarify that his patent application doesn't overlap with what you do, just to make sure you won't cause trouble for his application. Now, if he knew what he was doing he probably wouldn't have sent this email at all, because if you know what you're doing then you'll let your patent attorney handle all communication to do with your patent application. Anyway, I wouldn't worry about this guy. Unless you really want to go and look at the patent application, decide whether it does in fact clash with your prior art, and object to it on those grounds. But unless you're dying of free time or swimming in cash it's not worth the effort and/or expense.
vaporstun 15y ago
Yes. The date of the patent application is the determining date for a patent. I'm thinking that since they filed the application after you were already online, you're probably more or less OK, but patent law is weird. This is just wrong. I'm growing increasingly frustrated at the number of users here on HN misquoting everything about patents. If you don't know or understand it, it's best not to comment. If this were something technical and you didn't really know the answer and answered as if you did, many people here would be up in arms. This is no different. That said, while a patent term is calculated from the date of filing, a patentee has no rights until after the patent issues. So if the entity making threats against you has a patent which issues (which sounds like a big if), he can sue you, but only for your acts of infringement after the date the patent issues. Since the patent has not issued yet, he could not sue you for your actions between now and the issue date, only for actions post-issue because that is when that entity's rights begin.
- briggsbio 15y ago
  Agreed. Also, depending on this joker's priority date, IF his patent is issued you have a period to contest the validity of his patent by submitting proof you were live (or other documentation showing your invention) and thus your work would be considered prior art. His patent application will be posted on USPTO sometime in the future depending on when the application was submitted (and well before it is issued, IF it is even issued) so you will be able to see what his claims are. Ask him for his patent application number, collect ANYTHING you have that shows the earliest point you went public with your invention, and CONTACT A LAWYER. DO NOT give him a dime.
- Symmetry 15y ago
  I'm confused. Is there a way in which what you said contradicted what the parent post said? You seem to be talking about whether the patent can be used before it is granted (obviously not), but the grandparent was talking about whether prior art from between the application and granting would be considered (it won't).
  - vaporstun 15y ago
    Yes. The parent post to which I responded said The date of the patent application is the determining date for a patent. when discussing whether or not he could be sued post-issue and that is not true. There are 2 dates, the date a patent is filed (which determines term) and the date a patent was issued (which determines rights). Infringement taking place between the date of filing and the date of issue cannot be retroactively litigated in spite of the fact that it occurred during the term of the patent. The main issue is that there are 2 dates for a patent, and the post to which I responded gave an answer with no clarity or regard for the disparity and seemed to indicate that the OP could be liable for retroactive infringement which is untrue. It is just dangerous when people here on HN give advice on patent law issues. They are very complex. This is similar to if you went to a lawyer forum and they all claimed to be experts on web technologies, dishing out bad advice (ASP is totally the way to go these days, that ruby on rails thing I hear is a virus that breaks email printers. Therefore, always use Microsoft servers.), but the consequences here are more dire. If you saw lawyers saying that, you'd probably have a brain aneurism.
anamax 15y ago
> The date of the patent application is the determining date for a patent. Not in the US. The date of invention, if it isn't more than 1 year before the application and is documented, can be the priority date. Date of "publication" also matters. (In the US, one can publish before filing. In many other jurisdictions, publishing is a bar to filing.)
- vaporstun 15y ago
  This is also mostly wrong. You are right in that the date of invention in the U.S. is a useful date, but it only means that in the event of a conflict either during patent prosecution or on a challenge to validity later, he who can show they had an earlier date of invention will "win". In the rest of the world, it is the date of application that determines who ends up with the patent rights in the event of such a dispute. But it is not a priority date. This is like calling a router a switch and claiming they are the same thing. Quite different in fact. The date of invention is not determinative for things like infringement (again, short of patent invalidity), and the date of invention is never written down anywhere. It only comes out in the case of a conflict. The date of filing IS a determining date for the term of the patent - it last for 20 years from the date of filing. Further, the date of invention is not a "priority date", that is the earliest date for which an application can claim priority. An application cannot claim priority from an arbitrary date of invention, it can only claim priority from an earlier filed application here or abroad. Basically, you can never say, "Patent office, I invented this widget on this day" and have them say, "Ah yes, your patent term starts then." Your earliest priority date is your earliest filing date either here or abroad.
  - anamax 15y ago
    Actually, it's mostly right. The question, as I understood it, was "how can he apply for a patent on something that I'm shipping". The answer, in the US, is that he can claim to have invented it first. No, none of this goes to patent term, but he's not concerned about now, he's concerned about the future, if his product is successful, after the patent issues (if it issues). It seems reasonable to assume a conflict given that a conflict is why he posted.

by Vivtek 15y ago

qeorge 15y ago

My money is on empty threat too. If he had a real case, he'd have "come harder" than he did (i.e., you'd have gotten a letter from an attorney, at least) Best of luck, bud. Don't let it distract you too much. :)

deadsy 15y ago
Filing a patent doesn't mean anything at all. If the patent issues AND the claims read against your practice AND the filing date predates your practice of the invention then he could reasonably claim infringement. Sending an email to someone simply because you have filed is amateurish. The guy sounds like an idiot.
throwaway16189 15y ago
It was like "I am the CEO of blah, we just filed a patent..." stuff like that. I should have realized this sooner, that if it was indeed a real challenge from someone with actual meaning they would have come with lawyers, and not some guy claiming to be a CEO of somewhere. Guess I got the jitters too quickly. I feel better now though :)
swombat 15y ago
This excellent article comes to mind: http://swombat.com/2010/12/15/how-to-handle-lawyers-threatening-you http://swombat.com/2010/12/15/how-to-handle-lawyers-threaten...

