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Am I infringing?

Postby Bizzy B » Fri Aug 27, 2010 1:28 pm

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I am developing a very simple product. There are several similar products on the market. My product will be used by the exact same customers and for the same purpose but has some design improvements.

Example of my dillema:

Product 1 - Has several patents on product (although the design and construction itself is fairly generic)

Products 2, 3, 4 - No patents are issued for these products. They are identical in purpose and materials to Product 1, just slightly different sizes and shapes

Product 5 - Patented, very similar in size and shape to Product 1. This one is made with different inside materials. Inside materials are not patented by this company because I have seen them in use in other types of products. This product has recently been taken off the market and I can't find any patent info online. All of their old marketing material stressed that they were a patented product.

I would like to use the materials in Product 5 with some design improvements on all the above mentioned products to increase ease of use.

I am less concerned with whether or not I can patent my improvements and more concerned with whether I will be infringing on someone else's patents.

Can anyone give me their opinion?

Thanks in advance!

Re: Am I infringing?

Postby Scrupulous » Sat Aug 28, 2010 11:11 am

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Bizzy B wrote:I am developing a very simple product. There are several similar products on the market. My product will be used by the exact same customers and for the same purpose but has some design improvements.

Example of my dillema:

Product 1 - Has several patents on product (although the design and construction itself is fairly generic)

Products 2, 3, 4 - No patents are issued for these products. They are identical in purpose and materials to Product 1, just slightly different sizes and shapes

Product 5 - Patented, very similar in size and shape to Product 1. This one is made with different inside materials. Inside materials are not patented by this company because I have seen them in use in other types of products. This product has recently been taken off the market and I can't find any patent info online. All of their old marketing material stressed that they were a patented product.

I would like to use the materials in Product 5 with some design improvements on all the above mentioned products to increase ease of use.

I am less concerned with whether or not I can patent my improvements and more concerned with whether I will be infringing on someone else's patents.

Can anyone give me their opinion?

Thanks in advance!


Need more information.

This kinda reads like a question on the Patent Bar Exam, so I'll see if I can nail this...

It's not clear whether you mean functional design, but if you do then:

Product 1 - assume that you are infringing, w/o more info on the patents held. possibly not infringing, if they are design patents.

Products 2,3 and 4 - possibly licensed from P1, so no.

Product 5 - possibly infringing, the info you provide is not conclusive that they do not hold a patent on the material.

Re: Am I infringing?

Postby Bizzy B » Sat Aug 28, 2010 8:43 pm

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Thank you so much for trying to help me! I realize that my example was so generic that it was almost impossible to know what I was talking about. I am new at this and am having trouble getting my arms wrapped around everything.

For the sake of this example, I have thought of a product to use to make things a bit clearer. This product is not related to my idea, but the simplicity is similar and should serve as a good stand in for mine.

Before dogs were lucky enough to be treated like humans, they slept on the floor. One day someone made a round bed, filled it with fiber and gave it to their dog. While beds and pillows were not new ideas, using one as a dog bed was new so they successfully got a patent on it. (Product 1)

Several other lower quality knock offs were created by other companies. They are made of the same type of cotton and use the same type of fiber, but they are oval, triangle, and star shaped. (Product 2, 3, 4) These companies are not related to Product 1 in any way and attempt to take the exact same customers. I'm assuming Products 2, 3, 4 are not infringing on Product 1 because they are still on the market. It is possible that they are infringing but Product 1 has decided not to sue since it is so much superior.

An Australian company decided to make a dog bed shaped almost exactly like Product 1. Instead of filling the bed with fiber, they decided to use an air pillow inside the cover. (Product 5) On all marketing material for Product 5, it states "try our fantastic patented dog bed." I have been unable to find any patent numbers because the product is no longer on the market. I have been unsuccessful in finding the patent listing under comany name or product description. Is Prouct 5 infringing on Product 1 because of the shape? How did Product 5 even get a patent? Is it due to the fact that they changed the inside to an air pillow instead of fiber?

