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Attorney Wayne
Attorney Wayne, Lawyer
Category: Intellectual Property Law
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Experience:  Practicing Law Since 2000
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can you help me figure out how to do a search for non-functional

Customer Question

can you help me figure out how to do a search for non-functional shaped parts on the uspto.gov website? i sell many small electronic replacement parts for cellphone and computers and i would think it would be tedious and expensive for a patent attorney to research each and everyone of my products one at a time....i need some tips on doing a basic search to see if I am in violation of patent infringement. Thanks
Submitted: 11 months ago.
Category: Intellectual Property Law
Expert:  Fran-mod replied 11 months ago.
I'm Fran, and I’m a moderator for this topic.

We have been working with the professionals to try to help you with your question. Sometimes it may take a bit of time to find the right fit. I was checking to see if you had already found your answer or if you still needing assistance from one of the professionals.

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Customer: replied 11 months ago.

i will wait for assistance. Thank you

Expert:  Fran-mod replied 11 months ago.

Thank you. We will continue to look for a professional to assist you. Please let me know if I can be of any further assistance while you wait.
Expert:  Attorney Wayne replied 11 months ago.
PLEASE DO NOT use the rating system until satisfied. Instead, please click REPLY TO EXPERT to continue our conversation.

Hello. Thanks for contacting us. You are right, it is a tedious process. But do-it-yourselfers can at least get basic knowledge on how its done. There's a series of useful tutorials at this link: http://www.uspto.gov/patents/process/search/

Here's another good resource prepared by a major university:
http://www.lib.utexas.edu/engin/patent-tutorial/tutorial/pattut.html

And here's a database that can be helpful -- but must be cross-checked against official databases (for instance, the United States Patent and Trademark Office or similar agencies in other countries). http://www.patentlens.net/patentlens/

You may also get some joy from the World Intellectual Property Organization database:
http://patentscope.wipo.int/search/en/search.jsf

The thing is, patent searchs only go so far. There are legal and technological subtleties that would eventually require legal analysis. Patent examiners usually have both law degrees and scientific or engineering degrees in particular fields. Indeed, lawsuits often focus on technical subtleties that patent examiners may not recognize (or may think are nonsensical, but they get into court because the pass the minimal standards to not be frivolous).

For this reason, people are wise to eventually bring a lawyer in. Understandably, many inventors have enough trouble funding their research and development expenses -- and legal fees can be a stretch if not impossible.

There are some services that at least do a technical search at lower cost than a lawyer charges. While they may miss subtleties (particularly those involving legal distinctions), they can be a useful, cheaper alternative for at least the early-on research. However, lawyers eventually will be needed to ensure that the combined legal and technological presentation of the invention is in a form that best avoids "prior art."

I wish you every success with your project!
Customer: replied 11 months ago.

it almost seems like the only way to know if you are in violation is once you receive the letter of cease and desist.... if i'm selling cheap electronic replacement parts with no logo and barely making much profit, would you advise that i should keep selling these parts at least until i receive a letter of cease and desist? again, I'm only starting out and hardly making much profit. If i have a hundreds of small replacement parts that only make me a few cents to a dollar...do i really have to go so far as to hire a patent attorney to research each and every little part? It's hard to imagine how anyone could even considering getting started with these costs in mind. Knowing that I'm not selling products with logos (just mainly internal replacement cell phone parts and other small electronics), do most small business just "wing it" and just drop everything once they receive the letter of cease and desist? Because even large corporations like Samsung and Apple being able to afford the best IP attorneys, there seems to be too much grey areas that only at the completion of a lawsuit is there clarity if or any were they in violation of a patent. In need of practical advice for a small repair/parts company that does not have much $$$ for startup capital

Expert:  Attorney Wayne replied 11 months ago.
I really understand the frustration and concern that you raise. You are best positioned to do your own number crunching on the cost-benefit analysis of particular business decisions.

It is true that cease and desist letters usually precede any lawsuit. But depending on the value of the market to the patent holder, he or she may end up in court demanding cash damages. This calculation typically starts with the estimated value of a license for patent. Depending on such factors as willfulness, that amount could be tripled to arrive at a damages amount.

This does not happen all the time, but the law allows it. Also, cease and desist letters are usually accompanied by an offer to license the patent at issue. Turning down the offer can then lead to further legal action.

Now if someone is simply repairing what is there with off the shelf parts, then it would be hard to assert patent infringement (each part would presumably have a patent itself, a license for one, or be in the public domain). Simply repairing the item with parts that are not infringing is not actionable under patent law.

There is a famous case where KODAK tried to use its patents to prevent anyone but its own technicians from fixing its line of photocopiers. That was held a violation of antitrust law. I this arrangement, known as tying, (meaning, tying a granted monopoly in a patented part to a non-protected service, such as repair) is illegal under US antitrust law and is therefore considered an abuse of a patent.

Of course, it would probably take a lawyer to defend in such an instance -- but given that case law, many patent holders know better than to try. Still, many patent holders these days will try to push the limits. They can do this because the law distinguishes between "repair" and "reconstruction." Claims raised as reconstruction cases can lead to patent infringement.

Moreover, many patent holders will get a court injunction (albeit temporary) to stop commerce in a disputed item while the case moves forward. That can be a big hit for any small business that needs to sell to stay in business.

But if the parts themselves are legitimate (either purchased from a patent holder, a licensee or in the public domain), then the law does not consider mere repair thereof an infringement. That's a good start in any field. Still, it is wise ot exercise caution!

Again, I wish you every success in your work!
Customer: replied 11 months ago.

I formed a LLC for protection as it's a separate entity... so if I am sued with violating trademark/patent infringement, is the most they can go after is all the assets allocated in my LLC? Again, I'm only starting out and I don't feel like I'm doing anything wrong...but I need to know what is at risk

Expert:  Attorney Wayne replied 11 months ago.
I completely understand the question.

The problem with intellectual property protection is that it applied both to the individual involved and the company. So, theoretically, the person who authorized or did the infringing act is liable, as would be his or her company.

It is possible to insure against such risk. But that's a business decision based again on cost-benefit analysis. It may be worthwhile to ask the agent selling business liability or "errors and omissions" insurance for information, as not all insurors may offer such protection. A decent policy would cover legal costs after a deductible.

Again, my best for your new venture!

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