QUESTION
I was served with a Cease and Desist letter from an individual claiming they put in a patent application for a similar design?
Asked on Apr 08th, 2022 on Intellectual Property - Oregon
More details to this question:
My partner and I have been designing a device called a “follower” that sits inside gun magazines so that guns designed to shoot a specific type of ammo can shoot different ammo. A company made these back in 2007 but stopped making them around the same time. Using our 3D printer we decided to design one from scratch with our own measuremeants, materials, and designs. We checked the patent database to make sure we weren’t infringe on others designs. However, we discovered a gentleman in the same Reddit community was doing the same thing and selling them on the internet. We realized that he started making his at the same time we did by doing some research. The other day we received a cease and desist letter in the mail, claiming we are infringing on his patent application and design? We aren’t sure how he found out where we live or even our names but he did. He threatened to sue us for copying his design (even tho we completely made our own and they were already made before so)?????
1 ANSWER
Patent Applications Filling and Prosecution Attorney serving Bellevue, WA
Partner at
Claiborne Patent Law Services
4 Awards
You can't infringe a patent application. A patent applcation does not become an enforeceable thing unless and until it issues as a patent.
You infringe a patent: if and only if the patent has issued, is valid and enforeceable; and if and only if you practice each and every element of at least one claim in the patent.
Was the cease and desist letter from the inventor or from an attorney? If the letter was from an attorney, I recommend you hire a patent attorney to review the letter and provide you with advice and guidance. Ask for a quote first. Sound advice and guidance needn't be terribly expensive, perhaps two billable hours. Shop around. Because patent practice is a nationwide practice, you are not limited to attorneys just in your jurisdiction. Any U.S. registered patent attorney should be able to assist you.
If the cease and desist letter was from the inventor or some other non-attorney, while not as urgent, it may nonetheless be prudent to obtain professional advice.
Answered on Apr 11th, 2022 at 9:23 AM