Need legal help PLEASE...

Hello,

I designed a product recently, and was not paid for the work. Now the company is going forward with the design, and I don’t know what to do. I have dated materials, sketches, drawings, etc. and dated mail interactions, but there was no contract; I thought this guy was my friend.

Here is the product.
http://www.setwear.com/FitnessBoaBelts.html

If anyone out there has any advice, please let me know.

Thank You.
Cavan[/u]

Do your email messages stipulate anything about terms of payment (how much, how, when, etc?). Did you have him sign a non-disclosure agreement prior to revealing details about your design? These are the things you have to ensure upfront, especially with the people you think are your “friends.” When it comes to money, people with the best intentions have the most selective memories, so you really have to treat your work (your intellectual property) with the respect it deserves. Document, document, document.

You need to give more details.

If you were employed with him/his firm, you may have signed something upon employment saying that all work done in the firm belongs to the firm.

If you were employed as an independent contractor, then did he have you sign an NDA to execute his idea, even if it was just a vague notion when you came in? What was his role in the whole thing supposed to be?

I think you can get him for “breach of contract” if there were any verbal agreements b/t you, but these are hard to prove (he said/she said thing) and, unfortunately, the burden of proof is on you.

Call up an IP lawyer and see if you can get a free consultation. And before that, see if you can get the dude to admit anything more to you via email. He probably has or is applying for a patent by now, and if it’s a new product, it may be “first come, first serve” at the patent office. Maybe you should beat him to it???

Sorry, dude. You know how folks say that ideas are a dime a dozen? Actually, that isn’t so true…see how this guy had to resort to thievery because he couldn’t imagine anything on his own…? I feel for you.

It says in the link that the product is patented >> Who’s patent is it?

If you do not have a patent on the product, have you filed any official documents to a patent office?

Your dated materials and dated mail interactions, How are they dated? signed documents? Notarized? signed witnesses?

If you have solid proof of earlier date of ownership and knowledge of the idea, then I think you may have your self a worthy law suit.

:bulb: :smiley:

Caven,

I have not posted anything in over two years, but your situation compelled me to write. In short I have been in your shoes backwards and forward. I have dealt with (and still do) numerous companies. The two previous people raised some good points. Heres mine:

First if ever in doubt if you need legal councel the answer is YES you do. You need an attorney that is licensed to argue cases in trial. Note this is not an agent. You can go to www.USPTO.gov and find an attorney that is liscensed and in good standing with the courts/PTO. Find an attorney in your area which hopefully is not the area of the company. I have worked with attorneys that charge anywhere from $150 -$500 per hour.

Second for anyone that has to deal with patents/trademarks/selling or licensing their designs/inventions-read Patent It Yourself by David Pressman. I have been reading this book for over ten years now. It will teach you the ropes.

Third do a search of the “patent” and “patent pending” at www.uspto.gov. I already did a search and could not find the companies patents. That does not mean they are not there. For what is pending they do not have to go public with it for an initial period if desired.

Fourth- all patents must be in the name of “the true inventor”. Meaning if you invented the work and you are not listed as the inventor it is a an incredbly serious crime. The United States government takes this very seriously and is so critical I can’t even explain how serious this is.

Fifth- you have already raised issues of slander/lible/ and defimation regarding the parties involved. Best to not even reply any further without seeking legal council.

Sixth- With all design consulting etc. you need to get things in writing.

Seventh- Friends, no way not if enough money is involved. You’ll learn this lesson.

Lastly-don’t let it get to you. My guess to fight this would take a lot. Your damn attorney may even end up padding his bills and you get nothing but heartache. There are numerous ways that you can invalidate patents and especially patent pending cases. Oh there is so much that I could tell you. Lets see what others have to say. If you are really hurting for help you can leave your email and I’ll get in touch with you with more specifics. And a additonal note: this happens to a lot of designers. To help you feel better I got screwed by a billion dollar company out of two patents valued at “$4million dollars” once. You learn-you move on.[/list]

Wow, thanks, Been There. I’m not Cavean, but your post has been incredibly helpful. I wish there was more space on Core devoted to this topic!

A followup ?:

Your 4th Point says: “all patents must be in the name of “the true inventor”. Meaning if you invented the work and you are not listed as the inventor it is a an incredbly serious crime. The United States government takes this very seriously and is so critical I can’t even explain how serious this is.”

What kinds of proof will substantiate a claim that one is “the true inventor”? I’m in the process of applying for a patent, but I am afraid that my work will be copied beforehand. Although I am still in the Statute of Limitations for both a design and utility patent, my work has been published and is “floating around” out there until I can put the necessary $ together.

