I’ve designed & created a furniture line which is protected by utility patents here in the United States. I will soon be applying for international patents in select countries as well.
Although a local small-scale wood-furniture factory made beautiful prototypes and small production runs, I’ve exhausted all efforts to try to get the numbers to work to get the furniture produced here in the United States. I explored other factories as well and they all quote me about the same price.
I really think the only way to get my product made economically is in China. I have a Chinese visa and have worked & visited factories before to produce components, but they were small components to much larger products. My biggest concern is working with a factory in China to produce my furniture, with them learning the details of the design & production, and releasing it in countries that I have patents in (I am not quite sure I have enough investment to protect my IP here), or countries outside of my patents for a lot cheaper than I can sell them for. How would you guys go about getting a plethora of quotes from China without giving away your design to a hundred different factories, and then working with the chosen factory to produce a product you are coming out with while protecting your IP?
Preface, not a lawyer. From experience with companies I have worked with in the past in addition to the utility patent we have filed for design patents in the US and China. The design patent process is much faster (and cheaper) and was helpful for blocking things leaving or entering ports.
That said, it is a gamble. I’ve been involved with several products that were knocked off. A case were the factory showed a variant of the design at a trade show (that we were attending) a full year before our product launch. It was 20% different, but we had to go and explain why this was not in the spirit of partnership and luckily they removed it from their booth on the opening day of the show.
Those were experiences with medium to large size companies that had legal teams. I hope someone else on here can speak to their experience as an individual or with a small company.
From what I hear it is very hard to prevent copycats in other markets.
What you can do is design the product in a way that you can delegate production of different parts to different factories. If that is not possible, you can only hope you have a reliable partner!
The advantages are of course 1. it is a compliment to your design and 2. it fuels innovation in that you have to create a unique product and bring it to market rapidly.
I actually have design patents on one of the pieces (It’s a four-piece set) in addition to the utility patents on all of it. I lucked out with the utility patent process, and got almost all of my claims in about a year, which my attorney said is unheard of… usually it takes a year to three or four. After discussion with my attorney and further investigation we decided to not go further with design patents for now, as they are the easiest to bypass and what truly makes the furniture unique are the novel utility claims.
Hi Ralph,
I have the unique packaging (it’s part of the overall idea of the furniture) designed in one Chinese factory (I already have market-ready prototypes produced and ready to be ordered as soon as the furniture is developed and made), some of the hardware made in another, but the vast majority of the product is made from wood - if I get the wood made in one factory, it will be impossible to not know how to make the rest of the furniture.
What I’m most concerned about is the factory selling my furniture to markets where I’m protected in a roundabout way - copying my design and selling it for way less than I could online being one of them. The other scenario is them selling it in countries where I have patents, knowing I’m a small company and them having the capital, just being able to out-lawyer me. The first scenario is much more realistic, and is the bigger of the two concerns I have.
Thanks for the help so far guys. I’m going to meet with my attorney about this as well.
Have them sign a contract, there’s not much else that you can do, and even a contract can be unenforceable.
When getting quotes, never send a full, finalized design. Remove important features from parts, and don’t send every part. At this stage you should be comparing costs between factories, final design doesn’t matter.
A manufacturer is very unlikely to try to sell your design, especially direct to customer. The work to sell products is VERY different from doing manufacturing and it usually doesn’t make financial sense, and makes zero sense as far as reputation goes. If a manufacturer is going to sell your stuff behind your back, why would you ever go back to them?
At the end of the day, it’s a relationship and their should be trust in both parties for it to be successful.
Unfortunately, as a small fish there’s not much you can do if a supplier starts selling your stuff. Having the patents (especially utility) will help you if a decent sized company starts to sell the counterfeit stuff outside of China. However, there’s not a lot you can do if it’s different enough or if it’s sold online from China.
I work at a small-ish company and we got ripped off big-time by an Asian supplier reselling our completed products in sub par quality with branding that was confusing to the customer. As you can imagine, it was a complete mess. On the flip side we’ve also had suppliers offer us parts we know to have been designed by our competitors…
During a quotation phase, as Amunta mentioned, send just enough info for a price and purposely obfuscate critical details if possible. For example, we recently were requesting quotes for a casting and we sent out a CAD from a part several generation older and scaled it so the volume matched. From there, we have quotes and can hammer out the details with one or two suppliers.
