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Richard - Bizlaw
Richard - Bizlaw, Attorney
Category: Business Law
Satisfied Customers: 10585
Experience:  30 years of corporate, litigation and international law
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I am a business owner in New York. I currently manufacturer

Customer Question

I am a business owner in New York. I currently manufacturer an apparel product that helps secure you to a bar or bench when exercising. It is a shirt I designed with silicone printing on the back to assist with grip. I was contacted by another company who also manufactures grip apparel who threatened to sue me if I continue selling my product. They claimed to have submitted a patent with the USPTO and hold a priority date on the intellectual property as of 7/19/2015. They have a patent pending on this grip apparel. Neither of us are the first to invent or make clothing with the intention to grip bars and benches for exercising. There have been companies doing this way before either of us and I have plenty of proof of this. I would like to submit this proof to the USPTO to invalidate their request for a patent and make sure legally I am good to go with selling my products. Thank you
Submitted: 10 months ago.
Category: Business Law
Expert:  Richard - Bizlaw replied 10 months ago.

Hello, my name is Richard and I will try to help you. Please remember I just report or interpret the law, so the outcome may not be what you hoped for.

Just because they have a patent pending does not mean they can prevent you from producing your product. Assuming what you each have is patentable, if you developed your apparel first, even if he had a patent you would be able to continue to produce your products without a license from the other party. If you independently develop something that is patentable, you are not required to license another's product.

These issues are highly technical and it is not something you can do on a do it yourself basis. It is highly fact specific and whether something is patentable can be highly technical. I strongly recommend you retain patent counsel to assist you.

If I have answered all your questions, please positively rate my answer as that is how I receive credit. If you have more questions, please let me know. If the answer was especially helpful you can provide a bonus.

Customer: replied 10 months ago.
Hey Rich thanks for your response however I was hoping for a little more direction. I would really like to submit the information I have which would invalidate this other company from ever receiving a patent. I am not trying to patent my apparel and when I was researching this years ago I found out that both Nike and Under Armour were unable to receive a patent for grip apparel. I have also been in touch with a company called Roizo who was manufacturing these shirts back in 2012 and he spent close to 12k trying to patent this technology and was unable to. I would assume that since this company that threatened me submitted a patent application that they would have some sort of reference number which would allow me to submit information against their patent claim to the USPTO? Can you please let me know how I should approach this and should I put my products back for sale on my webste? What can this other company legally do? I am trying to avoid any conflicts, fees, court, and legal issues. Thank you.
Expert:  Richard - Bizlaw replied 10 months ago.

The other company may or may not run into the same problem as some of the other companies you mentioned. Since it is clear that they did not provide you with any reference number to their application you can submit your position to Patent office and reference their company and the nature of the product. However, to achieve the goal you want you will need an attorney to make a coherent argument that they have brought nothing new to the area. The fact that something is novel is the critical criteria for obtaining a patent. Since I do not know all the details of the product or what they claim makes their product new, I cannot be more specific than that. If you do not want to spend any money, I suggest you put in a letter with whatever suppporting documentation you can muster in a letter to the Patent office in the hope that will make them lok carefully at the patent application.

If I have answered all your questions, please positively rate my answer as that is how I receive credit. If you have more questions, please let me know. If the answer was especially helpful you can provide a bonus.

Customer: replied 10 months ago.
Just to clarify I wanted to send you what this other company emailed me last week.
" I ask for you to remove the sale of any grip printed clothing from your website immediately.If the item(s) are still available for sale after 24 hours of this email I will ask my attorney to file for suit in federal court against your business for damages, attorney fees and court fees."
Since this company does not have a patent and has only filed for a patent does he have any right to threaten me and take me to court as he's claiming? What would hiring an attorney typically cost to help with a situation like this? Thank you for your help Rich I will make sure to review your services post conversation.
Expert:  Richard - Bizlaw replied 10 months ago.

What you have is an idle threat. Until he has a patent he has nothing on which to base a claim. The only thing they can sue you for now is if you stole what they claim to be their intellectual property. Since that does not appear to be the case, they have no basis for a claim. As for the cost of an attorney it is very difficult to say because I have no real idea of the nature of the product or what makes it unique or not unique. I would estimate it wiould cost you about $2,500-$3,000 to get an initial analysis by a patent attorney and from that evaluation you could decide how far you want to take the matter. You will not get an answer but the issues that have to be addressed and what it would cost to get a definite answer and a go forward strategy.

If I have answered all your questions, please positively rate my answer as that is how I receive credit. If you have more questions, please let me know. If the answer was especially helpful you can provide a bonus.

Customer: replied 10 months ago.
Would you be able to send me a digital letter with your letterhead simply stating that this company has nothing to base a claim on until they have a patent and a patent pending does not give them the right to sue or threaten my company. Let me know if this is something you can do. Thank you Richard!
Expert:  Richard - Bizlaw replied 10 months ago.

This site does not provide legal representation only legal information. Such a letter would consitutte representation in violation of site rules so I could not provide such a letter. I am sorry.

If I have answered all your questions, please positively rate my answer as that is how I receive credit. If you have more questions, please let me know. If the answer was especially helpful you can provide a bonus.

Expert:  Richard - Bizlaw replied 10 months ago.

I answered you question about a week ago. Since I have not heard from you I assume all your questions have been answered. Please highly rate my answer as that is how I get credit for working on your question.