Thanks again. Your experience is much needed!

Wow, it would take me an hour to answer your questions correctly. And I must point out that although I have taken legal classes have done several seminars regarding patents/etc, and have read numerous books on the subject- I am not a licensed attorney. As always the best advice I can give is to seek professional legal council.

As for “true inventor” this is a term largely used with the US intellectual property system governed by the Patent & Trademark Office. Although there are numerous other treaties/conventions/and systems throughout the world basically every country stands on its own. Meaning I do not know what country you are from so my advice may not apply.

As for the US we are based on the system of “first to invent” which is in contrary to most countries that have a “first to file” systems.

As for going public, there is the standard 365 days from public disclosure to file for any intellectual property protection in the US. As for patents there are three types, design, plant, and utility. Utility are the up to 6,800,000 numbers that you see printed on products etc. Design patents just cover the aesthetics of a product (with exceptions). Really what you want is a utility patent if you can get one. For this I know tell people that it will cost you $15,000 and take two years if things go well. And they never do. Of course this is a broad generalization-really just an approximation.

Now one crucial point is once you go public with a design you could effectively ruin your chances of getting patent in numerous countries. This all is incredibly complex, and you theoretically need attorneys in every country you apply to. The costs for this can be staggering and it is virtually impossible to pay all the fees and jump through all the hoops in the biggest countries. Believe me it is not worth it as an individual. When you bring up issues like pirating/knock offs etc. it is just mind boggling. We are literally talking biliions of dollars.

For general advice I will say this. Every time a designer sends out an email there should be a legal disclaimer saying that the contents of the email are proprietary and confidential. This goes for applying for jobs. It is quite troubling for me to see 6,000 plus portfolios on Coroflot and the designers often do not realize that they are blowing their rights. I greatly respect those at Core and don’t blame them. After all “ignorance of the law is no excuse”. Still there are numerous companies out there that exploit designers/students/employees by plagarizing /ripping off work. Know your rights. Some of these damn competitions are the worst. Read the fine print. Often times they charge an entry fee, screw the designer, and then come away smelling like a rose. Really some competitions are getting 3,000 entries. I’d rather see designers get paid for their work. Then again we all have our objectives. Just be aware of what you are getting into is all I ask.

As for your proof of inventor ship. Anything and everything. Designers need to save all emails, and make copies of everything. Also keeping a bound journal is always a good idea. Keep photos etc. And most importantly if you are dealing with another entity get it laid out in writing. Try Nolo Press for additonal legal books.

Lastly one approach that you can take is to do a provisional patent application. This initially is cheaper than a reagular patent application, but in fact will cost you more over the long run. What it does is gives you a one year period before you file for a reaglar patent. Also many requirements do not have to be met, such as submitting your claims. These are the heart and soul of all patents, and may be submitted if you want. What all of this does is gives you more time to find a manufacturer/investor and see if you really want to go through with everything.

In conclusion I would encourage designers to go on line for more information. The Patent & Trademark Office has great information. And again read Patent It Yourself by David Pressman. In my opinion this should be required reading for all designers in the US.

“I thought this guy was my friend.”

this kinda goes with posts on design ownership, doing free internships and alot of other stuff experienced people warn about. people NEED to understand something

THIS IS A BUSINESS

protect yourself appropriately.

best of luck, Cavan. i hope things turn out.

I’d just like to say thanks for everyone who made a post here…im experiencing some of the same issues, and EVERYONES input has been extremely helpful!!

Another question…

I have a unique project that I’d like to take to the next level…meaning, I would like to start meeting with prospective companies/manufacturers. This project is also being published for the second time in Metroplis in the month of October (I heard that this might help protect me to a certain degree). When I meet with these types of people, I know I should have them sign a “confidentiality” type of agreement. I have no patent applications processing right now, because I literally just came out of school and am broke, but i was wondering if anyone had any advice about what to do in protecting myself when I do attempt to propose my project to “bigger” people.

Also, does anyone have any knowledge about thesis work completed while in school, and what role this situation might play?

