Design patent enforcement/protection following planned obsolescence

[newenglanders]

NH

A manufacturer has discontinued support for one of its products. Parts are no longer available from them. The few available secondary market (NOS) parts have become prohibitively expensive. I designed alternative parts (for my personal use) that eliminate many of the issues that plagued the OEM parts...problems the manufacturer never bothered to address even back when it was selling replacement parts.

The defect in the original design became such a safety issue that owners simply quit using the product...even though there was never a formal recall (about which I am aware anyway). And those who did buy replacement parts ended up in the same boat within months.

My question is: May I make my replacement parts available to the many hundreds of thousands of people who purchased this product and cannot use it (without suitable parts) and for which they can no longer obtain replacement parts from the manufacturer?

I should mention that the manufacturer did release a new version of the product. It has the same exact safety/reliability issue but its parts are not interchangeable with the previous version. Does a manufacturer's decision to discontinue support for a product (planned obsolescence, if you will) enable others to create replacement parts without violating design patent laws?

Thanks in advance.

NE

 

[quincy]

NH

A manufacturer has discontinued support for one of its products. Parts are no longer available from them. The few available secondary market (NOS) parts have become prohibitively expensive. I designed alternative parts (for my personal use) that eliminate many of the issues that plagued the OEM parts...problems the manufacturer never bothered to address even back when it was selling replacement parts.

The defect in the original design became such a safety issue that owners simply quit using the product...even though there was never a formal recall (about which I am aware anyway). And those who did buy replacement parts ended up in the same boat within months.

My question is: May I make my replacement parts available to the many hundreds of thousands of people who purchased this product and cannot use it (without suitable parts) and for which they can no longer obtain replacement parts from the manufacturer?

I should mention that the manufacturer did release a new version of the product. It has the same exact safety/reliability issue but its parts are not interchangeable with the previous version. Does a manufacturer's decision to discontinue support for a product (planned obsolescence, if you will) enable others to create replacement parts without violating design patent laws?

Thanks in advance.

NE

If the part you designed uses a device or process that is covered by the patent, or if your device or process is sufficiently equivalent to the patented part in what it does and how it does it, it can be infringement on the patent holder's rights.

You potentially can obtain a patent on your improvements but you would only be able to capitalize on an improved part that uses a patented design if you get permission from the patent holder. You can seek a license from the patent holder.

You should have your design personally evaluated by a patent professional.

Good luck.

 

[FlyingRon]

First off, what you are talking about is a UTILITY patent, not a DESIGN patent. A design patent covers decoration of a product.
As Quincy points out, there's no provision in patents (or copyright for that matter) for allowing you to infringe just because the product is orphaned.

 

[quincy]

What newenglanders probably should look into is a cross-licensing agreement. He probably will want to obtain a patent on his improvements first and then agree to share his improvements with the original patent holder so both can benefit.

 

[justalayman]

What newenglanders probably should look into is a cross-licensing agreement. He probably will want to obtain a patent on his improvements first and then agree to share his improvements with the original patent holder so both can benefit.

Of course that is presuming the original patent holder wants his old model to be marketed or repaired. Given they have a new design, it is just as likely they want possible buyers to buy the new model rather than fix the old models they have. Given there was a safety issue with the first model, I would think the patent holder would not want the old model to live on, putting the patent holders financial condition in constant and ever living jeopardy.

 

[quincy]

Of course that is presuming the original patent holder wants his old model to be marketed or repaired. Given they have a new design, it is just as likely they want possible buyers to buy the new model rather than fix the old models they have. Given there was a safety issue with the first model, I would think the patent holder would not want the old model to live on, putting the patent holders financial condition in constant and ever living jeopardy.

Yes. Assumptions have been made.

 

[xylene]

The OP suspects a market numbering in the hundreds of thousands. At that scale any product needs an IP and legal review.

 

[quincy]

The OP suspects a market numbering in the hundreds of thousands. At that scale any product needs an IP and legal review.

Agreed. An IP professional should be contacted and the products (past and present) personally reviewed prior to further plans are made to develop the patent-improved product.

 

[newenglanders]

Good evening all,

I want to thank you all for taking the time to respond. This was extremely helpful. I figured I might need to pursue having a pro take a closer look at the situation, but just understanding the potential licensing issues alone has been helpful.

FlyingRon...thanks for that clarification. I've always wondered where the line between aesthetics and utility is drawn...at times it seems like a gray area.

