Any patent attorneys in the house?

We seem to have just about every profession represented on here, so do we have any patent attorneys in the house?

At work we’re developing a new version of an existing technology, using a new material and process for some parts.  As we move towards a production solution we’re investigating all patents for this type of component, to make sure we’re not infringing anything.  There is one patent, that we as Engineers think may be an issue.  Not for our new technology, but for other areas of the component that are basically universal to the industry and similar parts.  We passed this on to head office for patent attorneys to look at. Note, we’re not big enough to have an OGC, we use outside council.  The problem is that being a foreign company the attorneys are based there and we have some language issues. 

I’m not trying to get legal advice for free, but I’m having trouble understanding a concept, and I’d appreciate any incite on.  The best way I can explain is as follows:

• Let’s assume that every car made for the first 100 years of the automobile had two doors and two seats.
• Say that about 20 years ago someone had the bright idea of making four door, four seat cars – This is not related to our technology, let’s say we’re replacing the glass with congealed fly spit, but we still need to make the cars, both 2/2 and 4/4, including the body shell.
• People started patenting various ideas and process for making four door/seat cars in that last 20 years
• Some one appears to have come along AND BEEN GRANTED a patent that would basically be “We are patenting spot welding car bodies together for four door/seat cars”  Now, spot welding has existed for over a century and has been used for joining metal for all that time. It’s been used for making two door/seat cars for decades as well, but it hasn’t been used for making four door/seat cars, so they’ve patented it and now no one else can use it.

Now obviously it’s more complicated than that, but it’s basically what’s happened from what we can see.  We’re looking to get approval to retain local council, so I’m not looking for free legal advice, just some geneal pointers while I wait out internal bureaucracy

Thank you fountain of all knowledge that are the GRM forums!

It is easy to patent things that can not be defended. So people do it so that people in your situation have a barrier to entry. 

When doing patent searches I would read the abstract/intro and go straight to the claims. Pretty much anything in the middle is a distraction.

How many years are left in the obstructing patent?

Thx.

I forget right now, but it's in double digits.

In reply to Adrian_Thompson (Forum Supporter) :

Well you then need to read the claims and see if What they are doing is done using the same steps that you are using. If it is close, off to the lawyer it goes. 

Problem I had with patent lawyers is that they were all too eager to fight your cau$se for you at your expens$e. Got a few applications over the fence, but other than wall trophies and pissing rights, cant say as they made anyone rich. Perhaps some barriers to entry for competitors in NA. Makes for a good sales blurb when releasing a new product.

In reply to Adrian_Thompson (Forum Supporter) :

Hey Adrian. Im a patent agent not a patent attorney, so I can't really comment on the enforceability and infringement status of a patent or technology. Here is my website.

However, I can comment on what certain patents do cover and what may have made them novel and non-obvious. (Two of the main factors in determining patentability.)

In your example, spot-welding has been a known method in the art of car and metal fabrication for years. So spot-welding a 4door car would be an obvious derivation of spot-welding 2door cars, also a known method in the art in your example. So my questions would be as follows:

• What ELSE are they doing that factors into the patentability?
• Are they using certain methods that havent been used before?
• Have they figured out using a tool in a location that wasn't feasible before? 
• Have they specialized the actual spot-welding tool?

These kinds of factors can play a big part in patentability determination and can provide basis for arguments against an examiner's prior art based rejections.

If you have other generic questions that dont get into your tech I'm happy to field them on here. Or if you would like to ask some more direct questions pertaining to your tech, we can take it offline. 

PS — If you are asking yourself: What is a Patent Agent?

In short, Patent Agent can do everything a Patent Attorney can do as far as GETTING a patent — drafting, the back-and-forth with the USPTO, etc. — but cannot enforce a patent or represent you in court in matters involving infringement etc.

In reply to Adrian_Thompson (Forum Supporter) :

Patents (since 1995) have had a 20 year lifespan.

• Utility Patents — Anything over 20 years from earliest filing date will be expired.
• Design Patents — Anything 14 or 15 years from the date of issue (they increased it in May of 2015) will be expired.

There are some nuanced exceptions to this based on the USPTO taking too long in their examination process, but it is quite easy to determine if a patent is still active or expired. 

NOHOME said:

When doing patent searches I would read the abstract/intro and go straight to the claims. Pretty much anything in the middle is a distraction.

Yes and no. To determine what the application covers in the claims, this is spot-on. But it doesnt inform you as to what the patent portfolio COULD cover...

If a company is serious about their patent portfolio, they will often keep a chain of patents linking back to the first. This is standard practice. To do so, they will always have a pending patent.

And if this is the case, and for instance you find a design-around strategy to circumvent their claims... they can always amend claims in a pending application or file another application which links back to the first. And if they have the support for claims that would cover your design around... you could find yourself in some hot water down the road.

My professional advice here is that this stuff is so important you probably don't want to ask a bunch of chuckleheads on a message board. To make decisions like this also think about the business impact of any analysis you are doing. If you could end up infringing, what is the likely cost of licensing/litigating vs the business gains of this new idea? Big differences in order of magnitude could be at play here.

Thanks guys, especially Vozproto.  The patent is absolutely still in effect, it's just that we're reviewing probably 30 plus patents, some current, some expired that we're effectively data mining, so I forget the specific date.  It was actually granted Dec 2018, so very much is in play.  We're going to be meeting with a US based council soon, so I'll have to ask more there.  I don't want to put too much info here as there are plenty of people in the industry on this forum.  

Adrian_Thompson (Forum Supporter) said:

We're going to be meeting with a US based council soon, so I'll have to ask more there.  I don't want to put too much info here as there are plenty of people in the industry on this forum.  

I approve this message. :P