Design Change vs. Intellectual Property

[selena15]

Hi covers

i'm just happy to come back here, believe i missing it

i have a question and happy to put it here

is any design change, or improvement within the equipment, plant, any stuff that an entity has can be consider as change in intellectual property and thus facing risk to have an issue on these topic. actualy there is arguing saying that since it is just done as any maintenance or improvement daily work, it isn't considered as IP, while the change may occur in equipment, plant, or stuff subject to IP regulations.

is there any opinion on that , how to make difference, honestly it is tricky subject isn't it

please advice

thanks in advance

selena

 

[Jim Wynne]

Re: Design change versus intellectual property

Hi covers

i'm just happy to come back here, believe i missing it

i have a question and happy to put it here

is any design change, or improvement within the equipment, plant, any stuff that an entity has can be consider as change in intellectual property and thus facing risk to have an issue on these topic. actualy there is arguing saying that since it is just done as any maintenance or improvement daily work, it isn't considered as IP, while the change may occur in equipment, plant, or stuff subject to IP regulations.

is there any opinion on that , how to make difference, honestly it is tricky subject isn't it

please advice

thanks in advance

selena

Can you explain what you mean by "IP [intellectual property] regulations"? In general, intellectual property includes ideas or methods (which could manifest in tangible form) which, if not protected, might result in some form of loss. Machine maintenance per se wouldn't be considered IP unless there were some proprietary method of performing it.

If you can explain a little further what you're trying to find out we can give better advice.

 

[J0anne]

Re: Design change versus intellectual property

I agree Jim, this question needs to be clarified.

 

[selena15]

Hi all

i meant the regulations protecting the IP such patents, trademarks and copyrights, design patent, application of them developped by the organisation itself. that may be owned by one company and which provide it to all its units. it is subject to regulations, right?

i find this link to give you an overview and your explanantion Jim is agreed with these definition

http :// www. aipla. org/about/iplaw/Pages/default.aspx - DEAD 404 LINK(S) UNLINKED

to come back to my question, how to distinguish the normal maintenance works which can include
improving equipment ,
part of plant, machine,
to add some components...in order to make work better,

from using some stuff subject to IP regulations. because such activities can be done on equipement owned by the organisation, and here it isn't all the time clear what is protected or no. i hope i'm more clear

thank you

 

[Ronen E]

Hi all

i meant the regulations protecting the IP such patents, trademarks and copyrights, design patent, application of them developped by the organisation itself. that may be owned by one company and which provide it to all its units. it is subject to regulations, right?

i find this link to give you an overview and your explanantion Jim is agreed with these definition

http://www.aipla.org/about/iplaw/Pages/default.aspx

to come back to my question, how to distinguish the normal maintenance works which can include
improving equipment ,
part of plant, machine,
to add some components...in order to make work better,

from using some stuff subject to IP regulations. because such activities can be done on equipement owned by the organisation, and here it isn't all the time clear what is protected or no. i hope i'm more clear

thank you

Hi,

As far as I know and understand patent law, you are subject to restrictions whenever you make any profit from using another's IP, or if your use of it creates any loss for the legal owner.

If you want to be sure seek a certified patent attorney's advice in the territory at question (IP laws vary from place to place).

Cheers,
Ronen.

 

[somashekar]

Hi all

i meant the regulations protecting the IP such patents, trademarks and copyrights, design patent, application of them developped by the organisation itself. that may be owned by one company and which provide it to all its units. it is subject to regulations, right?

i find this link to give you an overview and your explanantion Jim is agreed with these definition

http ://www .aipla. org/about/iplaw/Pages/default.aspx - DEAD 404 LINK(S) UNLINKED

to come back to my question, how to distinguish the normal maintenance works which can include

improving equipment ,​

part of plant, machine,​

to add some components...in order to make work better,​

​

from using some stuff subject to IP regulations. because such activities can be done on equipment owned by the organisation, and here it isn't all the time clear what is protected or no. i hope i'm more clear

thank you

With the advent of the world wide web (www) the globe has turned into a global village as far as information access is concerned. Hence changes in terms of what you have undertaken within your design is perhaps somewhere already executed by someone in almost the same fashion, Or it could be a wonderful achievement and improvement by you, but outside the world would not pay $$ for it.
So its hard to believe that what improvements you make in your day to day stands to be an IP which needs protection that a real IP demands. I would rather say share it across for the benefit of others. What comes out as an IP is from intense research on any subject that commercially can be a new product, or something as a breakthrough technology, which can be channelized into money spinning business.