Thanks!

i’m no lawyer so fwiw.

school work is sometimes owned by the school according to some things i’ve read. check into possibility that you don’t actually have the rights. if not talk to the school about getting them back.

publishing a design is effectively going public with it. without a patent you likely lose rights doing this. products on which i’ve worked have been shown at trade shows without patents - but not publically. they are shown behind closed doors to good clients who have signed Non-Disclosure agreements.

i’d get a Design Patent if i couldn’t afford a Utility Patent (and maybe a Provisional Patent). they are very low cost and really only require a set of images. while waiting to receive the design patent, i believe you can label the product “patent pending”. can probably confirm that with the uspto. might keep some companies from casually ripping you off. might. but honestly if it’s really worth a patent, you should just go to a Patent Attorney.

i’d also get a formal Copyright registration too. can’t hurt. also low cost.

most important is i’d get smart on all the legal issues. that again means talking to a lawyer. don’t trust others to protect your interests. if it’s worth money, they’ll most likely try to screw you.

my .02 and good luck.

I’m no lawyer either, so proceed at your own risk. in response to the above posts, this is what I’ve learned from various Patent Attornies. Anyone, please correct me if there are any errors or omissions:

  1. You don’t “lose rights” to a patent if you are within your statutory limits. in other words, in the US you have 1 year after the first date of publication to apply for a UTILITY patent, and 6 months after the first date of publication to apply for a DESIGN patent.

  2. Any work disclosed with non-disclosure agreements is, by definition, not considered “published.” NDA’s are vitally important then. So you should, at the very least, have a lawyer review the one you’re issuing to make sure you’re fully protected.

  3. A public disclosure has nothing to do with whether or not a design was shown “behind closed doors.” You can probably show it to family and one or two friends (friends, in quotes), but if you show it at a trade show WITHOUT an NDA, this is considered “first date of publication.” As mentioned, even a competition submission may qualify as publication, even if you don’t win.

  4. “Patent pending” can only be claimed IF you have officially filed an application. If not, you break the law by making that claim.

  5. “Patent pending” offers no protection whatsoever. It only serves as a kind of psych warning, which means nothing to big corps with legions of lawyers.

  6. I’m not sure why Utility patents have to cost $15,000. Estimates I’ve gotten from Patent Attorneys are more in the range of $3500-$5000 depending on the complexity of the design. High tech projects may ratch it up to $15K, though I’m wondering whether or not this figure is for multiple utility patents on the same complicated design.

Attorneys have quoted $1500 for Design patents.

  1. Since Design patents offer minimal protection, cover only the aesthetic features of a project, and are pretty easy to manuveur around, you may want to consider the following strategy. Think: securing patents is like buying real estate. For ex., if the state of California represents all of the patents that can be purchased for, say, your faucet design, your Design patent is like one unit of land in California, and for another $1500, you can purchase the unit next to you, even if you intend not develop it, and just to prevent someone else from developing it. The more $1500 bundles you have, the more territory around your unit you can secure. Thus, to minimize competition, you can preempt people from altering your design slightly and then getting a Design patent for it.

  2. As previous posters said, TRY TO GET A UTILITY PATENT, but if you can’t think about strategizing as in No. 7.

  3. Even if you can’t afford to apply for patents worldwide, if you apply for a US patent, your patent would prevent anyone from making, using, selling, offering to sell, or even importing a copy of the design into the US. Thus, even if a copy was made in China, importing into the US would be an infringement, and you could sue before the International Trade Commission to block the importer. This is done quite commonly by high tech companies to block infringing products.

  4. Core SHOULD have a lot more info about all of this, maybe a dedicated discussion room. Not many people are “there” yet, but the sooner we have this kind of info in our heads, the better for us as design professionals. LawSF, I am where you’re at with a few projects, and I can tell you, it’s tough as hell to know how to protect yourself when approaching manufacturers and also get advice from people who have already. I’ve concluded that it is a combination of taking precautions AND taking risks to get your work out there. Most of all, live big, live smart and DO.

Been there, keep posting! This is a great discussion.

  1. sounds more accurate and in line with what i’ve experienced.

  2. "A public disclosure has nothing to do with whether or not a design was shown “behind closed doors.” - exactly. point was that sometimes people say “it was shown at a trade show before it was patented”. that’s often inaccurate. unprotected products should have an NDA agreement before disclosure. apologies if my comment wasn’t clear.

  3. But afaik, “patent pending” doesn’t discern between type of patent. that could be to a person’s advantage. but i’m not sure if the term is in fact specific to a Utility patent.

  4. which may or may not be beneficial.

  5. and beware of Provisional Patents. they should be equal to a Utility Patent. afaik it’s mostly a timing game. but companies offer crap Provisional Patents for the same cost as some Utility Patents. and I honestly don’t see why people don’t submit their own Design Patent. you can view them on uspto.gov and see just how simple they are. you no longer need the traditional patent drawings.

