Patent question

[pstroud]

If someone has a patent pending on a device in another country, what are the legalities of building and using that device here in the USA?

Just curious.

Preston

[jim_mich]

If the patent is still pending and not issued yet then anyone anywhere can build and use the invention. Only after a patent is issued are there restrictions on building, selling and using the invention. And those restriction only pertain to the country where the patent is issued. The laws of other countries are not valid or enforceable in the USA.

If the inventor files a patent application in the USA and if the patent is granted then the inventor has the "right" to ask you to stop building, selling, and using the invention in the USA. If you stop building, selling and using the invention then you have no problem. Only if you continue to build, sell or use the invention then the inventor has the "right" to haul you into court and sue you for damages that you have done to his potential business. Or the inventor can offer you a contract that allows you to continue building, selling and/or using the invention in the USA.

I'm not a patent lawyer so this is just my layman's understanding of the law.

[pstroud]

Thanks Jim and also Ralph (via email) for the info!

Preston

[Jim Williams]

The inventor has 12 months, (6 months for a design patent) to apply for an American patent after any foreign application has been made if American protection is desired.

[pstroud]

Your comment about a 12 month limit is interesting.....

If a foreign country patent "application" was made 3 years ago and is currently being processed by that government, what does that mean for receiving a US patent afterwards? Can that person still apply for a US patent?

I'm very curious about the impact on a person in the US that may have started commercially utilizing a device involved in a 3 year old patent application in a foreign country. What will the future liability and consequences be?

Thanks again for all the feedback.

Preston

[jim_mich]

If a foreign application was made three years ago then it is too late to file for an American patent. The inventor has 12 months to apply for an American patent after first disclosing the invention. Filing in a foreign country usually constitutes disclosure.

If an application has not been filed in the USA within 12 months of the foreign patent application being filed then the invention is most likely no longer patentable in the USA and Americans are free to make, sell and use the invention.

I'm not a patent lawyer so this is just my layman's understanding of the law.

[Jim Williams]

I am not a patent lawyer either, I just looked up the law at www.uspto.gov The law states that the inventor must file for a US patent within 12 months after making application for a foreign patent specifically and six months for a design patent. It cites US Code 35 Section 172. What Jim said makes sense and is also true.