Sacramento Intellectual Property Law Blog

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When a Sacramento inventor wants to market an invention, it may become necessary to share certain details with prospective customers or clients. During these meetings, those individuals may decide to circumvent patent law by not obtaining the proper licensing to use the invention. This issue is at the heart of a recent lawsuit filed by Paice LLC and its investor, The Abell Foundation Inc., against BMW.

According to Paice, it shared details about its hyrbrid engine technology with BMW starting in the early 2000s. Those discussions ended, and BMW made an attempt to team up with General Motors and DaimlerChrysler to develop a hybrid engine, but those discussions stopped when it was determined the technology was simply too expensive. The following year, BMW released its first attempt at a hybrid vehicle, but later took it off the market.

Over the next few years, the automaker released hybrid vehicles that Paice says uses its patented technology — without a license to do so. Paice alleges that BMW took advantage of its licensing negotiations with Paice in order to gain access to documents and knowledge from its engineers in order for BMW to develop its own hybrid vehicle. BMW is only the latest automaker to be sued by Paice, but the other automakers decided to enter into licensing agreements instead of continuing the litigation.

It is not yet known whether BMW will do the same, but it may consider doing so. If a court decides that BMW violated patent law by infringing on Paice’s patents, it could end up costing the company even more. When a Sacramento inventor discovers someone else using its patented intellectual property, he or she may want to consider discussing all of the available legal options. It may be possible to get the allegedly infringing company to enter into a licensing agreement and/or to provide restitution for any monies made using the patented property, but if not, litigation may be the most viable option.

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