  6. “importing into the US would be an infringement, and you could sue before the International Trade Commission to block the importer.” - better yet, sue the retailer. i’ve heard that works wonders.

www.bolo.com

oops

www.nolo.com

I’m waiting to meet with someone and will try to give input untill I have to take off.

Ok, first your first showing in Metropolis is the important one. That is unless you went public before that or have significantly changed your design in an unobvious manner. You need to establish when your work was officially made public, then count 365 days. From the PTO "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 the application for patent in the United States, ". This applies to design and utility patents. This is known as the “one-year rule” and in the US is one rule that does not bend or break.

Now understand that likely any potential foreign patent/etc rights are probably gone. If you do still have time in the US you need to file papers before your deadline expires. If you were in Metropolis it is my guess that your design/invention would likely fall under a design patent vs/ a utility patent. Hence it may be easy for someone to get around any protection that you may get.

Now here is my advice take it with a grain of salt. Whenever my designs/inventions have been published in a magazine I try to go into high gear. I no longer worry about non-disclosures since many companies do not want to sign them and they are only so useful once you are in the public eye. If you haven’t gone public with a design or invention get a non-disclosure. There are numerous ones that you can copy online etc. Likely a company will have their own non-disclosures which usually state that any potential work may already been known to them. Try to find a middle ground. The disclosures that are more likely to get signed are short and simple (less than one page). If you have no other choice sign their disclosure. If something goes to court and you document everything, the independent (poor designer/inventor) will have a sympathy advantage with the courts.

I think you (personally) may be better off really going public. Do press releases and let everyone know about your already being in Metropolis with another piece coming up. Go to trade shows, find manufacturers, do a search with Thoams Registers, etc. really push it. If you can get Metropolis to print an email in their next story- do it. With every article written about me or my work, (about a dozen stories) I have been contacted by a manufacturer on every single design. Granted these don’t always pan out but its a start.

You have give lots of good advice ykh so I’ll try not to chime in too much, rather just give some additional insight. Again just my opinions take them or leave them.
school work is sometimes owned by the school according to some things i’ve read. check into possibility that you don’t actually have the rights. if not talk to the school about getting them back.

Yeh I dealt with this one before. Many designers think that their schools are on their sides but that usually is not the case. All states, schools, and rules are different. I know many of them. Basically the professors think that all student work belongs to them (the professors) and the schools both public and private think the works belong to them(schools) This is not true. With some exceptions. If you are a grad student on the school payrole a percentage of the work belongs to the school. This is a great way to get screwed but hey the school is giving you money so essentially you are an employee. Some schools let this slide. Stanford is a great example. Projects started by students have gone on to have values of $ billions. Please keep in mind companies like Google, Dell, Microsoft, UPS/Fed Ex From small biggings great things can transpire. As for undergrads- I was caught up in this one. Where I went to school they said that two of my undergrad inventions belonged to them. I dealt with them for 3 months. They wanted to give me 33% and keep 66%. I let them know that I have been around the block and with the publicity that I got they know that they couldn’t keep up with me. They ended up saying that I could do more on my own. And I did actually selling the designs. As for professors that is crap. They pull this every damn semester. Did you the student/designer sign away your rights before going to school? Are you paying the school/professor to go to school? Yes there are many sponsored projects where students are essentially forced to sign away their work. I was involved in this as well. A huge company in the US sponsored a project but only gave advice not fiancial support. Then at the end of the semester they came in with cameras flashing. I wish the IDSA would grow some balls and try to get a handle on this. So many students and designers are getting screwed.

publishing a design is effectively going public with it. without a patent you likely lose rights doing this. products on which i’ve worked have been shown at trade shows without patents - but not publically. they are shown behind closed doors to good clients who have signed Non-Disclosure agreements.

You have to watch this. There is the precedence setting case of two engineers on a bus. One just said we are working on a system that will solve the known problem. This was ruled to be enough of a disclosure because the two engineers worked at opposing companies, even though they did not reveal what they invented only that they were working on it. Showing at a tradeshow without a non-disclosure is going public.

i’d get a Design Patent if i couldn’t afford a Utility Patent (and maybe a Provisional Patent). they are very low cost and really only require a set of images. while waiting to receive the design patent, i believe you can label the product “patent pending”. can probably confirm that with the uspto. might keep some companies from casually ripping you off. might. but honestly if it’s really worth a patent, you should just go to a Patent Attorney.

