Engineering company i hired developed identical product which is on the market

[kreamc]

What is the name of your state (only U.S. law)?

Engineering company i hired developed identical product for me which is already on market

I have hired a engineering company in California to develop my patent pending design, after i paid the RD fee they informed me that my current design would not be suitable for the proposed intended use. They subsequently designed and developed a new prototype to which i paid for, however during the prosecution stage of the patent procedure it was brought to my attention that there is a eire similar product to mines and i might have a problem making progress with my application. is there any recourse to be taken against the engineering firm based on the fact that an RD fee was paid. Additionally after i brought it to their attention they have refused to reply to me.

 

[Zigner]

What is the name of your state (only U.S. law)?

Engineering company i hired developed identical product for me which is already on market

I have hired a engineering company in California to develop my patent pending design, after i paid the RD fee they informed me that my current design would not be suitable for the proposed intended use. They subsequently designed and developed a new prototype to which i paid for, however during the prosecution stage of the patent procedure it was brought to my attention that there is a eire similar product to mines and i might have a problem making progress with my application. is there any recourse to be taken against the engineering firm based on the fact that an RD fee was paid. Additionally after i brought it to their attention they have refused to reply to me.

Why did you approve the designs knowing that they were "similar" to products on the market without conducting further research?

 

[quincy]

What is the name of your state (only U.S. law)?

Engineering company i hired developed identical product for me which is already on market

I have hired a engineering company in California to develop my patent pending design, after i paid the RD fee they informed me that my current design would not be suitable for the proposed intended use. They subsequently designed and developed a new prototype to which i paid for, however during the prosecution stage of the patent procedure it was brought to my attention that there is a eire similar product to mines and i might have a problem making progress with my application. is there any recourse to be taken against the engineering firm based on the fact that an RD fee was paid. Additionally after i brought it to their attention they have refused to reply to me.

I am confused by what you are saying.

You have a patent pending on an invention. You did not have a prototype when you applied for your patent?

I am not seeing how it would be the engineering firm's fault for discovering that your invention does not work as you had described.

 

[FlyingRon]

I've lost you. Why is it the engineering firm's fault that:

1. Your design doesn't work?
2. Your patent application is for something that there are prior art for?
3. That they informed you of these things?

 

[quincy]

I've lost you. Why is it the engineering firm's fault that:

1. Your design doesn't work?
2. Your patent application is for something that there are prior appliations for?
3. That they informed you of these thing?

I am glad I am not the only one confused by what kreamc has written.

 

[justalayman]

Product A does not work as intended or for desired result.

Engineering firm (EF) designed and produced a prototype for product B. Presumably is works as desired. The problem, somebody else already owns a patent on a product so similar to product B op' design may not be patentable.

Does EF bear any liability for accepting money from op to essentially copy an already patented design?

The one question i can't answer; was EF aware of the similarities to an already patented design when they proposed design B to op? If they were, they simply sold a device already patented to op. If not, do they bear any liability for the ignorant error?

 

[FlyingRon]

Well what he needs is take his contract with the firm to an attorney and see if they breached it. There's no way we can possibly analyze this. The poster makes somewhat contradictory statements. If the item doesn't work, the provisional he filed was entirely worthless. You can't change your claims on the NPA anyhow. Engineering firms do not generally determine whehter things they're asked to do are patentable or not, that's what patent attorneys (and their assosciated technical staff) are for.

However, since the "similarity" came up during his patent prosecution, it would seem that his original (albeit non-functional) design infringes on some prior art. Failure to list prior art on your NPA causes problems.

 

[quincy]

Product A does not work as intended or for desired result.

Engineering firm (EF) designed and produced a prototype for product B. Presumably is works as desired. The problem, somebody else already owns a patent on a product so similar to product B op' design may not be patentable.

Does EF bear any liability for accepting money from op to essentially copy an already patented design?

The one question i can't answer; was EF aware of the similarities to an already patented design when they proposed design B to op? If they were, they simply sold a device already patented to op. If not, do they bear any liability for the ignorant error?

Unless there is something unusual in the contract kreamc has with the engineering firm, I do not see how the firm could be held liable for trying to make a working prototype of kreamc's invention.

Too many unknowns here.