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Author Topic: New product made by modifying existing commercial ballpoint pen  (Read 712 times)

Patentstudent

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Let's presume an inventor invented a new instrument for dentists.
He discovers that instead of manufacturing all the parts for the new instrument, he can buy one specific brand and type of ballpoint pen, remove the ink cartridge of the pen and replace that by a specifically manufactured dentistry tool part.
Is the inventor allowed to sell the dentist tool that is obtained in this way as his product?     
Thank you.
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midwestengineer

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Are you trying to ask whether the dentist tool formed using parts purchased from vendors may infringe patents?

If the new product formed of parts of an old product infringes a patent not owned by the parts of the old product manufacturer, the inventor may be liable.  Exhaustion will generally not bar infringement in this scenario.

Generally, patent exhaustion would prevent the manufacturer of the pen from asserting any patent rights that the manufacturer had in the parts of the pen against the inventor so long as the pen was properly purchased.  There are some exceptions to the general rule that are fact specific.
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smgsmc

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Are you trying to ask whether the dentist tool formed using parts purchased from vendors may infringe patents?

If the new product formed of parts of an old product infringes a patent not owned by the parts of the old product manufacturer, the inventor may be liable.  Exhaustion will generally not bar infringement in this scenario.

Generally, patent exhaustion would prevent the manufacturer of the pen from asserting any patent rights that the manufacturer had in the parts of the pen against the inventor so long as the pen was properly purchased.  There are some exceptions to the general rule that are fact specific.
Follow-up question.  Is there any requirement to remove the original manufacturer's markings if the part is modified?  For example, a PC is built of many components purchased from many manufacturers:  e.g, a processor from Intel, memory chips from Samsung, a hard drive from Western Digital.  If you open up a PC, the original manufacturers' marks are usually intact.  I assume that's because they are assembled as purchased, without modification.  But now assume I purchase a ballpoint pen marked "Papermate" on the barrel, take apart the pen, and use the barrel as part of a dental instrument (per the OP).  Would "Papermate" need to be scrubbed off or painted over?
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midwestengineer

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Are you trying to ask whether the dentist tool formed using parts purchased from vendors may infringe patents?

If the new product formed of parts of an old product infringes a patent not owned by the parts of the old product manufacturer, the inventor may be liable.  Exhaustion will generally not bar infringement in this scenario.

Generally, patent exhaustion would prevent the manufacturer of the pen from asserting any patent rights that the manufacturer had in the parts of the pen against the inventor so long as the pen was properly purchased.  There are some exceptions to the general rule that are fact specific.
Follow-up question.  Is there any requirement to remove the original manufacturer's markings if the part is modified?  For example, a PC is built of many components purchased from many manufacturers:  e.g, a processor from Intel, memory chips from Samsung, a hard drive from Western Digital.  If you open up a PC, the original manufacturers' marks are usually intact.  I assume that's because they are assembled as purchased, without modification.  But now assume I purchase a ballpoint pen marked "Papermate" on the barrel, take apart the pen, and use the barrel as part of a dental instrument (per the OP).  Would "Papermate" need to be scrubbed off or painted over?

Are you thinking of liability under section 292 for false marking?  If so, that inquiry is extremely fact specific and includes an intent element with respect to knowingly attempting to deceive by including a mark.  I don't know of any case that has addressed this particular fact pattern where one creates a new device using patented components, modifies one of the components so that it would not infringe a patent, and then does not remove the original mark on the modified component.

In terms of papermate, we're hopping over to trademark/unfair competition law.  There could be issues under a number of infringement theories but this area is even more fact specific than liability under 292.
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NJ Patent1

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smgsmc:  Nice practical hypo.  Without research, my answer is yes from related viewpoints, grounded in “confusion as to source”.
 
TM:  Paper Mate is a registered TM.  A cursory review of the PTO database suggests registration is not in connection with dental equipment.  But IMO, “Paper Mate” is a well-known (famous?) mark and, although I consider a dentist to be a sophisticated consumer (would they expect that the source of the dental tool in their hand was the source of the pen in their pocket?), tarnishment, dilution, or similar arguments could be made.  OP would be wise to scrub.

Products Liability:  If the mark is not scrubbed, owner of “Paper Mate” could be required to respond to a stream of law suits.  Absent foreseeable misuse, such could likely be dispensed with on S/J.  But would nonetheless incur costs and distract from the business of selling pens.  I smell a business tort, just not sure what “flavor”.
 
FDA:  I assume the device would be subject to premarket approval by FDA.  My hunch is that FDA would consider name on the barrel as false or misleading labeling.  If the TM “Paper Mate” remained on the barrel, would the device somehow be considered “misbranded”?  Mynhunch – just a hunch – is that FDA would require the name be scrubbed as a condition of approval. 

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Patentstudent

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Thank you all for your valuable contributions.
It is the intention to remove all visible markings (includng the trademark) from the purchased components that will be used in the new dentist tool.
However, the original manufacturer will most probably be able to identify it as his/her product. It is not the intention to hide anything to the extent that the product (the 'pen' in the hypo) could become unrecognizable for its original manufacturer.
Moreover, the purchased product is not protected by any patent.

So, based on your replies, I guess there will be no IP related issues in this case. Right?
« Last Edit: 09-17-17 at 11:29 am by Patentstudent »
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