QUESTION: I make metal art and metal stencils for wood working and other art. I recently had a company that claimed I am in violation of their patent pending idea. The way the letter explains things is they are trying to patent metal stencils for any form of art be it painting, wood burning, or otherwise. Now I have been making my products for a couple years now and 95% are completely different than anything they make. All their stuff is public domain clip part on a stainless steel plate and they are trying to say that it is patented. Now my items are made from different metal, thicker metal, my designs are different, sizes are different, I had one that was similar to theirs but it was a plain star and they are claiming it as theirs. Granted this was also a different size as well as different materials. You can go to most big box stores as well as like 30 different sellers making metal stencils for wood burning online. I think the claim is completely ridiculous and it sounds like a bigger company just trying to be a patent troll and bully smaller companies. Can you really patent a piece of public domain clip art cut into a piece of metal? Any advice would be appreciated.
ANSWER: As a general rule, one should always take seriously the receipt of a cease and desist letter that claims you are infringing a patent.
A patent pending application does not give one the right to sue for patent infringement. Only an issued patent gives one the right to sue for patent infringement.
However, even if only patent pending, the patent application can be useful to the potential infringer to get some idea of what may eventually become an issued patent. And if there is overlap between the patent claims in the patent application and the potential infringer's product/service, the potential infringer can take steps now to better avoid future infringement.
Another issue to address in the cease and desist letter is the validity of the patent or pending patent application. A valid patent requires that the invention be new and non-obvious.
A new invention means the invention has not been in the public before the patent application. A non-obvious invention means that in view of what has been previously in the public the invention is not an obvious variation of the public information.
In this situation, if the patent application seeks to patent the same metal stencil that has been sold for years before the patent application, the invention would not be considered new and likely obvious.