Cease & Desist Over Provisional Patent Application

Posted by Michael Shimokaji | Jul 02, 2017 | 0 Comments

QUESTION: Can someone stop me from doing business just because she has filed a provisional patent application with the USPTO? FACT OR EXTORTION? I received a Cease & Desist Order via email directing me to stop manufacturing my metal greeting cards because this party has filed a provisional patent application for “metal greeting cards.” Subsequently, this party contacted Kickstarter and personally suspended my $285,000. fundraising campaign charging that I have infringed on her patent. She has refused to give me product details supporting her application, so, I have no idea if my product and hers are the same. Then, she had her attorney prepare a formal licensing agreement that would require that I pay her $3000. monthly to make my metal cards. Her application does not go before the USPTO examiners until Sept. 17, 2017, at which time, she may, or may not, receive an “issued patent.”

ANSWER: Generally, one does not have patent rights from a pending provisional patent application to sue for infringement. Only issued patents can be used to sue for infringement.

And, the USPTO does not examine provisional patent applications in a substantive fashion that allows the application to issue as a patent. In your case, if the application is in fact to be examined, the application must be a non-provisional application.


About the Author

Michael Shimokaji

Michael’s expertise includes the strategic development of patent and trademark portfolios. He identifies those patents and trademarks that are valuable to his clients by providing them with a competitive advantage. Then, Michael obtains patent and trademark registrations in the US and abroad.


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