Question about Signing a Patent Application

[TireDesigner]

Hi everyone,

I need some advice on signing a potential patent application in a rather complex situation (apologies if this thread is in the wrong section - I couldn't find a more applicable one). I'll describe the situation:

My company makes wheels for pivot irrigation systems. Part of this wheel is a polymer segment (many of which are bolted around the outside of the steel wheel). My company wants to patent two different designs for the polymer segment, which I will describe:

1. THE ORIGINAL SEGMENT. This segment was designed by a joint venture between my company and an outside individual's company. The outside individual was the primary inventor, and an engineer at our company helped by drawing it in 3D CAD. The part was and still is produced at our company. However, the gentleman from the other company had a disagreement with us and is no longer working with or even communicating with us. I don't believe he would sign a patent application. The engineer at our company who helped with the CAD work no longer works here and refuses to sign a patent application because he does not consider himself the primary inventor. Also, this part has been sold to the public already, so I don't think it could be patented at this point, anyway (correct?). For some reason, my company is still pursuing a patent through our patent attorney. I don't think this will be successful for the reasons I already stated, but I'm not too worried about it as I have not been asked to sign a patent application for this initial design (and I won't sign one).

2. A REVISED DESIGN. I made a new design which is based on the original, but with a major difference: it has a different, lower-profile that has a large center tooth completely removed. My initials are on the drawing and I will be asked to sign the patent application (with rights to be transferred to my company). I drew this design myself, but it is based (at least in part) on the original segment design. It has not been sold to the public. I'm somewhat uncomfortable about signing a patent application for this. The reasons are related to any personal liability with regards to patent infringement (as I mentioned, rights would be assigned to my company, so I'm not worried about money made off of this design, as I wouldn't get any). Thoughts about getting sued or going to jail for infringement of the initial design are going through my head. Am I being paranoid? Will assigning the patent rights to my company also assign liability to them? (My guess is no) What would you do?

Any help or insights would be greatly appreciated.

 

[IRstuff]

Why would it be an infringement? The whole point of a publicly published prior art patent is so that new designs and improvements can be made and contrasted against the prior art. The thing you haven't mentioned is the possibility that you and your company may get sued for theft of intellectual property.

As for the existing design, patenting is still possibly, I think, since the design has not been disclosed to the public at large, even if the hardware has already been sold to customers, it's not quite the same thing.

For the new design, it is not an infringement, per se, to submit an application for a design, based on improvements to the prior art. It's the whole basis of the patent system.

See:

http://inventors.about.com/od/patentinfringement/a/Infringement.htm

"Patent infringement consists of the unauthorized making, using, offering for sale or selling any patented invention within the United States or United States Territories, or importing into the United States of any patented invention during the term of the patent."

TTFN
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[TheTick]

Inventorship can not be delegated or reassigned. However, the inventor does not have to be there to prosecute the patent. Falsely claiming inventorship can not possibly be a good thing.

The inventors may be bound by their respective employment contracts to sign pertinent documents, even if they no longer work at their previous places of employment.

I'd wager any of this is old hat to an experienced patent agent.

 

[JohnRBaker]

As long as one person outside your company has seen this item and they have not signed a non-disclosure agreement, THE CLOCK HAS STARTED as to when you can still legally claim that the design is new and unique. The term "public at large" is simply too nebulous to think that this could define when something has or has not been disclosed.

As for fear of patent infringement, as long as your improvements are demonstrably different and can be shown to be unique, and as long as the text of the patent acknowledges that this is an improvement on an existing design, particularly if the original item was patented itself, and it it was, that patent is referenced, there should be no problems as long the claims are explicit enough to show that your new ideas are truly that, new and unique and not something which could be found on the original product or some other one. If all patents had to be 100% unique from anything that had been developed before hand, we wouldn't need all that many digits for patent numbers. Virtually every inventor, be he Thomas Edison or Joe Blow, has almost always built on, to one exent or another, what someone else had done before them.

John R. Baker, P.E.
Product 'Evangelist'
Product Engineering Software
Siemens PLM Software Inc.
Industry Sector
Cypress, CA
Siemens PLM:
UG/NX Museum:

To an Engineer, the glass is twice as big as it needs to be.

