an idea that has some similarity to an existing patent

[mikewax]

What is the name of your state? CA
ok i'm a product designer and i can't talk about the product i'm designing so i'm making up a hypothetical story.
suppose i get hired to design the first ever swiss army knife, a SAK with interchangeable blades. my boss has a patent already. i design the knife and hand him the CAD files and he likes everything, EXCEPT there's one blade that he doesn't want to include, the screwdriver. the rest of the blades are fine, he says, but he doesn't want the screwdriver and tells me to design a wooden toothpick instead.
so i do like he says, now he has a swiss army knife with no screwdriver blades.
he files for separate patents for each blade, and starts to sell the product with a default set of blades. he also starts selling different blades separately. but no screwdriver blades because he thinks they're completely worthless.
so after fullfilling my part of the contract, we part company and i immediately patent and sell the screwdriver blades. my blades are compatible with the SAK, that is to say, they have the same mechanism of attachment as the default blades. that mechanism of attachment has not been patented. said mechanism is not mentioned in any of his patents. (of course in reality it would be, but in this scenario its not).

so that's essentially the situation i'm in, and i'm wondering if, in reality, it would be legal for me to sell and patent the screwdriver blades.
does anybody know about this kind of thing?

 

[quincy]

What is the name of your state? CA
ok i'm a product designer and i can't talk about the product i'm designing so i'm making up a hypothetical story.
suppose i get hired to design the first ever swiss army knife, a SAK with interchangeable blades. my boss has a patent already. i design the knife and hand him the CAD files and he likes everything, EXCEPT there's one blade that he doesn't want to include, the screwdriver. the rest of the blades are fine, he says, but he doesn't want the screwdriver and tells me to design a wooden toothpick instead.
so i do like he says, now he has a swiss army knife with no screwdriver blades.
he files for separate patents for each blade, and starts to sell the product with a default set of blades. he also starts selling different blades separately. but no screwdriver blades because he thinks they're completely worthless.
so after fullfilling my part of the contract, we part company and i immediately patent and sell the screwdriver blades. my blades are compatible with the SAK, that is to say, they have the same mechanism of attachment as the default blades. that mechanism of attachment has not been patented. said mechanism is not mentioned in any of his patents. (of course in reality it would be, but in this scenario its not).

so that's essentially the situation i'm in, and i'm wondering if, in reality, it would be legal for me to sell and patent the screwdriver blades.
does anybody know about this kind of thing?

Were you employed to invent so that your boss holds the knife patent?

You potentially could patent (if novel and nonobvious) the screwdriver blade that can be used with the knife but you couldn't sell the screwdriver blade with the knife without permission from the knife's patent holder.

In other words, you could have a patent but couldn't capitalize on it without cooperation from the patent holder upon whose invention yours depends.

This is assuming your boss did not retain rights in the screwdriver attachment even if he chose not to use it.

 

[quincy]

Here is a link to an older thread with a theme similar to yours and an explanation offered by forum member "divgradcurl," a patent attorney, which is about as good as it gets:

https://forum.freeadvice.com/threads/velcro-and-my-idea-patent-help.231705/

 

[mikewax]

thank you Quincy

Were you employed to invent so that your boss holds the knife patent?

i wasn't employed, i signed a profit sharing contract with a percentage of the sales revenue

You potentially could patent (if novel and nonobvious) the screwdriver blade that can be used with the knife but you couldn't sell the screwdriver blade with the knife without permission from the knife's patent holder.

it's definitely novel and not obvious, and i want to sell the "blade" by itself, probably through the same distributor.

This is assuming your boss did not retain rights in the screwdriver attachment even if he chose not to use it.

no he didn't and almost certainly never will.

 

[quincy]

If your "screw driver blade" qualifies for a patent, then you can apply for a patent and potentially sell your blade on its own as an add-on to the patented knife.

BUT, you will want to sit down with a patent attorney in your area to make sure your invention does not infringe on the knife patent rights (e.g., in how blades attach to the knife).

Good luck.

 

[mikewax]

Here is a link to an older thread with a theme similar to yours and an explanation offered by forum member "divgradcurl," a patent attorney, which is about as good as it gets:

https://forum.freeadvice.com/threads/velcro-and-my-idea-patent-help.231705/

well that was a helluva read. extremely helpful. thanx

 

[mikewax]

If your "screw driver blade" qualifies for a patent, then you can apply for a patent and potentially sell your blade on its own as an add-on to the patented knife.

BUT, you will want to sit down with a patent attorney in your area to make sure your invention does not infringe on the knife patent rights (e.g., in how blades attach to the knife).

Good luck.

yeah sounds like a good idea. thanx will do

 

[quincy]

well that was a helluva read. extremely helpful. thanx

yeah sounds like a good idea. thanx will do

Yes. I think divgradcurl answered the questions you asked about as completely as they can be answered in a forum setting.

I wish you luck with your invention.

 

[HRZ]

In light of your other post its possible inventor is moving the substandard product ahead ..to fail...and has provision to bring far better version to market in different format but freezing out early investors in early model from the new model

 

[quincy]

Doubtful. The inventor can improve on his invention but cannot exclude others from their underlying patent rights.