Justalayman...I mentioned in the original post that the newest generation of the product has the same design defect/flaw/issue. Despite fairly widespread and easy-to-find reviews that cover the Gen 1 problem in detail on a variety of blogs and Youtube, the company was either unaware of the issue (which I find difficult to believe) or simply chose to ignore it. Consequently, their Gen 2 product suffers from the very same design flaw. Gen 1 and Gen 2 parts are not interchangeable. And while Gen 2 replacement parts are still available, they're also flawed in precisely the same way.

If the patent holder was genuinely concerned about liabilities one would think they'd have EOL'd Gen 1 and addressed the issue in Gen 2 at the very least. So liability due to design flaws isn't high on their list of priorities. But I could definitely imagine them wanting to simply sell Gen 2 despite its obvious inherited safety and performance issue. Thing is, my part solves the issue completely/thoroughly. Not as a matter of opinion but supported by test results.

Quincy...the notion of cross-licensing hadn't occurred to me. Frankly, I didn't know it was an option. Thanks for alerting me to that possibility. I've already reached out to the patent holder in an attempt to schedule a call with them. I'm hopeful they'll be open to allowing me to sell the replacement part sooner rather than later if I take on any liability (due to the part), possibly with some sort of licensing or revenue-sharing arrangement.

From what I understand, based on the date they originally filed, their patent expires June 2023 after which there would still be considerable opportunity to sell replacement parts without their permission. Since the flaw I identified is the only known safety/durability/performance issue with the design, and the product could easily last decades with improved replacement part...this will be my only option should a discussion never materialize or fall through.

Thank you all again for your insight. Extremely helpful and appreciated.

Kind regards,

NE

 

[quincy]

Good evening all,

I want to thank you all for taking the time to respond. This was extremely helpful. I figured I might need to pursue having a pro take a closer look at the situation, but just understanding the potential licensing issues alone has been helpful.

FlyingRon...thanks for that clarification. I've always wondered where the line between aesthetics and utility is drawn...at times it seems like a gray area.

Justalayman...I mentioned in the original post that the newest generation of the product has the same design defect/flaw/issue. Despite fairly widespread and easy-to-find reviews that cover the Gen 1 problem in detail on a variety of blogs and Youtube, the company was either unaware of the issue (which I find difficult to believe) or simply chose to ignore it. Consequently, their Gen 2 product suffers from the very same design flaw. Gen 1 and Gen 2 parts are not interchangeable. And while Gen 2 replacement parts are still available, they're also flawed in precisely the same way.

If the patent holder was genuinely concerned about liabilities one would think they'd have EOL'd Gen 1 and addressed the issue in Gen 2 at the very least. So liabilities due to design flaws doesn't appear to be high on their list of priorities. But I could definitely imagine them wanting to simply sell Gen 2 despite its obvious inherited safety and performance issue. Thing is, my part solves the issue completely/thoroughly. Not as a matter of opinion but supported by test results.

Quincy...the notion of cross-licensing hadn't occurred to me. Frankly, I didn't know it was an option. Thanks for alerting me to that possibility. I've already reached out to the patent holder in an attempt to schedule a call with them. I'm hopeful they'll be open to allowing me to sell the replacement part sooner rather than later if I take on any liability (due to the part), possibly with some sort of licensing or revenue-sharing arrangement.

From what I understand, based on the date they originally filed, their patent expires June 2023 after which there would still be considerable opportunity to sell replacement parts without their permission. Since the flaw I identified is the only known safety/durability/performance issue with the design, and the product could easily last decades with improved replacement part...this will be my only option should a discussion never materialize or fall through.

Thank you all again for your insight. Extremely helpful and appreciated.

Kind regards,

NE

I strongly recommend you apply for a patent for your improvement before speaking with the patent holder. You will want to have legal protection for your invention. A provisional patent will protect your idea when you are ready to discuss your patent improvement with the original patent holder.

And I recommend you speak to a patent agent or patent attorney in your area prior to that.

We all appreciate the thanks, newenglanders, so thank you.

I wish you success with your patent.

 

[newenglanders]

Agreed, Quincy. It makes sense.

I have a few more questions, if I may. Have you encountered situations in which a patent holder has filed successive patents for the same tech spread out over a period of several years? I'm not talking about incremental improvements. I'm talking about virtually verbatim patent language and identical diagrams refiled every couple years to obtain a new patent number.