The fact that key components of your product are handled by multiple suppliers is a very good thing. It’s much easier if your supplier has the whole production line at their disposal to start selling. If you think your product is especially vulnerable to counterfeiting, check who the supplier works with. There are a lot of ties between companies in China where say an umbrella corp does light fixtures but then one company does the metal work and another one across the street does shades. It might be a bit of a gamble to deal with them if you sell shade as their ties can help you streamline production but also means they’re more likely to know the sales side of it.
IMHO, for something like furniture, I would invest heavily in the branding and marketing of the product. That’s ultimately your most likely differentiating factor. There’s a few good measures to take but ultimately it doesn’t really stop anyone. It’s like locking your keys in a shady neighbourhood, it doesn’t stop bricks.
I think what you said about not sending in the complete design is very smart. I will follow through with that.
And also, I understand you on the second half of that. It really doesn’t make sense to do that. I think, in general, you are right - most factories won’t spend the capital or hurt their reputation ripping off designs to continue getting current customers - but the fact that it happens, and happens enough to where people accept this as a legitimate concern is telling.
Louis,
Thanks for the insight - and I really understand what you say about going with a factory that doesn’t have sales experience. When looking through Alibaba for furniture manufacturers, a lot of them sell standard, complete pieces, such as leather-upholstered seating or complete stool sets in nicely-designed packaging - do you feel as though these factories with that sort of capability will more than likely have the means & reason to steal my idea versus, say, a factory that just does mass-manufacturable woodwork?
I concur with Yo on the value of Chinese design patents. You can use them to threaten any other Chinese factory knocking off the product for export. They take that seriously too, in spite of what you may here in the media.
I used a law firm in Hong Kong to get the patents at a previous company. I’m sure you can find someone in HK that speaks english and get these done for you. I do believe they need to be renewed annually, so be prepared to write a check every year.
Just checking, but I know that North Carolina still has a lot of furniture factories. I would recommend checking there if you haven’t. It’s probably hard to get anything off the ground in NA without a track record for the product though.
I am a US Patent Agent, If it helps, it is worth knowing that the most common infringement in China involves the exact duplication of a product. In some cases the factory adds a second shift, one to fill your order and one to make your product to sell elsewhere.
When someone infringes on a utility patent, and the inventor wins the infringement case in court, the company that infringed is liable to pay a reasonable royalty. When someone infringes on a design patent, the company that infringed is liable for 100% of the proceeds from the sale of the stolen design.
Your unlikely to be able to afford, let alone navigate, the legal system in China but you will be able to send a cease and desist letter to anyone selling the knockoff. Often the possibility of loosing 100% of earnings leads to a settlement out of court.
You might also ask your patent attorney about a “Design Model” Patent in China. They are low grade, low cost patents but the Chinese seem to honor them.
I’m in the office furniture industry and one way we use design patents if we feel it’s unique enough (either in addition to utility or if no utility is applicable) is to design patent the overall product (office seating, for instance) and then break down and patent individual components such as back shape, arm shape, base shape, etc.
Also, create a good NDA before even showing it and have all companies who see it sign it before showing anything.
I’ve been involved in Far East manufacturing for about 20 years - simply put, you will not be able to prevent a knockoff if a factory in the Far East feels the product can be profitable. While we always have factories sign non-disclosure documents and we file patents in the US/EU (and anywhere else you think the product will be sold - that’s important, Ill get back to this…), I’ve taken a different approach. We have a few guys on the ground in the Far East with whom I’ve worked during these whole 20 years I’ve been doing this. I trust those guys and I make sure they have a presence in the factory (being seen, not just heard), I make sure they communicate that we’re serious about continuing to use the factory (incentive not to rip us off) and I make sure they build relationships with the factories (trust). We try to purchase any tooling along the way and if a relationship ends we arrange for it to be moved (even moved and destroyed if need be) Those are the only ways you can truly minimize the risk of knock-offs. Back to “where to protect”; If you protect where it’s sold (not where it’s made), it’s much easier to take action, but remember that any action you take will cost a good bit of money. Someone mentioned trade-shows - that’s a great place to look around - tons of Far East manufacturers are captured in one place. Someone else mentioned cease-and-desist orders, those are great as well, but unless you have some on-the-ground-presence its likely any remote/virtual communication to the guilty factory won’t be taken seriously.