hugh3 15y ago

I don't think it's even an empty threat. He's worried that you'll mess with him. He's filed for a patent application on something similar to what you do, but which does not in his opinion cover what you do (because he couldn't patent it if you did). He's sent you an email to specifically clarify that his patent application doesn't overlap with what you do, just to make sure you won't cause trouble for his application. Now, if he knew what he was doing he probably wouldn't have sent this email at all, because if you know what you're doing then you'll let your patent attorney handle all communication to do with your patent application. Anyway, I wouldn't worry about this guy. Unless you really want to go and look at the patent application, decide whether it does in fact clash with your prior art, and object to it on those grounds. But unless you're dying of free time or swimming in cash it's not worth the effort and/or expense.

vaporstun 15y ago

Yes. The date of the patent application is the determining date for a patent. I'm thinking that since they filed the application after you were already online, you're probably more or less OK, but patent law is weird. This is just wrong. I'm growing increasingly frustrated at the number of users here on HN misquoting everything about patents. If you don't know or understand it, it's best not to comment. If this were something technical and you didn't really know the answer and answered as if you did, many people here would be up in arms. This is no different. That said, while a patent term is calculated from the date of filing, a patentee has no rights until after the patent issues. So if the entity making threats against you has a patent which issues (which sounds like a big if), he can sue you, but only for your acts of infringement after the date the patent issues. Since the patent has not issued yet, he could not sue you for your actions between now and the issue date, only for actions post-issue because that is when that entity's rights begin.

briggsbio 15y ago
Agreed. Also, depending on this joker's priority date, IF his patent is issued you have a period to contest the validity of his patent by submitting proof you were live (or other documentation showing your invention) and thus your work would be considered prior art. His patent application will be posted on USPTO sometime in the future depending on when the application was submitted (and well before it is issued, IF it is even issued) so you will be able to see what his claims are. Ask him for his patent application number, collect ANYTHING you have that shows the earliest point you went public with your invention, and CONTACT A LAWYER. DO NOT give him a dime.
Symmetry 15y ago
I'm confused. Is there a way in which what you said contradicted what the parent post said? You seem to be talking about whether the patent can be used before it is granted (obviously not), but the grandparent was talking about whether prior art from between the application and granting would be considered (it won't).
- vaporstun 15y ago
  Yes. The parent post to which I responded said The date of the patent application is the determining date for a patent. when discussing whether or not he could be sued post-issue and that is not true. There are 2 dates, the date a patent is filed (which determines term) and the date a patent was issued (which determines rights). Infringement taking place between the date of filing and the date of issue cannot be retroactively litigated in spite of the fact that it occurred during the term of the patent. The main issue is that there are 2 dates for a patent, and the post to which I responded gave an answer with no clarity or regard for the disparity and seemed to indicate that the OP could be liable for retroactive infringement which is untrue. It is just dangerous when people here on HN give advice on patent law issues. They are very complex. This is similar to if you went to a lawyer forum and they all claimed to be experts on web technologies, dishing out bad advice (ASP is totally the way to go these days, that ruby on rails thing I hear is a virus that breaks email printers. Therefore, always use Microsoft servers.), but the consequences here are more dire. If you saw lawyers saying that, you'd probably have a brain aneurism.

anamax 15y ago

> The date of the patent application is the determining date for a patent. Not in the US. The date of invention, if it isn't more than 1 year before the application and is documented, can be the priority date. Date of "publication" also matters. (In the US, one can publish before filing. In many other jurisdictions, publishing is a bar to filing.)

vaporstun 15y ago
This is also mostly wrong. You are right in that the date of invention in the U.S. is a useful date, but it only means that in the event of a conflict either during patent prosecution or on a challenge to validity later, he who can show they had an earlier date of invention will "win". In the rest of the world, it is the date of application that determines who ends up with the patent rights in the event of such a dispute. But it is not a priority date. This is like calling a router a switch and claiming they are the same thing. Quite different in fact. The date of invention is not determinative for things like infringement (again, short of patent invalidity), and the date of invention is never written down anywhere. It only comes out in the case of a conflict. The date of filing IS a determining date for the term of the patent - it last for 20 years from the date of filing. Further, the date of invention is not a "priority date", that is the earliest date for which an application can claim priority. An application cannot claim priority from an arbitrary date of invention, it can only claim priority from an earlier filed application here or abroad. Basically, you can never say, "Patent office, I invented this widget on this day" and have them say, "Ah yes, your patent term starts then." Your earliest priority date is your earliest filing date either here or abroad.
- anamax 15y ago
  Actually, it's mostly right. The question, as I understood it, was "how can he apply for a patent on something that I'm shipping". The answer, in the US, is that he can claim to have invented it first. No, none of this goes to patent term, but he's not concerned about now, he's concerned about the future, if his product is successful, after the patent issues (if it issues). It seems reasonable to assume a conflict given that a conflict is why he posted.