Brianh Posted January 11, 2008 Report Share Posted January 11, 2008 I need to know something, and from what I have read, you guys are in the know. I have a bait I sell that was introduced to me by a Japanese friend. The bait has been around for over 8 years in Japan, and we have found this bait available in the import market. Now, there is a US patent on the bait that is from 2004, saying it is an ornamental "new " design. Well, it is obvious that it is not new, has been around for a long time before this company got the "new" design patent. So, when I get a letter from their lawyer today saying that we are to cease and desist from selling them, I freaked. There are at least 2 or 3 versions of this bait. Is this just a scare tactic? I have looked at the patent and it is a valid pattent, but can it be contested since the design has been around well before? I mean it looks like a little fish! I am not even making a profit on the bait yet, so what the heck are they going to get from me..... Brian Quote Link to comment Share on other sites More sharing options...
Legendary Posted January 11, 2008 Report Share Posted January 11, 2008 I guess to better answer this question were you producing the bait before them, if you can prove it I believe they dont have a case. Quote Link to comment Share on other sites More sharing options...
Delw Posted January 11, 2008 Report Share Posted January 11, 2008 Brian thats a tricky one, but generally if its been produced before than patent date there is not much they can do about it. but its up to YOU to prove it not them. We get lots of baits from Japan and some of my customers run into the same problem. most are scare tactics. if you call the patent office those people are really helpful and can explain most. if its really tricky its best you talk to a lawyer as anyone including myselfs advice may or maynot get you in trouble. Also the patent office will only go so far as they cant say to much in depth cause it may be wrong info from the wording they get from you. patent by ornimental is a very vague patent and is a tricky one. also read everything reguarding that patent as sometimes they will show the whole bait but only a certain section in one part and the placement of that part is patented. I am guessing that reaction inovations or 3:16 sent you the letter? they like to use the ornimental patent alot. and they do send out lots of letters. Delw Quote Link to comment Share on other sites More sharing options...
Spike-A-Pike Posted January 11, 2008 Report Share Posted January 11, 2008 Brianh']...US patent on the bait that is from 2004, saying it is an ornamental "new " design. First things first... Welcome to the TU fray Brian. I assume you meant original "new" design. There have been several similar threads like that discussed on TU, the most resent involving a member and Zoom (you can do a search to bring it up). I think the general consensus was that you couldn’t out right rip off the name or do an exact copy of the bait. It was a very long, emotional thread. You can contest the claim, but I think you’d need to find something that predates the patent like an earlier picture Japanese catalog or brochure, dated photo, something that predates their 2004 claim. And, that may not force them to call off their legal action. The lure industry is big time money, if they can force your hand and keep you off the market without having to compete with you they keep their 100 percent of market to themselves. You may want to get a paten lawyer at least listen to your story. Normally, the first hour is free. A better question might be how’d the other lawyers find out about you??? I found out about lawyers with my ex-wife, and yes, you get what you pay for. The more leg work you do, the less the lawyer has to research. Quote Link to comment Share on other sites More sharing options...
Spike-A-Pike Posted January 11, 2008 Report Share Posted January 11, 2008 Brian, I think this what you are wanting to apply; but the proof is may be the sticky part. Patent Laws That Apply to Design Patent Applications 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless - (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or © he has abandoned the invention, or .... Quote Link to comment Share on other sites More sharing options...
Delw Posted January 11, 2008 Report Share Posted January 11, 2008 First things first... Welcome to the TU fray Brian. I assume you meant original "new" design. . There really is a patent by ornimental design. reaction inovations used it on the sweet beaver bait Quote Link to comment Share on other sites More sharing options...
Spike-A-Pike Posted January 11, 2008 Report Share Posted January 11, 2008 Thanks Del. I learned my one new thing for the day, next topic, Code of Federal Regulations... some of my favorite light reading Brian: Of course you ment ornamental "new " design, I now know that..... Beer break! Quote Link to comment Share on other sites More sharing options...
halibaitor Posted January 11, 2008 Report Share Posted January 11, 2008 There is a timing issue here other than when the patent was issued. The patent coverage actually began when the patent procedure was STARTED. That can be several years prior to the patent actually being issued. This is why you will often see the phrase "patent pending" on a product. Proving anything is really tricky. That is because of lawyers and only benefits the lawyers. The patent office is VERY careful to NOT give any legal advice, as they don't want to be sued. This makes it difficult to get any information other than how to look something up. They can't even help you with the concept of "what something means." It's frustrating, but that's the way it is... Asking them legal questions is a waste of time. Terry Quote Link to comment Share on other sites More sharing options...
Brianh Posted January 11, 2008 Author Report Share Posted January 11, 2008 I appreciate the replies from everyone. I did a little more research, and even found a video in which the owner is lure company owner is stating the he "saw this unique design in Japan in 2002", and have researched with my Japanese buddy that the design had shown up somewhere around 1998. I actualy found the name of the company that sells the lure. Now to get down to brass tacks, my lure is the same outline, but does not have any of the lateral lines engrained into the plastic, or any of the hatch marks that run down the entire length of the body, but it was obvious that the bait was made from the first mold of the original design. The bait was readily available online thru the internet from a vendor in China, along with 30 or 40 other styles. This is very interesting how someone can patent a bait that may have been patented in Japan before. Brian Quote Link to comment Share on other sites More sharing options...
