What should I do if I found a prior art on a tool being sold now? 9 Answers as of January 07, 2014

I found prior art at Google Books. Popular Science 1956, April, page 238. A tool named ClampTite is being sold today. The owner of this tool has a patent yet there is prior art of this same tool. I want to make and sell my own version of this tool. Will I be safe from litigation?

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Law Office of Robert M. White, PLLC
Law Office of Robert M. White, PLLC | Robert M. White
You're correct that the Popular Science article you've cited represents prior art with respect to the ClampTite tool. Even so, it is assumed that the United States Patent and Trademark Office (USPTO) considered not only this prior art reference but a number of others disclosing tools similar to the ClampTite tool you've mentioned. In fact, the patent application from which the ClampTite patent (US5148577) was granted, which indicates E. Ray Silvey as the original inventor, references several earlier patents covering similar tools.

For example, a patent granted in 1911 to Simon Schlangen (US1012282) discloses a hose-tie wrench. Others include US899657 in 1908, US1072301 in 1913, US1453940 in 1923, and US2421878 in 1947. In all, 20 patents were cited in the E. Ray Silvey patent application, each covering tools providing a similar function as the ClampTite tool. The original Silvey patent, though, was granted in 1992, which means that it has expired. However, Silvey's daughter was granted a much more recent patent in 2006. As such, it maintains several additional years of exclusivity, which prohibits others from making or selling products that infringe upon those rights granted by this patent.

Even though a patent exists covering aspects of the ClampTite tool, this doesn't mean that an inventor cannot design around this patent. For example, an inventor may create a tool that functions more efficiently or design a tool functioning in a similar way but has a different appearance. An experienced patent attorney can help you determine if your idea for a wire/clamp tool is patentable in light of the prior art that exists. Pursuing the making and selling of your idea without patent counsel may expose you to potential litigation.
Answer Applies to: North Carolina
Replied: 1/7/2014
DANIEL NESBITT
DANIEL NESBITT | Hasse & Nesbitt
Contact a patent attorney and present them with all the facts you mention. It may be a open-and-shut case, or there may be nuance that the attorney might spot.
Answer Applies to: Ohio
Replied: 12/17/2013
Brown & Michaels PC | Michael F. Brown
I want to make and sell my own version of this tool. Will I be safe from litigation? No, you will not be safe from litigation. Anyone can sue you for anything, and if they have an issued patent they might well decide to sue you for infringement. You could provide them with your prior art when they send you a Cease-and-Desist letter before the suit (if they do), and they might go away - but then again, they might not. You might be safe from LOSING an infringement suit IF the prior art you found would invalidate the patent - but determining validity is not an easy task, and really one which requires a professional opinion if you're going to deliberately infringe a patent in the belief that it's invalid. The court's not going to be happy if you say that you looked at the patent and decided on your own to infringe it because you were sure you had prior art. Having a professional say that the patent is invalid due to prior art isn't a "get out of jail free" card, but it would go some ways toward insulating you from enhanced damages for willful infringement if the court disagrees and decides in favor of the patentee. And, of course, the prior art you found might not invalidate the patent at all.
Answer Applies to: New York
Replied: 12/17/2013
David M. Driscoll | David M. Driscoll
Consult a patent attorney. The attorney would have to review all the facts (patent number; copy of publication; etc.) to render an opinion.
Answer Applies to: Massachusetts
Replied: 12/17/2013
Banner & Witcoff, Ltd. | Ernie Linek
You will NOT be safe from litigation - even with prior art "in hand". The patent is presumed to be valid - until someone shows by clear and convincing evidence that it is invalid. You can submit the prior art to the Commissioner of Patents and ask that a reexamination be conducted - but they will likely not do so. You can also send a copy of the prior art to the Patent Owner and ask them to do the same - have the patent reexamined - but again, it is unlikely that they will do so. If you have the funds - you can file a reexamination request of the patent (expensive); or seek to have the patent invalidated using the new Inter Partes Review procedure (very expensive).
Answer Applies to: Massachusetts
Replied: 12/17/2013
    Michael M. Ahmadshahi
    Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
    The term "prior art" has a legal meaning. If the book is in fact "prior art" to ClampTite, then the patent is invalid and you should not be worried about any litigation. However, only an expert, like a patent attorney or patent agent, can make such a conclusion and in the end, only a court can resolve the validity of the patent. In general, patents are obtained on improvements on existing technology. Therefore, just because the book describes a clamp that's similar to the ClampTite doesn't mean it is "prior art" to it and the patent maybe valid. Similarly, your version of the tool can still be patentable, if it has utility, is novel, and is nonobvious. The short version is that you should consult an expert regarding the validity of the patent in light of the book.
    Answer Applies to: California
    Replied: 12/17/2013
    Microtechnology Law & Analysis | Daniel Flamm
    1. There will be no "guarantee" against litigation, unless the patent is found to be invalid by the USPTO or a court of law. 2. You didn't say whether the tool you propose to sell is really covered by the patent(s)- in other words, please obtain a copy of the patent and compare all of the elements of every one of its *claims* to your tool. 3. Does your tool have every element of at least one claim in the patent. If yes, you are infringing. If no, you will not infringe. 4. If yes to #3, ask whether the prior art reference you have found actually has every element in each claim of concern. If the prior art reference does not have every element of the reference, invalidity might still be found under obviousness. However proving obviousness is likely to be more difficult than anticipation (anticipation=having every element). If the prior art reference has every element of a claim, that claim should be found invalid by the USPTO or a court of law. 5. If there is anticipation (#4), you can either have the patent invalidated or request the patent holder to grant you a license to manufacture and/or sell your product without payment of any royalty. Then you will not be liable for selling your product. 6. Unless you experienced with patent prosecution and licensing, you would be well advised to retain an attorney to help you with these things. 7. If you conclude that your tool is not covered by the patent claims and/or that the prior art reference anticipates the patent claims, you nonetheless would be well advised to retain a professional to confirm your analysis before selling your own tool.
    Answer Applies to: California
    Replied: 12/17/2013
    Barton Barton & Plotkin
    Barton Barton & Plotkin | Maurice Ross
    No you will not be safe merely because you found prior art. You should retain litigation counsel to challenge the validity of the patent in the patent office or in court. You should not assume that the prior art you found is sufficient to invalidate the patent. To the contrary, patents are presumed valid and it is quite possible that the patent claims when interpreted by a court will be distinguishable from the prior art. You need to retain experienced IP litigation counsel to advise you.
    Answer Applies to: New York
    Replied: 12/12/2013
    Wright Law Group, PLLC
    Wright Law Group, PLLC | Mark F. Wright
    The only way to ensure non-infringement of a patent is to have a qualified legal professional perform an infringement analysis. This is accomplished by comparing the claims of the patent to the item that allegedly infringes the patent. Even if the Popular Science article describes the exact same item as what is being sold today by the patent holder, that doesn't immunize you from a potential lawsuit and there is never any guarantee that you will be "safe from litigation." Anyone can sue you for patent infringement, even if they ultimately lose. Sometimes a patent holder may sue a competitor, even if they think they will lose, in an effort to thwart competition, particularly if the person being sued is a small company with limited resources. Prior to proceeding with the sale of any potentially infringing item, it would be a very good idea to contact a registered patent attorney for advice that is specific to the facts of your case.
    Answer Applies to: Arizona
    Replied: 12/12/2013
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