I want to make a dog bed using the same air pillow as Product 5 except in the shape of a square. Although they will be used for the exact same purpose, I am not too worried about infringing on Product 1 since my product is a different shape and is made of different materials (air instead of fiber). I am worried about infringing on Product 5. Can I make a dog bed out of the same air pillow as Product 5 if my shape is a significant improvement?

I am distraught because I was told by a patent attorney that it would cost several thousand dollars to get this question answered. My product is not going to make me rich. It will, however, fill a need in a market. I am so tired of sitting on my hands just looking through my idea notebook. I am ready to make something happen but I feel inadequately trained to do it right. I keep hearing that you don't have to use attorneys to file patents, but I don't see how a lay person can interpret how far patents for other products reach.

Any chance you would think through this again using the dog bed scenerio?

Re: Am I infringing?

Postby Scrupulous » Sun Aug 29, 2010 1:19 pm

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If P5 is the subject of a utility patent enforceable in the region you are considering, then you would probably be infringing on it.

But to get to that you need more info...

How do you know P1 is patented? If it is a design patent, then nothing likely infringes on it. If it is a utility patent, then is it expired?

How do you know P5 is actually patented? If so, is it enforceable in your region? etc.

There seems to be enough info to determine this. You just need to clarify why and how you think they're patented.

Re: Am I infringing?

Postby Bizzy B » Mon Aug 30, 2010 5:04 am

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I know for sure that Product 1 is patented in the United States and is not expired. There are patent numbers listed right on the tag of the product and I have been able to find their patents online. I'm not sure how to tell if the patent is utility or design. Is it listed somewhere on the patent?

Product 5 is a different story. The only reason I think it is patented is because they make direct claims to that effect in their marketing pieces. I have been unable to find a single bit of information on their patent when searching online. The product was brought to market only a couple of years ago, so it wouldn't be expired. I do know that this company is located in Australia so I could be searching for the patent incorrectly.

Is it general knowledge that changing the shape of something isn't enough to get around a patent? If so, how did Products 2,3 and 4 get around that? I'm not trying to get around a legitimate patent to market the same product. I really think that my shape design is an improvement that would be beneficial to end users.

Re: Am I infringing?

Postby Scrupulous » Mon Aug 30, 2010 3:53 pm

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If your new shape provides new functionality, then that only means it may be patentable. It doesn't mean you won't infringe upon an issued utility patent.

For American patents, if there is the letter D at the beginning of the patent number, then it is a design patent. But it sounds like you could stand to learn a bit more about the two types of patents (not including provisionals). You can find alot of info here in these forums if you do a keyword search.

Re: Am I infringing?

Postby apapage » Tue Sep 07, 2010 8:32 pm

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This is a post from my blog that explains infringement:

The most common type of infringement is direct infringement. For direct infringement, the patentee must show that the infringing party is either using, making, selling or offering to sell a product that infringes at least one of the claims of a patent either literally or under the doctrine of equivalents (DOE).

A product literally infringes when it exhibits all of the limitations of a claim. A wooden chair, for example, with four legs, a seating surface, and a seat back would literally infringe a patent that claims a wooden seating apparatus that includes at least four legs and a seating surface because the chair includes all of the limitations exactly as they are recited in the claim. A chair with three legs would not literally infringe because it does not include at least four legs and a metal chair would similarly not literally infringe because it is not wooden.

A product that does not literally infringe because it does not exhibit all of the limitations of a claim may nonetheless infringe under the DOE. Under the DOE the product exhibits an equivalent limitation in place of at least one of the claimed limitations. The patentee, however, cannot regain any subject matter that was disclaimed during prosecution. For instance, the three legged chair in the example above would not infringe under the DOE because three is not equivalent to four. The metal chair may infringe under the DOE if metal was used because metal has similar properties to wood. The metal chair would not infringe under the DOE if the metal limitation was added in an amendment to the claims during prosecution or if the applicant stated anywhere in the patent record that metal should not be used for the patented invention.

So you should be comparing the claims of the patent with your proposed design. If an element of the claim is missing in your design, then you should be ok. This is typically what I try to achieve when I am designing around a patent for a client.