This is basically true. A provisional patent just gives you 365 more days to get a regular patent application ready. You still need to follow all rules, and it will end up costing more in the long run. A design patent lasts for 14 years from issuance, while a utility last 20 years from the filing date. The design patent requires no maintenance fees but you cannot do a provisional patent application (PPA) with them. Still utility patents are much stronger than design patents and hence may give you more bang for the buck
i’d also get a formal Copyright registration too. can’t hurt. also low cost.

most important is i’d get smart on all the legal issues. that again means talking to a lawyer. don’t trust others to protect your interests. if it’s worth money, they’ll most likely try to screw you.

Good points. First hire an attorney that is licensed and in good standing with the PTO, and hopefully resides in your state (or country if filing overseas). Go to www.uspto.gov and get the document about attorneys and agents-you’ll find it. As a side note attorneys usually don’t screw their clients out of their patents/intellectual property. There is too much at stake for them to screw you. As usual how attorneys screw you is the legal way-by padding their bills, doing a poor job. Attorneys want cash-not inventions or designs. This cannot be said for countless organizations/individuals who will screw you any way they can. Please note that inventor fraud is one of the most expensive crimes in the world. Lots of good information out there on bad groups/companies/individuals. Do a online search and make phone calls to people before you “invest/trust” others with your work.

As an analogy to the question about who owns the work you do/have done at school, I’ve also been told to be careful about the work I do on my own, after work hours.

Apparently, if you’ve signed a Confidentiality Agreement with your design firm that says (in one fashion or another) that the company owns all of the work you produce while in its employment, the company can also claim rights to any ideas and products you produce on the weekend or after work.

AND IF YOU USE THEIR EQUIPMENT TO DO ANYTHING RELATED TO YOUR OWN WORK --however trivial and minor the use may seem to you-- then the merits of their claim(s) is strengthened. If the company has ever told you even verbally that “moonlighting” is not allowed, take it seriously b/c that may have initiated their claim on what you believe to be your own independent IP.

Thanks since I have been screwed so many times this is an important issue for me. If questions are asked I will try to help.

I am involved in a similar case of patent fraud but I did have a contract. The client patented it himself unbeknownst to me and represented himself as the inventor.

In the USA it is first to conceive not first to file so I would send in a patent and claim it and then when theirs comes out in the year and a half or so, seek an injunction to invalidate their patent.

Even if there was no contract, you can still be entitled to get paid. As long as you have proof you did the work.

I was once in a mediation set up by the local bar association. They calculate and determined the the fees based on “the reasonable value of your services” even without a written contract. They compare a few designers at your level and ues that as an average to base what fees you can reasonably ask for in return for your work.

I too thought my client was a “friend” but he was out to screw me all along. I hate to admit it but it happens all the time as this is the latest of a string of dishonest clients I have run into in my career thus far. Luckily I am getting smarter with my contracts and each time I get burned I add another stopper to the terms. I do think the money I spent on lawyers has been tuition in a way.

I would look into a few good books like Lee Epstein’s Legal Forms for the Designer. THer are other ones out more recently with a similar titel…perhaps look on Amazon.

Never do things for free. Never do sketches for free. Never do things just on royalty. Those are rules to live by. ALways take some upfront fees or some sort of deposit before doing any work. I have seen most of the tricks out there but I am always surprised as these crooks are pretty caluculating and ingenious in their own right.

Good luck!

I was, like many of you, in the process of trying to yield back invested time and energy of patenting an idea and a product.

Thank you for all of the incredibly helpful feedback.
Even though I have an attorney working on my patent process, it would have been very difficult to get all of the information in the way provided by you.
This is why I respect the Core community so much.

The solutionS has been disclosed to few ppl, and a giant company.
In a presentation meeting with the President and the vice president of a world reknown company, the CEO of the companie’s U.S marketing signed a 5 page confidentiality agreement, during the meeting the president exclaimed " Miracle! " and expressed serious interest, yet no agreements were made or proposed.
I was told to wait 2 months, as they deal with many proposals and would need time to assess the situation.

It has been over a month since the meeting and i have not yet received anything from them.
I am trying to move forward in all directions.

I have also met with my school chair person who was very positive about the idea and showed serious interest, I was told to wait until september to be able to meet and discuss ways to maybe work together with other experienced professors with much knowledge to relative processes.

My question is:

What would be the best way to mass expose the idea and yield most benefit?

Should i contact the company representatives again and push the situation?

Would it be a good idea to make a brochure and distribute the product in it’s current stage my self?

Would it be wise to contact other companies simultaneously and try to shop around?

I feel like too much time is passing and am nervous, anticipated, and worried.


Any feedback will be Greatly appreciated.

:unamused:

b cool, chill and work hard

Sorry I cant offer n e important feedback

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