Their original patent expired a half dozen years ago. But the patent holder appears to keep re-applying for patents to cover tech for which they already held expired patents. The later overlapping patents, each with its own patent number, expire in 2023 and 2024. Does the USPTO actually allow patent holders to circumvent patent expirations by filing fresh patents for the same exact tech in order to "reset" patent expiration dates?

I get that an existing patent may be extended under very specific circumstances. But I'm not referring to any extension of an existing patent. I'm referring to the filing of entirely new patents that cover the same tech as the expired patent...as if filed for the first time. It seems such a practice would render patent expirations pointless beyond generating recurring patent application revenue for the USPTO.

Here's the specific language that appears in the patent filing with the specific patent/serial numbers and titles removed:

"This application is a continuation of U.S. application Ser. No. X entitled “ACME System” filed on Aug. 24, 2007, now U.S. Pat. No. 123, which is a continuation of U.S. application Ser. No. Y entitled “ACME System” filed on Jun. 5, 2003, now U.S. Pat. No. 234, which claims the benefit of and priority to U.S. Provisional Application No. Z entitled “ACME System” filed on Jun. 7, 2002, U.S. Provisional Application No. A entitled “ACME System” filed on Jul. 31, 2002, and U.S. Provisional Application No. B entitled “ACME System” filed on Aug. 1, 2002, each of which is hereby incorporated herein by reference."

 

[FlyingRon]

I have a few more questions, if I may. Have you encountered situations in which a patent holder has filed successive patents for the same tech spread out over a period of several years? I'm not talking about incremental improvements. I'm talking about virtually verbatim patent language and identical diagrams refiled every couple years to obtain a new patent number.

Theoretically impossible. Once something has been patented, it can never be repatented. It ceases to lack the novelty aspecdt required of patentable material. If by some odd chance it were to slip through, it certainly would be easily challenged. In fact, once it is disclosed, it loses patentability. For example, if you file a provision application and don't follow it up within the year with a non-provisional app, nobody (not you nor anybody else) can ever patent that invention.

"This application is a continuation of U.S. application Ser. No. X entitled “ACME System” filed on Aug. 24, 2007, now U.S. Pat. No. 123, which is a continuation of U.S. application Ser. No. Y entitled “ACME System” filed on Jun. 5, 2003, now U.S. Pat. No. 234, which claims the benefit of and priority to U.S. Provisional Application No. Z entitled “ACME System” filed on Jun. 7, 2002, U.S. Provisional Application No. A entitled “ACME System” filed on Jul. 31, 2002, and U.S. Provisional Application No. B entitled “ACME System” filed on Aug. 1, 2002, each of which is hereby incorporated herein by reference."

You misunderstand. There has to be some new claim in the follow on patent that improves on the former. The new patent filing only covers the new and novel improvements. There are many times you have to include prior art in your patent application to explain what you are claiming. The whole point of patents is that you are getting exclusivity in exchange for making a public disclosure of the invention, so you can't be obtuse in your filing.

Somewhere in the actual patent are what they are claiming as covered NOVEL and NON-OBVIOUS in this patent.

 

[newenglanders]

Somewhere in the actual patent are what they are claiming as covered NOVEL and NON-OBVIOUS in this patent.

Got it, thanks FlyingRon. Somewhere buried in the language of the newer filings are the improvements for which they sought new patents.

So that original patent (now expired)....which happens to cover the exact mechanism I've improved...is still expired. They cannot renew that. But I would need to understand if any of the later patented improvements also affect my specific replacement part design. Hopefully I've interpreted your reply correctly.

Well, I can certainly see why IP pros and patent attorneys are invaluable. This is a maze of IP legalese.

 

[quincy]

Got it, thanks FlyingRon. Somewhere buried in the language of the newer filings are the improvements for which they sought new patents.

So that original patent (now expired)....which happens to cover the exact mechanism I've improved...is still expired. They cannot renew that. But I would need to understand if any of the later patented improvements also affect my specific replacement part design. Hopefully I've interpreted your reply correctly.

Well, I can certainly see why IP pros and patent attorneys are invaluable. This is a maze of IP legalese.

Haha. It is a maze of legalese. .

The bottom line is that, if your invention is building on or improving an existing patent, you need permission from the original patent holder to make and sell your invention.

But, even if your invention depends upon the patented invention of another, your addition or improvement to the original patent still can qualify on its own for a patent, if the improvement is novel and non-obvious.

Good luck.

 

[PayrollHRGuy]

@quincy

[/I] here you go. I'll let you borrow one.