Expert: George H. Morgan, P.E., Patent Agent - 3/9/2009

Question
In October of 2008, I filed and received the confirmation for my patent pending application for a manufactured construction product.  Yesterday I found out that a competitior has submitted a bid on a large government project using my product.  I would like some advice on how to proceed.  Should I report the violation prior to the contract being awarded or do I wait until the contract is awarded and then address the issue.

Answer
First of all, he is not violating anything. It depends on what claims are awarded, when the patent issues.

However, if your competitor knew of  your product, and eventually a patent is awarded that he is infringing, how much in the way of damages you can go after depends on what you do now.

Don't pursue this by yourself. Find a good attorney that specializes in patent infringement litigation. He can send a properly worded letter to your competitor that will not expose you to countermeasures, such as a restraing order or injunction of some sort, but establish a position that allows for retroactive damages, & possibly "willful infringement" (which means triple damages).

The attorney may suggest the letter advise the competitor that you have a patent pending, that may be relevant, and suggest a licensing arrangement.

This could be a "win win" deal for all.

There is a generalpatent.com that appears to be good at representing patent holders against infringing companies. It wouldn't hurt for you to contact them. There is nothing patented yet. But, could be.

If you live here in Indiana, I can recommend a patent attorney who is good on litigation in intellectual property matters.

I hope this helps.

Best wishes on your project.

George H. Morgan
Professional Engineer (Since 1958)
Patent Agent, Reg. #26,969, since 19733