 

[MacGyverS2000]

Whomever gets the patent first wins... things aren't the same these days as they were in the past. Gone are the days of engineering notebooks being the basis for proof of first design... if the original designer doesn't patent the work and your company does, they win.

Dan - Owner

http://www.Hi-TecDesigns.com

 

[JohnRBaker]

That may be true, but there's still a 'window' of time between when the first disclosure is made and when a patent application can be submitted, irrespective of who files first. Once the window closes (i.e. the time runs out) it's can no longer be considered a new or unique idea/product.

But you're right about the new patent regulations, which are now based on international law, that the 'first to apply' now wins; no more sending yourself sealed, registered letters containing signed and dated sketches of your ideas that you're not quite ready to start working on. Those days are long gone.

John R. Baker, P.E.
Product 'Evangelist'
Product Engineering Software
Siemens PLM Software Inc.
Industry Sector
Cypress, CA
Siemens PLM:
UG/NX Museum:

To an Engineer, the glass is twice as big as it needs to be.

 

[IRstuff]

You have one year from first public disclosure to file. However, once publicly disclosed, someone could hypothetically file before you and get the patent.

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[zdas04]

Late last year I was awarded a patent. Early this year I was awarded an unrelated patent. Some of my experiences may be germane to this discussion

Patent 1. I developed this gadget while under contract to an Oil & Gas production company. They paid for my time, paid for the test bed, paid for people to run the tests. When we filled out the patent application, I checked the box that I was assigning my rights to the company that paid for the work. It is that simple. Saying that "inventorship cannot be delegated or reassigned", may be technically correct, but the rights to benefit from the invention can be delegated with a simple check box. My name is on the patent, but I'll never get another dime from it. And that is how it should be, they took the risk and they paid me handsomely for my time.

Patent 2. Developed solely with my own resources. I designed this widget for a problem that a client had and then I built it and sold it to that client. His first out-of pocket expense was to purchase one of the units. Then he purchased 3 more. Then another client purchased 13 of them and we shipped them to Columbia. About a year later I hired a patent attorney and he quizzed me really hard about what I had published about my widget. I hadn't published anything, but I had been talking about it in my courses for a couple of years. He did the research and found that handouts from the course were not sufficiently distributed as to start the 1 year clock. His opinion was that the USPO was very liberal in interpreting that whole "disclose to the public at large" thing and unless you published something in a place with more than something like 100,000 circulation you were probably ok. Selling the invention (even internationally) didn't seem to even approach the disclosure limits.

Submitting a patent application can never be an infringement on another patent. Requesting something from the USPO does not constitute a material gain that could be attached in an infringement proceeding. Now, if you got a patent and the things you build [supposedly] under the protections of that patent seem to infringe on another patent, then the only way to resolve the issue is in court. I saw one case (and there is no assurance that all cases like this would be adjudicated this way) where the court ruled that the second patent did in fact infringe and ordered the second patent vacated and that the second patent holder either cease and desist or obtain a licence from the first patent holder. No damages were awarded for sales prior to the court order.

David Simpson, PE
MuleShoe Engineering

"Belief" is the acceptance of an hypotheses in the absence of data.
"Prejudice" is having an opinion not supported by the preponderance of the data.
"Knowledge" is only found through the accumulation and analysis of data.
The plural of anecdote is not "data"

 

[IRstuff]

Infringement can go lots of different ways
> In one company, we got sued by Hitachi, for a bunch of semiconductor related patent infringements. We were able to show that almost half of the patents were to valid because the concepts disclosed in the patents were actually in contemporaneous textbooks (this is my rationale for being a textbook packrat), and therefore there was nothing new in the patents. Knocked down the royalty demand from $50M to $7M; which was awesome, given that our corporation was losing $1B/yr at the time. Amusingly, the wet oxidation process described in Deal and Grove's seminal paper "GENERAL RELATIONSHIP FOR THE THERMAL OXIDATION OF SILICON" was patented by Hitachi, and when I asked Deal about it, he said, "Oh, yeah, we learned about the process when we visited Hitachi in 1963," so that patent was rock solid.

