Tag Archive: legal_advice

Someone Copied Your Product. What Next?

Someone Copied Your Product. What Next?

Posted by Inc. in Legal and Insuranceon Nov 8, 2012 2:04:36 PM

by Vanessa Merit Nornberg


Taking legal action is costly and time-consuming. Here’s how to weigh whether you (really) need to.


A company is using your trademark without authorization. Someone copied one of your products. As a human being, your first response is to get furious. As an entrepreneur, your inclination is to seek justice. As a business owner, your course of action is to contact a lawyer.

Taking legal action, however, is both expensive and time-consuming. I have learned the hard way to maximize my company’s resources and minimize our losses by carefully weighing the dollars and sense of my legal options. Here’s how.


Define the business goal of your legal action.

Thinking about what outcome you need for your business is crucial, because it will help you decide if engaging in legal sparring is necessary, or if there might be another way to solve your problem. In the event that you decide to contact a lawyer, being able to clearly articulate what you need to get from the situation is important in helping your legal team find a strategy that will help you resolve the situation in the way that you’d like. A few years ago, for example, I noticed another company using a very similar brand name to ours on a type of product we did not produce but that was closely related to and in the same industry as our products. I was concerned that the other company’s product might be mistaken for something we sell, or that that company would eventually try to branch out into our product types with a similar brand. Rather than litigating the issue in court, our lawyers crafted a coexistence agreement that guaranteed that the other company could use the similar brand name only on the one specific product that was not related to ours. In exchange, we agreed not to use our brand name on a product the other company sold. Had I not been clear with the lawyer that I had limited resources to protect this particular aspect of our business, we might have embarked on a very different and far more costly legal journey.


Ask for capped legal fees.


Legal costs add up quickly, and what can appear to be a straightforward case can go on long beyond your expectations. If you have to engage in a protracted session of back and forth, ask your attorney to agree to a capped fee so that you can better anticipate the expense. In addition, ask him to inform you at regular intervals how many hours (and dollars) are accumulating on your case. Being kept informed as you go along can help you budget in the short term and also keep your legal team focused on getting results–without having to edge near bankruptcy.


Patent Upending: What Small Businesses Need to Know About Recent Patent Law Changes

Patent Upending: What Small Businesses Need to Know About Recent Patent Law Changes
By Sherron Lumley.

Vast changes to U.S. patent law—the most sweeping since 1952—are rolling into effect through 2013, and for small business owners and inventors with patents, it’s time to get in the know. The U.S. Patent and Trademark Office is working under a new law, called the America Invents Act of 2011 (AIA). It was signed into law on September 16, 2011, with some elements taking effect immediately and others being phased in over an 18-month period.
PQ_PatentUpending.jpgGet that patent filed

John Boyd is a patent attorney in New York and he also holds five patents himself that he sold to Apple in 2010. Historically, the first-to-invent system relied on various methods to prove the date of the invention. “This is no longer the case,” says Boyd, a partner at Rimon Law PC in New York. “Now it’s whoever files first, and this harmonizes us with international law,” he says.

Indeed, getting the U.S. in line with the times was a key motivator behind the patent law reform, seen by many technology firms as long overdue. Supporters of the new law included the likes of 3M, Apple, Dell, eBay, Facebook, General Electric, Google, IBM and the Small Business & Entrepreneurship Council representing more than 100,000 members.

“There’s been a lot of concern in the small business world about the changes to patent law,” says Boyd. As an inventor and an attorney, he is not only interested in the current law changes, but can see the pros and cons clearly from different perspectives.

The core AIA change to patent law is to do away with the old system that gave preference to first-to-invent dates and adopt the international standard of first-to-file. This means for all patent applications having a filing date on or after March 16, 2013, the new patent law takes effect and the first person or entity to file will be granted the patent regardless of who can prove they invented it first.
What’s to like in the new law for small businesses

Judith Szepesi has been a patent attorney for 15 years and is a partner at Blakely Sokoloff Taylor & Zafman LLP in Sunnyvale, Calif., in the heart of Silicon Valley. She works primarily with start-ups and small businesses and focuses on intellectual property protection in the software, hardware, security, and telecommunications industries. And for fun, “I do write the occasional bicycle seat, manual toy, or other mechanical device patent,” she notes.

Szepesi follows patent law carefully for her clients large and small, and points to one piece of good news for small businesses. The AIA has added a micro-entity status for very small inventors with no more than four patents (not including those assigned to an employer) and with gross income of less than triple the national median household income. Although a 15 percent patent fee increase went into effect with the new law on September 16, 2011, Szepesi says a file fee reduction of 75 percent is on the way for micro-entities, pending further definition by the fee setting authority of the U.S. Patent and Trade Office.

One part of the AIA law that has already gone into effect—which, according to Szepesi, can be an key advantage to small inventors—is that the Patent Office now permits virtual marking of products. “Previously, whenever a new patent was issued or a patent expired you would need to change your packaging to reflect the updated patent coverage,” she explains. “Under virtual marking, the product can be marked with a URL (such as the company’s website) and the company can simply update the website when patent coverage changes.” This can be a big plus for a small manufacturing company, as they would no longer have to spend money reworking or buying all new dies when their patent coverage changes.
Potential concerns

Some in the patent industry, however, worry that the impact of this patent reform might weaken the rights of patentees and, as a result, patents owned by startup companies, research institutions, and solo inventors might be easily encroached upon by large corporations. Alexander Poltorak, CEO of General Patent Corporation and founder of the American Innovators for Patent Reform, suggests small inventors and small business owners have their patent attorneys regularly review their current inventions to determine which will require patent protection, and then file a provisional application as soon as possible under the new first-to-file law. And if a small business does suspect a patent infringement Poltorak says it’s imperative to hire a good patent attorney who is experienced in litigation.
Additional links from the U.S. Patent and Trademark Office

AIA timeline and effective dates

Independent Inventors Newsletter

Patent Forms (web-file)

Inventor Resources

Scam prevention

For more information regarding specific patent law changes and potential impacts to your business, you should consult an experienced patent attorney.