Do I have any legal recourse regarding apparently conflicting patents? How? 5 Answers as of June 12, 2015

Someone has a design patent on my exact utility patent, same exact look, same exact function, same exact materials its made with. How did this happen? Do I have any legal recourse? This company has profited big time from my invention and I believe I have lost numerous wholesale and retail sales to them as I do not have the resources they do. I filed for the utility patent in early 2011 and was granted the patent in April 2013, they filed for the design patent in late. 2011 and it was issued early 2013. It is also my belief that a person associated with this company purchased the product from me prior to their filing as it is absolutely identical to my product.

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Eminent IP, P.C.
Eminent IP, P.C. | Paul C. Oestreich
The answer to your question is very fact specific and will require a review of both patents and the products being sold by your competitor. But, in principal, if you have a utility patent that "covers" their product and you in fact have priority over your competitor's version of your invention, you should have the full gamut of legal remedies available under US patent law. The difficulty is usually in making sure your patent actually "covers" their product. Furthermore, there may be ways to invalidate their patent if in fact your patent application anticipates their patent, or if your product or the disclosure of it was publicly available prior to their patent application priority date. We would be delighted to advise you if you need further assistance. Initial consultations are always free.
Answer Applies to: Utah
Replied: 6/12/2015
Michael M. Ahmadshahi
Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
Regardless of them having a design patent, you can sue them for infringing on your utility patent because utility and design patents protect different things. To that end, you should have an experienced patent attorney review your patent and the infringing product.
Answer Applies to: California
Replied: 6/12/2015
Microtechnology Law & Analysis | Daniel Flamm
Your writing sounds confused. You say someone has a design patent reading on your utility patent- this makes little sense. If this company has an interfering patent, and if there is significant value at risk, then you should engage a patent attorney. Based on what you say, I do not think you can handle this yourself. A good patent attorney can appraise your situation and advise you on the best course of action. Good luck.
Answer Applies to: California
Replied: 6/12/2015
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
Design patents to no include materials or functions, they are just ornamental drawings. You do have several other issues. The patent office currently operates on a first-to-file basis, but in 2011 it was first-to-invention. You appear to have priority for the filing date. If they used your product to file their patent then they falsely represented them self as the inventor and their patent should be invalidated. Further, if they had knowledge of your invention then they had a duty to notify the patent office about your invention as prior art. This would be inequitable conduct with the patent office. You could send them a cease and desist letter, but you (or your patent council) should first research the patent records and your allowed claims to determine the best way to proceed.
Answer Applies to: California
Replied: 6/12/2015
Banner & Witcoff, Ltd. | Ernie Linek
Talk to a patent attorney. See if your utility claims actually cover the design patent and the product sold under that patent. If any "single" claim element in your invention is missing - the accused product does not literally infringe. Then check the "doctrine of equivalents" - is the accused product essentially the same as yours, doing the same thing your does, in substantially the same way? If not - then the accused product does not infringe under the DOE. If you find infringement - you will need to sue in Federal Court. There are some companies on the Internet that will sue for you - taking part of any recovery from the infringer.
Answer Applies to: Massachusetts
Replied: 6/12/2015
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