 

[Wes Bucey]

The general rule for intellectual property of "things" is that a purchaser may modify a product for the purchaser's own use, but the purchaser may not sell his idea for modification, nor the equipment so modified.

In the case of modifying an "idea" to create something entirely new for sale, there is no general rule and court decisions about intellectual property don't seem to have any trend. In recent news, Microsoft lost a lawsuit in the U. S. Supreme Court over such an "improvement" and is ordered to pay i4i $290,000,000 (U. S. dollars), while similar cases have been decided differently.

Bottom line:
If the improvement is during maintenance or strictly for in-house use on equipment legally purchased, it is not likely there will be any infraction of intellectual property laws. If, however, your organization or individuals within your organization try to sell the idea of making the improvement to others or to modify other equipment with your improvements and sell it for profit, it really depends on how diligent the owner of the patent is as to whether you get something within the following range:

1. nothing from the patent owner, because nobody cares
2. a warning letter from an attorney asking for royalties or to cease & desist
3. a subpoena for a lawsuit claiming damages, which subpoena asks for all records and accounting related to income from the modification

Think of this analogy:
A guy buys old Volkswagens and modifies them into dune buggies for sale - VW will not pursue him. Neither will they pursue the guy who sells plans for do-it-yourself folks to modify their own VWs.

A guy buys a ballpoint pen and duplicates all the mechanical parts in his own factory, modifying the outside barrel of the pen with a triangular shape instead of round (so it won't roll on a desk.) He has taken the design for the inner workings of the pen (the part that's usually covered by a utility patent) versus the outside design (covered by a design patent - see the box below for fuller description of these two types of patents.) This guy will most likely get the lawyer letter first, followed by a lawsuit if he doesn't stop or pay.

A guy duplicates a new model Crescent brand wrench, but in titanium rather than steel (so it can be sold to maintenance people to be used around an MRI while it is running), the only change besides the material being he puts his logo in place of Crescent. This guy will probably be hit with a lawsuit immediately along with a request for a court to issue a cease and desist order and even seizure of records, tooling, inventory, and freezing of bank accounts.

Note, though, that if the guy took his Crescent wrench to a machine shop and asked them to duplicate five of them in titanium for his own use in his business of maintaining MRIs, nobody would say a peep. The difference is whether he takes a sale from the Crescent wrench people by selling his "improvement" to other maintenance people.

This is a hypothetical - I don't know if Crescent sells their wrenches in titanium and I am more interested in the law involved than in whether Crescent is out looking to sue someone.

* Utility Patent - Issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, it generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing ++, subject to the payment of maintenance fees. Approximately 90% of the patent documents issued by the PTO in recent years have been utility patents, also referred to as "patents for invention."

* Design Patent - Issued for a new, original, and ornamental design for an article of manufacture, it permits its owner to exclude others from making, using, or selling the design for a period of fourteen years from the date of patent grant. Design patents are not subject to the payment of maintenance fees.

Intellectual property battles are extremely expensive and take years to work their way through the courts. Often they are extremely technical, confusing judges and juries alike. Recent cases I have been following rarely get into the news unless one or the other of the parties to a suit is big and famous (like Microsoft) because the average person doesn't have the time to read through all the intricate data to understand the merits of the case. I usually only follow the ones where I am familiar with one of the parties or with the product in contention. I was not following the Microsoft/i4i case, but only recall the case because I do take note of Supreme Court decisions even if I didn't follow the case.

 

[Ronen E]

In a previous lifetime I had the honour / pleasure of playing Expert Witness role in one of these multi-million $ patent suits, in the medical device arena. It started in 2001 and ended years later, when the parties agreed to settle outside court. It also made it to US supreme court, which rolled it back to the district court after ruling about some silly definition. Oh, those were the days...

Back to the original topic -

What about all those utility patents who disclose "a method of..."?

Suppose a company X has some equipment which they legally bought from company Y; that equipment makes some product A in a certain way. Suppose also another entity Z has one of these "method" patents, disclosing a way to make the same, only at 50% the cost to the manufacturer (X or its competitor). It doesn't have to be so, but for clarity let's also assume that Z actually makes and sells some equipment utilizing the protected method, so its equipment has an advantage over company Y's.