> Lemuelson Foundation sued McDonnell Douglas for infringing on its patent for barcode readers, but not for design infringement, but usage of an infringing product, since they knew that McD's pockets were deeper than the poor schmucks who actually designed and manufactured the barcode readers. So, yeah, just using something is infringing.

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[JohnRBaker]

zdas04, I'm not so sure that your patent attorney's opinion about the US Patent Office's 'very liberal interpretation of that whole "disclose to the public at large" thing' is going to serve you well if someone were to later challenge your patent based on the contention that you did not file in a timely manner.

Where I worked back in Michigan we had contemplated for several years to start producing a product that we had developed in our labs years before but had not done so based solely on the fact that a competitor held a patent on this same sort of machine. Finally a large customer came to us asking if we could provide him with a machine like this and during the coversation it became apparent that he simply did NOT want to do business with the patent holder because they had a reputation for poor quality while we were always considered to be the premier supplier of equipment for the commericial baking industry, in this case a particular type of bread oven. Anyway, we decided to do a little 'research' and discovered, by tracking down some old trade show brochures, that our competitor had disclosed his invention a good 15 months prior to the actual date on their patent application. Our patent attorney advised us that we should say nothing and simply go ahead and sign the deal with the customer. Which is exactly what we did. We took our old design, brought it up-to-date and built exactly what the customer wanted, which anyone could see was based almost completely on what was in the competitor's patent, but which our attorney said that we had proof that it couldn't be enforced if we were ever threatened with patent infringement. Anyway, we delivered the new oven, the customer was happy and we NEVER heard a single word from our competitor. The consensus was that they knew exactly what the situation was and while they may have made their original application in good faith, they had subsequently realized that it wasn't worth the paper it was printed on. But the story does have an interesting postscript; a few years after I left the company and joined my current organization, my old employer acquired the competitive company for a very reasonable sum since they never really managed to solve their quality problems and we basically got their customer base for no other reason than the 'spares' business, which when dealing with capital machinery, can be quite lucrative, especially if the original manufacturer didn't put all that much effort into building quality into their products to start with ;-)

John R. Baker, P.E.
Product 'Evangelist'
Product Engineering Software
Siemens PLM Software Inc.
Industry Sector
Cypress, CA
Siemens PLM:
UG/NX Museum:

To an Engineer, the glass is twice as big as it needs to be.

 

[zdas04]

John,
That may be the reason you weren't sued, or it may be that like other companies they just didn't bother to try to enforce their patent. If they had sued you and the courts had decided that they were patenting a process that was in the public domain then I'd agree with you. Their just failing to sue doesn't really demonstrate how the USPO is going to interpret an action with regard to public disclosure.

When I was with BP they had acquired thousands of patents when they bought Amoco (Amoco research center had patents ranging from the code that underlies Outlook to the original hydraulic fracturing patents). I saw stuff in the marketplace every day that looked to me to be infringing on one or more of Amoco's patents and when I asked about it the patents group said that the reason we patent things was to protect our rights to use the technology in house and we almost never defended a patent. I don't know if that company was unique in that attitude or not.

David Simpson, PE
MuleShoe Engineering

"Belief" is the acceptance of an hypotheses in the absence of data.
"Prejudice" is having an opinion not supported by the preponderance of the data.
"Knowledge" is only found through the accumulation and analysis of data.
The plural of anecdote is not "data"

 

[IRstuff]

As a general rule, the cost of enforcing a patent must be balanced by any potential returns or intangibles. In some cases, it might be better to wait for the infringer to make some money first, before suing them for back royalties. On other cases, the infringer never generates enough revenue to make it worthwhile to fight over it.

TTFN
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[JohnRBaker]

Perhaps we were just 'projecting' onto the other company the business practices that we followed ourselves since we DID sue when we found someone infringing on OUR company's patents, and since I was a co-inventor on two of those patents, this was always of particular interest to me. In fact, when we attended trade shows where our competitor's wares were being displayed, we had orders to look for potential infringements. Generally all we tried to get out of these 'opportunities' was a royalty payment of some kind, but this could lead to some strange situations.

