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Ask IP Lawexpert Your Own Question
IP Lawexpert
IP Lawexpert, Attorney
Category: Legal
Satisfied Customers: 8
Experience:  20 years experience in prosecuting patents, trademarks, and licensing intellectual property.
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This didn't address my question completely. Can they start

Customer Question

This didn't address my question completely. Can they start selling an item because the patent maintenance fees were paid late so the patent was temporarily not in force? Now the fees are paid and the patent is in force but they started advertising and selling the item when it wasn't. So do we have legal recourse. I realize I could contact a patent attorney but this was supposed to be a fact finding mission and the answer wasn't helpful. I know that if someone infringes on a patent we should send them a letter to cease. What does abandon mean? Is it considered abandon if the maintenance fees were late?
Submitted: 5 months ago.
Category: Legal
Expert:  Attorney2 replied 5 months ago.
This didn't address my question completely. Welcome Lisa. I am not seeing a previous question from you that an attorney addressed earlier. What was your original question and can you tell me the attorney that responded?
Expert:  IP Lawexpert replied 5 months ago.
Hi Lisa,I am sorry that the previous answer by the other attorney was not sufficient. I do not see their answer, but I can answer your question. Under 35 USC 412(2), an infringer of your patent may obtain "intervening rights" to manufacture, sell, use products that now infringe your patent. However, the intervening rights arise only if the infringer relied upon the lapse in the patent due to failure to pay the maintenance fees. If they were advertising, making or selling the product prior to the lapse, then they did not rely upon the lapse and do not have intervening rights. Even if they have intervening rights, those rights are not absolute after the patent is reinstated. It would apply to products made during the lapse, but only to products made after the patent was reinstated to the extent necessary to protect investments they made in reliance of the lapse. Depending on the size and nature of the investment that they made during the time that the patent lapsed and in reliance on the lapse of the patent, you may have recourse to enforce your patent against them. I would not recommend a cease and desist letter unless you are willing to go forward with a patent infringement action. Simply sending the cease and desist letter may be sufficient to trigger a declaratory action by them in a forum of their choice and put you in a defensive stance. However, it would be advisable to send them a letter advising them that your patent has been reinstated and is in full force and effect. This would set the date for potential damages if they were not already aware of this fact. As to "abandon", in this instance it means that the patent was terminated prior to its full term due to failure to pay maintenance fees. In your case, your patent was considered "unintentionally abandoned" and has now been reinstated. I hope this answered your concerns.

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