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copycat
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Copying Their Design
« on: Jun 10th, 2006, 12:33pm »
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Hello all,
 
We want to “copy” a product already in the market place. I will use the following example: Many people may be familiar with the “Fire Bike” designed and built by OCC in the US. The motorcycle is an original design by OCC and it is also a rather functional motorcycle if one should choose to ride it.
 
Assume the following to be accurate:
OCC has no design paten.
OCC has no utility paten.
OCC has not trademarked its likeness.
OCC has publicly displayed the design more than one year.
OCC has used the design for financial gain.
 
What is preventing me from “copying” the motorcycle and selling it, as long as I make no claim that it is an OCC bike, and additionally, I make no mention of OCC in any respect when marketing my “copy”?
 
Let’s start the thread with this simple example and see how it evolves.
 
CC
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patag2001
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Re: Copying Their Design
« Reply #1 on: Jun 10th, 2006, 4:25pm »
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Generally, a patent is a structure or method.  There are exceptions, such as design patents.
 
Here, you reference a structure that has been "used by others" and on the market at least a year.  When I say structure, I am referring to the physical arrangement of the bike example, wigget, and the like.  
 
I believe the following answers your question:
 
2131 Anticipation - Application of 35 U.S.C. 102(a), (b), and (e) [R-1]
 
 
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless -
 
 
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent, or
 
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States, or
 
(c) he has abandoned the invention, or
 
(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor"s certificate filed more than twelve months before the filing of the application in the United States, or  
 
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(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or<
 
(f) he did not himself invent the subject matter sought to be patented, or
 
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
 
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copycat
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Re: Copying Their Design
« Reply #2 on: Jun 10th, 2006, 6:25pm »
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Thank you for your input. I have previously read 35 USC 102 with particular attention to section (b). In regards to facts regarding the 1 year time frame.
 
However, not being a patent expert by any means, I must assume that it is not that simple, or that there are other exceptions to this language, or case history. I have in the past had to deal with a lot of construction law, and often times a particular chapter and verse would appear rather simple, however, buried inside the construction laws (codes) were other provisions that significantly complicated matters or directly contradicted the other chapters.
 
So my experience with the law and trying to do things “by the book” has been difficult and educational.
 
One could easily infer from 35 USC 102 (b) that regardless of originality, novelty, design, utility, etc. If an inventor allows their invention to be on public display in any manor for a period of one year with out making application for a patent that they have no protection under patent law.
 
Could the argument be made in the case of the OCC “Fire Bike” that the item is so recognizable to the consumers in that industry that some other form of copy protection should be afforded to the design? Even though no application for such protection has been made? Could they make an argument about “confusion in the market place” even though they have not properly filed their paperwork or don’t want the expense?
 
Thanks,
CC
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RMissimer
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Re: Copying Their Design
« Reply #3 on: Jun 11th, 2006, 10:40am »
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I don't see this as a patent issue.  If you are going to be enriched by the work of others, then copyright and trademark trade dress come into play.  OCC does not need to file for protection to get protection and enforce it.  There is no advance filing requirement for either of these to be enforceable.
 
Note that I am not now a IP Attorney, nor am I one in your jurisdiction.  So you should consider consulting one.
 
Further, can you afford a litigation?  Is a bigger issue.  If someone feels you have taken their work without permission, they are going to put up a fight.  Whether they win or lose has little to do with it.  It will cost you plenty.  They have the advantage for they have cashflow, and it is deductable to their business.  It is hard to take on an existing manufacturer and gain.
 
Both should be addressed in advance with a IP litigator.
 
For it is good to have a plan.
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RS Missimer
Patents Penned, Inc.
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(262) 565-8200
copycat
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Re: Copying Their Design
« Reply #4 on: Jun 11th, 2006, 5:46pm »
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Well “enriched by the work of others” sounds a little bias and entering into the world of morality rather than law.
I do understand your point regarding copy and mark, but in the case of the OCC “Fire Bike” I am not sure how it would be protected by either unless specifically filed and received such protection.
 
An example of my view:
Ford has been building the F150 pick up truck for many years and consumers in that industry recognize the vehicle without any “trademarks” or “logos”. Let’s assume for a minute that Ford does not have any design patent on the current body of the truck, is their case history or law that would indicate any attempt to copy their truck would be illegal?
 
Another real world example:
Many kit car manufactures copy Ferrari, Cobra, and other well known designs with out a problem. Ferrari certainly has the money to crush any kit car builder.
 
I agree that trademarks can be used and protected without actually receiving a trademark patent. However, is you product a trademark? In the case of Coke Bottles maybe it is, but can Boeing make the claim that their wing design although not eligible for design or utility patent, is protected by trademark since experts in the field of aviation can recognize it? If the answer is yes, then really many new products not eligible for utility patent could receive trademark protection, based upon the shape of their product, and effectively receive patent protection that has no time limit and does not allow the competition to even display their product.
 
Their must be a clear definition or circumstances that protect the market place from companies doing just such a thing. The Weber grill trademark is an interesting example: Weber has successfully used their trademark protection as a utility patent. Nobody can build a grill that even remotely looks like Weber’s because they always make the claim that it infringes on their trademark and apparently win these cases. I would hope the patent office would put an end to this type of surreptitious protection.  
 
Thanks,
CC
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