For example, there was one particular patent that was so well written that we never had any problems enforcing it, to the point where for all intents and purposes, we were the only game in town. The thing is that the machine itself was not really covered by any patents but rather one particular 'part' was and this was something that, a) there could be a hundred or more needed for each machine, and b) they constantly wore out and had to be replaced. So what our deal with our competitors was that first they had to pay a flat royalty per machine sold (it was only a couple hundred dollars for a machine that cost maybe $30k), but that they had to then purchase all of those 'consumable' items from us as well, which of course we made a handsome profit on both when they placed their original orders to equip their machines AND when they needed to buy replacements parts for when their customers started to order spares. In fact, in this particular case, the joke around the office was that in the long run, the company made MORE money when a competitor sold one of these machines then when we did ;-)

John R. Baker, P.E.
Product 'Evangelist'
Product Engineering Software
Siemens PLM Software Inc.
Industry Sector
Cypress, CA
Siemens PLM:
UG/NX Museum:

To an Engineer, the glass is twice as big as it needs to be.

 

[TireDesigner]

Thank you all for the responses - I do appreciate it.

There's been a lot of good discussion here about what is and isn't patentable. But if I could steer the conversation a bit, I'd like to ask some of you specifically if you would be comfortable signing a patent application for either of these cases if you were in my position. I'm not really worried so much about whether the patent would be successful or not, but rather if I would be exposing myself to any criminal or civil liability by signing my name to the patent application. Some of you have treaded into this question a bit already in this thread, and I certainly don't expect any cut and dry absolute answers from anyone, but any guidance in this area would be very helpful. Thank you in advance.

 

[zdas04]

In your second scenario, I'd have no problem (unless there are some relevant facts missing) signing it. I wouldn't touch the first with a 10 ft pole.

David Simpson, PE
MuleShoe Engineering

"Belief" is the acceptance of an hypotheses in the absence of data.
"Prejudice" is having an opinion not supported by the preponderance of the data.
"Knowledge" is only found through the accumulation and analysis of data.
The plural of anecdote is not "data"

 

[JohnRBaker]

I don't see how an inventor, particularly if he assigned the patent to his employer, could be held financially liable for anything resulting from someone else suing for patent infringement. As has been stated, in most cases there are no suits, and certainly no monetary judgments, unless someone else has made a tidy profit that should have gone to the person whose patent was infringed, so if you personally did not profit directly from the sale of any items covered by the patent, I can't see how anyone could possibly claim that you'd have to pay restitution. Anyway, that's my humble opinion, for what it's worth.

John R. Baker, P.E.
Product 'Evangelist'
Product Engineering Software
Siemens PLM Software Inc.
Industry Sector
Cypress, CA
Siemens PLM:
UG/NX Museum:

To an Engineer, the glass is twice as big as it needs to be.

 

[IRstuff]

??? Duh ?? It's neither a contract nor a commitment. In fact, if your application has nothing new, which is what probably happens 30% of the time, the examiner simply rejects your application, and end of story. In many cases, until you get to the stage of doing a prior art search, you won't know whether anyone else has already patented something, because the time/money required to do a thorough search is still not quite zero. But, to specifically answer your question, I would have zero reservations. Again, you cannot infringe on anything with only an application. Even if you were to submit the same invention, a patent examiner can only reject your application; they have no time or money to try and determine whether it's an honest mistake or plagiarism. The worst that happens is, "Doh!"

In 1985, we were struggling with a semiconductor process problem that resulted in the formation of a corporate-wide "tiger-team," and various personages proposed a variety of solutions as potential fixes. However, none of them turned out to have the right answer. I did a literature search, and found out that IBM published in 1971 their approach to solving the problem; that's a full 14 years prior to our problem. A review of the process paperwork then confirmed that someone, who shall remain nameless, had changed the process prior to start of manufacturing, in a mistaken effort to save wear and tear on the the furnace tubes, and not realizing the incredible sh!tstorm that was to hit the fan three years later. So, all and all, an embarrassing situation, but that's it.

History is replete with people inventing the same things at the same time. The microprocessor was nearly simultaneously invented at the same time be two different companies.

TTFN
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[TireDesigner]

Thank you again for the additional responses. Much appreciated!