Now, if X's staff modified their equipment (made by Y) to now make products along the lines disclosed in Z's patent, so X could make their product at 50% the cost, I think they would be infringing. Even though they only modified their own, legally purchased equipment, and did not sell it, or the way to do it, onwards. This is because they are now utilizing another's protected method, while making profit and preventing the same from the legal proprietor.

There is a real issue here (I think) about how Z could become aware of things happening inside X's premises. I think that's the reason "method" patents are considered "weaker" that true "object" patents (my terminology ). I don't know the USA IP enforcement system good enough (actually, I hardly know it ) to answer that question, and would appreciate any comments on that.

Cheers,
Ronen.

PS I'm no legal practitioner, just a medical devices mechanical engineer who's gone QA/RA.

 

[Wes Bucey]

In a previous lifetime I had the honour / pleasure of playing Expert Witness role in one of these multi-million $ patent suits, in the medical device arena. It started in 2001 and ended years later, when the parties agreed to settle outside court. It also made it to US supreme court, which rolled it back to the district court after ruling about some silly definition. Oh, those were the days...

Back to the original topic -

What about all those utility patents who disclose "a method of..."?

Suppose a company X has some equipment which they legally bought from company Y; that equipment makes some product A in a certain way. Suppose also another entity Z has one of these "method" patents, disclosing a way to make the same, only at 50% the cost to the manufacturer (X or its competitor). It doesn't have to be so, but for clarity let's also assume that Z actually makes and sells some equipment utilizing the protected method, so its equipment has an advantage over company Y's.

Now, if X's staff modified their equipment (made by Y) to now make products along the lines disclosed in Z's patent, so X could make their product at 50% the cost, I think they would be infringing. Even though they only modified their own, legally purchased equipment, and did not sell it, or the way to do it, onwards. This is because they are now utilizing another's protected method, while making profit and preventing the same from the legal proprietor.

There is a real issue here (I think) about how Z could become aware of things happening inside X's premises. I think that's the reason "method" patents are considered "weaker" that true "object" patents (my terminology ). I don't know the USA IP enforcement system good enough (actually, I hardly know it ) to answer that question, and would appreciate any comments on that.

Cheers,
Ronen.

PS I'm no legal practitioner, just a medical devices mechanical engineer who's gone QA/RA.

Yep. "Method" adds a new complexity to the issue. A method patent has to file, same as a utility patent or design patent - no one has to sneak in to observe the change in order to copy it and cheat. All a company "cheating" on such on method patent has to do is be a miserable boss to some employee who is willing to tell the patent holder (for money, revenge, or both.) Microsoft and other software companies find most of the software pirates from snitches who are disaffected workers.

This brings up the topic of "trade secrets" - companies with profit-enhancing modifications often do not apply for a method patent, but try to keep the information in-house. I've followed a number of lawsuits by companies claiming another company suborned one of the employees of the company with trade secrets in order to get the secrets. These can be anything from software to a process method to a customer list and the court battles often include a lot of vindictive vitriol.

Sometimes the suborning is subtle - run targeted ads for employment aimed at key employees of the company holding the secrets. Less subtle includes headhunters calling, romancing, and cajoling those key employees. Rarely, but still occurring on a regular basis, subtlety goes out the window and the key employee is targeted (because of money problems, rumors from other exiting employees, divorce, illness, etc.) and offered a direct one-time bribe to turn over the secrets.

When the target employee is vulnerable, it doesn't take long for a professional secret thief to find the trigger to convince the employee to give up the secret.

 

[selena15]

Hi all

thank you very much for all the explanation, actually, our change is more about to add one cover roof for one equipement area, add one calculation material to another one, the confusion become when for exemple a change of one system to improve a pressure of material of others ( sorry if i'm not more clear, for ip consideration indeed)

but after reading you i don't think that there is such of risk for us

for the case that we hear from time to time, as you had said Wes, the employees is the area from where the risk can come but it can be contained if a training and commitment of the organisation from the top to the down are request to stand and be tough about this subject, and from the others hand the trade secret is protected even it is tough i would say to keep if the organisation had huge size and owned lot of unit worlwide. and as you said somashekar, it is hard and lastly i heard in tv magazine the one reponsible of ip in my lands had complains about the multinational saying that even the had filled their ...patent in their country, they should do so also locally if they are operating here. so i don't know what to think about that, since i expected that since a ...patent is recorded anywhere, it is covered by regulation locally and abroad, don't you think so ?

outside US, you may heard about these french case

http://www.bbc.co.uk/news/world-europe-12732421


once again thank you