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(Message started by: william1 on Jan 3rd, 2007, 8:31pm)

Title: How do I design around a Patent
Post by william1 on Jan 3rd, 2007, 8:31pm
I had my invention  stolen from me 2 years ago by an employee that worked for me and later patenting  my invention as though it were his even though he never worked single hour on it.  I am not ready to give up on my invention and my idea I have spent 4 obcessive years in making it work not to mention 150 K   My question is I want to change the design on the invention I am curious as to how much I have to change of it to make it legal for me to receive my patent. I have been told that if you change one claim on a patent you can patent that same product. I have also been told you must change at least 20 percent of the invention to be able to patent it. How does it work on changing a patent so that you can patent that product. all are invited to weigh in on this topic  Thanks william turtlelot

Title: Re: How do I design around a Patent
Post by CriterionD on Jan 4th, 2007, 12:40pm
First things first, are you able to document that this was really your invention?


Title: Re: How do I design around a Patent
Post by william1 on Jan 4th, 2007, 10:32pm
Hi criterian, I can prove that the invention is mine in every way, from the money and time invested, countless eye witnesses, the gentleman in question though was only a low level employee who has worked for me for a long time, who claims he was working on this idea himself, and in my shop everyday I worked on this, everytime I made progress on this he simply duplicated what I done. I have 21 people who work in my shop and for close to 4 years, I worked on my idea in front of them.  When I finished this guy had already  started his provisional patent application it wasnt until 13 months later that I even found out about this, He received his patent, close to a year later. We are going to court,  How ever this guy doesnt have the money to do anything with the product my concern is him selling the patent as there  is a lucrative market for this as it is an original novelty Idea.  any advice  on designing around the patent how much do I have to change on a design patent and utility patent I know there is always a loop hole, making changes is no problem not sure how to make changes legaly.  Thanks for your reply Kindest regards William turtlelot.

Title: Re: How do I design around a Patent
Post by SoCalAttny on Jan 4th, 2007, 11:33pm
You are going to need professional assistance.

One key element required to obtaining a patent is that the person who signs the declaration of inventorship must have invented the device. To claim inventorship when not the inventor is fraud.

Not to mention the issue raised earlier of proving that you conceived of the invention and began perfecting it prior to the filing by your employee.

Get Non Disclosure Agreements from those hired in the future.

Title: Re: How do I design around a Patent
Post by Bill Richards on Jan 5th, 2007, 5:29am

on 01/03/07 at 20:31:42, william1 wrote:
I have been told that if you change one claim on a patent you can patent that same product. I have also been told you must change at least 20 percent of the invention to be able to patent it.

SoCal is right, you really do need to see a patent attorney who can help you sort this out. Based upon the above quote, you have misconceived the patent landscape. What you're asking (about designing around) is far more complex than what you have described. (Which is incorrect, BTW.)
One other note.  While having employees sign an NDA is always a good idea, it will still not fully protect you from the kind of activity you have described.  What it does is give you additional avenues to recover your losses.  NDAs are basically contracts and, like other contracts, can be breached.

Title: Re: How do I design around a Patent
Post by twocentsworth on Jan 5th, 2007, 8:54am
There are at least two issues to the concept of designing around a patent.

For example, if you want to make and sell a product, you should come to understand the concept of infringement. Designing around a patent out of concern for infringement will require understanding the claims of the patent. The claims are the numbered paragraphs at the end of the patent. Understanding claims takes experience. The language is bizarre to the untrained eye. You'll need experienced help, or you'll need to start training yourself now (and it will take a lot of time and effort), if you want to well understand claims and make business decisions involving designing around the claims.

If you want to patent your developments, you should come to an understanding of patentability. This is a very different matter from infringement. In understanding patentability, the patent you mention merely takes its place in a whole field of literature that may exist in the field of your work. If you want to get a patent, you need to come up with something that is both new and is not merely an obvious improvement over old things. While these words sound easy enough to understand, they actually have their own convoluted meanings when it comes to understanding patentability. Again, you'll need experienced help, or, you've got a lot of work to do to embrace understanding patentability.

The issues of infringement and patentability are completely separate from the issues you raise about the existing patent. You've got a complicated situation in front of you. So, I'm in a sense just reiterating, with a bit more detail, what others have suggested. If you're successful at running your business, you probably don't have time to figure this all out by yourself and I can't imagine that you could accomplish it all by getting advice here on this website, though this website does have a lot of useful information. You probably need help from a professional, probably a patent attorney.

Title: Re: How do I design around a Patent
Post by kchuah on Jan 22nd, 2007, 8:49am
If you have documentation only. It's still weak.
You may consult USPTO inventor support (Free) for free opinion.
I remember, talking to one of these guys.
They told me, documentation is not strong enough to protect your invention from stolen (due to many fraud cases, i.e. someone fake the document & try to claim the ownership of filed patents). An inventor with document is assumed to filed his/her invention within 3 months.

Another way to secure your invention is to check any work agreement  signed by your ex-employee .. present it to your attorney.



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