How do you tell if a patent was ever "pending?" and has since been denied?
6 attorney answers
If a reason you entered into the contract was because you relied on the assertion by the other party that their "technology" was patent-pending, but no patent application was ever filed, then you MAY have claim against the other party for "fraudulently inducing" you to enter the contract. That claim is not really a contract claim, but rather a claim of fraud. The difference is important because if you can prove the fraud claim your remedies are more extensive than a simple breach of contract claim.
But proving that the patent-pending assertion fraudulently induced you to enter the contract will be an uphill battle because, even if we assume a patent application was filed, a patent application confers no substantive legal rights and so all you could have been relying on was the POTENTIAL to be somehow involved in using or selling the patented technology. The inquiry will be whether that reliance was "justifiable" in light of the assertions made about the potential for the application to actually mature into a patent. Proving such justification could be a difficult lift.
You need to speak with a business litigator licensed to practice in California with experience in intellectual property matters. There are too many wrinkles in patent searching for you, on your own, to definitively conclude whether a patent application was filed or not. As noted by my colleague, search the online patent application database at http://www.uspto.gov for the name of the company you contracted with as the "assignee" of the application. But before you conclude no application was pending speak with your own attorney.
The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
One answer I did not see was that you can search the names of assignees at the patent office. Hence, you can search by the company name in the "assignee" field and you should be able to see all published applications and issued patents that have been assigned to the company.
You need a good business attorney with good IP knowledge. Such an attorney will likely demand the company prove its pending patent application existed and that should determine the matter, as it sounds somewhat unlikely. He may well find other breaches by the company if your desire is to get out of the contract. Don't do this yourself.
You said they own a service mark which they label "Content DeliveryTM". That is incorrect, they own no such thing. Putting (TM) on a generic term is not proof that they have a servicemark, it's perhaps even illegal under 15 USC 1125 as a false description. Your attorney will look into that. And, it's not a "servicemark claim", it's a false claim that a generic term is a trademark. To prove it is generic, ask your attorney to do a TESS search on the live mark "Content Delivery Now" and look at the disclaimer they filed and their description of goods and services or check the Trademark ID Manual for "content delivery" proof that it is generic. Your attorney should know how to do that. Seems reasonably likely they had neither a patent application nor a servicemark/trademark.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
These days, most U.S. patent applications are published 18 months from earliest filing date. These pre-grant patent publications can be searched for on www.uspto.gov and other sources of patent information. But most such applications aren't indexed under a company name, so it would be necessary to know the name of inventors or the title of the patent application. Also, if the applicant has elected to keep the pending application secret, then there wouldn't be a pre-grant publication even though the patent application has been pending.
Note that a federal statute, 35 U.S.C. 292, prohibits marking upon, or affixing to, or using in advertising in connection with any article the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public..
This is potentially a serious matter and you should consult patent counsel for pertinent confidential advice.
This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance.
Start with doing a search at www.uspto.gov. But in reality, if they claimed it was patented, and it is not ("patent pending" does not mean a patent was issued), you in theory can already claim breach. Talk to a business attorney. Michael Doland on AVVO is a frequent poster, handles business and intellectual property, and is in Los Angeles: http://www.avvo.com/attorneys/90025-ca-michael-doland-167000.html
Our replies to Avvo questions should not be considered specific legal advice to any individual, and no attorney-client relationship is formed with you. Our aim is to provide general principles that may be useful to the Avvo community as a whole. You should seek individual legal advice pertaining to your specific factual situation, and the laws applicable to your jurisdiction. Moore & Moore Attorneys at Law -- [email protected]