We are a very small sports fitness company. We train clients at our gym. We also market a product on eBay that we manufacture.
We call this product a Resistance Trainer. We use it at our gym, too. It's a very safe and inexpensive product that uses your body weight as resistance for a wide range of exercises. The military, for example, uses similar training.
We market our product in our gym and on Ebay. Recently, we received an email from a company that purchased our product and said it was in violation of the patent they had on their product called a Resistance Training System.
We contacted the company and discussed our product. They felt that they needed to protect their business, hence the contact they made with us. They again asked us to cease marketing our product.
I found their patent and read it. I'm not a lawyer and have never read a patent before. What I found was a very vague description of what the product does. It was so broad that it could cover a wide range of products that use body weight as a training resistance.
How do I know if I am in violation? We are a very small business; and we have only sold a few dozen of our trainers. However, we feel it could be a nice source of additional income down the road. Can you tell me how we be sure we are not in violation of the patent? We feel like we are being bullied by a larger company, realizing our ignorance of the law.
Any guidance you can give me would be greatly appreciated.
~ Thanks, Dave
The long and short of my answer is this: talk to a patent attorney immediately.
Since you see potential value in continuing to sell the product, then the advice of a lawyer is now a cost of doing business. The uncertainty and discomfort that you now feel is one of the advantages your competitor has gained by going through the long and difficult process of filing for a patent. If you do not seek a lawyer, if you continue to market your product, if you are sued, and if you lose, you could be facing triple damages, because you know have knowledge of your competitor's patent. So, one measure of patent infringement damages could be any profit-that-you-made times three. Sure, there are many IFs, but, you know this competitor has spent thousands or tens of thousands already on just the legal work to obtain the patent. There could be a patent infringement lawsuit waiting to happen to you.
Do not believe that you are an unlikely target for a patent infringement lawsuit because of your small size. When a company seriously sets out to start enforcing their patent rights, they may intentionally pick on small companies first. They know that the small companies will do anything not to defend an expensive patent lawsuit. They know that small companies enjoy the business certainty of a settlement or a license agreement. By setting up several small victories and licenses for their patent, the company will now have an easier time going up against larger companies.
It is best to respect the intellectual property rights of others. However, as you say, you are uncertain of what those rights might be.
The language in the patent is most likely not vague. When a patent attorney reviews your situation, he will also look at their patent, your product, the patent's file wrapper (or, the history of the patent so far at the Patent Office), dictionaries (possibly including technical dictionaries and literature) and previously decided cases. By making a thorough review, the patent attorney can help you understand your options and give more precise meaning to the terms. Maybe there is an opportunity to design your product differently. Maybe there is an opportunity for your prior invention to invalidate their patent. Maybe there is an opportunity to search for invalidating prior art. Maybe there is an opportunity to license their technology or patent. Maybe there is an opportunity to write an opinion of non-infringement. And maybe it is nothing to worry about; or maybe your lucky to get a chance to stop before they sue you. Go see a patent attorney, today.
If your budget is limited, then just be upfront with your patent attorney about how much you wish to spend. Some patent attorneys offer free consultations. If so, take your product and their patent with you. Most attorneys will work with you at the budget that you set, provided that you understand that the potential options may be limited by your budget. Just remember, make a good business decision: the amount you spend on legal advice should only ever be a fraction of what you hope to gain in the marketplace.