My partners and I began the process of making child safety pajamas in 2008. The pajamas have webbing between the legs to prevent a child from lifting their leg over a crib railing and a zipper in the back to prevent removing the pajamas. We had a prototype made and did a patent search. The primary idea behind the product came from a parenting book that described the specific addition to the pajamas. We opted not to pursue a patent. We have recently decided to proceed with manufacturing and selling our pajamas, but have just discovered that someone was granted a provisional patent for the exact item in 2009 and a full patent in Sept 2010. What are our options?
Country relating to Question: United States
State (if USA): California
Hello and thank you for your question. It would be advisable to contact the owner of the patent to negotiate a license to prevent a claim of infringement.
So the patent would be defendable even though it was based on an idea published in a book? (My guess is that that person who got the patent was not aware of the book)
There is also a process of re-examination where you could challenge the patent as invalid if the book was published prior to the filing of the provisional patent.
OK. Final question... would we have any claim since we had made a prototype prior to their filing the provisional patent?
You would not have any claim to patent rights because you would have needed to file your own application. If you do not wish to pursue a license and would rather attempt to invalidate the patent through re-examination, the only evidence that can be used must have been published prior to the filing date of the provisional. So unless you published or publicly disclosed your prototype in some way, it would not be useful as evidence in a re-examination.
Also, please note that you only have one opportunity to request re-exam of a patent so it is advisable to consult with an attorney familiar with the process to ensure that your request is complete as possible.
Specializing in patent prosecution, trademark and copyright registration/enforcement.
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