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Author Topic: Making a replica splash  (Read 6193 times)

andromat

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Making a replica splash
« on: 04-09-09 at 01:29 pm »

If I wanted to make an almost exact functional replica of the device that I already filed a patent application for - serving the same purpose, but made of conventional material, thus lacking the novelty of the original and different from similar products already on the market only in design at best, would I need to file another application, for a design patent perhaps, in order to protect it as well? Or would it already be protected under my previous application and anybody trying to copy it would be infringing on my original patent whether they realize it or not? Also, I wonder if releasing such a device for sale or for promotional purposes, for example, prior to registering the original invention with PCT, would forfeit my foreign rights to the original as well as for the replica? Thanks a lot for your help!
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CriterionD

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Re: Making a replica splash
« Reply #1 on: 04-10-09 at 01:16 pm »

Or would it already be protected under my previous application and anybody trying to copy it would be infringing on my original patent whether they realize it or not?

What does the original patent claim?  The claims determine the scope of protection offered by your original patent.

Quote
Also, I wonder if releasing such a device for sale or for promotional purposes, for example, prior to registering the original invention with PCT, would forfeit my foreign rights to the original

You need to file a viable patent app before releasing such a device for sale or what not, it does not necessarily have to be a PCT filing.  However, any PCT filing must be made within a year of your original filing date.

andromat

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Re: Making a replica splash
« Reply #2 on: 05-01-09 at 08:21 am »

1. It was kind of a hypothetical question. In my particular situation there are no claims as of yet, since only a PPA for the invention has been filed. So it is possible to protect forms derived from the shape of the original invention by a claim in the patent?

2. In this particular case is it a design patent application that we are talking about? As there's absolutely no way that the replica could qualify for the utility patent since there's nothing novel about it except for the shape mimicking the original invention...
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CriterionD

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Re: Making a replica splash
« Reply #3 on: 05-01-09 at 02:49 pm »

If we are talking about utility patents,

Your original patent will protect the replica as much as the original (as long as the original device was patentable) as long as the claims of the original patent do not specify the use of the novel material.  Of course, re-reading the OP, if the original device was not novel without the use of the novel material, then the claims of the original patent must specify the use of the novel material or they are likely invalid.

If that makes sense...

Re: design patents...

Design patents protect the ornamental appearance (i.e. shape, etc) of a product, on the condition that the 'design' does not affect the product's "utility."  i.e. if the shape of a car makes it more aerodynamic and hence improves actual performance, it is not protectable by a design patent.  So, for your replica, assuming that its shape is novel and does not impact utility, a design patent could be the way to go.

Lastly, sometimes the protection afforded by a design patent - which is narrow but helps protect against knock-offs - can overlap with trademark protection.  For more information on that end, Google "trade dress."


andromat

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Re: Making a replica splash
« Reply #4 on: 05-03-09 at 07:09 am »

1. Thank you, CriterionD, I will point out that paradox to my patent attorney when the time comes to file the nonprovisional for the original invention.

2. Yes, I have looked into these two options - both the design patent and trademark protection even prior to reading this post, and I think that my products should qualify. My argument would be that there's only one function that these devices perform, and their capability to carry out that function is actually compromised in favor of the design.
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