I’m trying to get some advice on this…I have a potential client with an idea for a product improvement, but he is clueless about the consumer product industry. I did a quick patent search and found a few similar to his idea. I don’t fully understand the legal jargon of those patents so I don’t know to what extent they apply to his idea. Do I tell him to get an attorney to do a patent search first or do I try to “design around” the patents and then send him to an attorney after? I don’t want to be liable for an infringement on a patent, but I don’t want to scare him away from the job either. Any thoughts?
How similar is it to the other things you’ve found? Hard to help if you are ambiguous (I am assuming for the protection of your client). If you can’t clarify here I’d just try to get some legit legal advice.
My client wanted to improve children’s high chairs. The patents I found are utility and looked primitive with no styling or design, but are pretty much exactly what his idea(s) were.
I’d direct him to a patent attorney and let him know you can proceed once he has the attorney’s recommendation. You probably don’t want to tough the third rail on this one!
Agreed. I think if you or he went ahead and used the utility patent in your own design, the original inventor may have some sort of partial ownership. Your client would need to obtain a license to use certain parts; talk with an attorney if you can though about exceptions.
Think about how to design something using either expired patent material or non patentable subject matter. It may be, by law your client is already okay there. Tell your client at the very least to not put any more resources into the development of the product until this is clarified. Curious to see how this turns out; would you mind posting the results?
Thanks for the advice. I told him exactly that…to get legal advice before proceeding any further. At least now I’m more confident that I turned him away for the right reason. Hopefully it’s not completely scrapped, but I totally burst his bubble… Will update what happens with this one.
were you able to bill for the time you spent searching patents? Really that should been his first step.
Eventhough ideas may look the same, it’s all really in the way the patent claims are structured.
It’s usually not our job to decide one way or another.
All my contracts state that patent searches and patents are the responsibility of the client and that I am creating designs based on parameters given to me by the client or approved by the client. This way you cover yourself and it’s up to them whether to pursue the idea or not.
what you did and what mpdesigner writes are both correct.
It is reasonable duty of care for a contract industrial designer to be aware of prior art and communicate it to the employer. But, as evidenced in your case, many people are not aware of the depth of prior art, are convinced of their ideas’ uniqueness, that an industrial designer definitely needs contractual term and condition limiting liability due to patent - trademark - industrial design infringement.
I’ve been invovlved with this on just about every project. None have ever stopped due to existance of prior art regardless of level of similarity. Within patents’ triumvirate of idea, application or method of manufacture, there is enough field of play to design something patently new.
On a practical level …it would be my guess that your client only has interest in your design work because he is “assuming” that he’ll secure some reasonably broad patent claims. Typically a Patent Searcher would do the search and a Patent Attorney would render a Patentability Opinion. I’m guessing that your client is thinking about licensing his gizmo. If he doesn’t secure worthy claims there won’t be anything to license. In terms of process steps - if he is thinking “licensing” it would likely be the patent search/opinion first, then the design work second. That is, thinking in terms of being as risk adverse is possible.
First and foremost, patents are NOTICE to public. And, with your active search you have been duly notified of ideas that have been expressed in a tangible, useful and novel form(s) warranting a patent. You did the right thing by notifying your client.