Protecting a New Design

I have to vent somewhere and possibly someone has some input that can help me.

Some years ago I invented a product that was ripped of by the person who was supposed to market it and his version is now sold world wide and I got nothing out of it except a bill from a patent lawyer that I could nor jump over. Patents are useless to the average person because it simply costs too much to protect them, a lesson learned the hard way.

Years pass and I am at the same point again, I can choose to market a new design or try and interest someone in either buying it or paying me a sum of money either for an outright buy or some sort of ongoing commercial agreement and either would suit me. To market it myself does not guarantee anyone copying it and a substantial amount of capital has to be invested but showing it to someone in the hope that they won't steal the idea is equally a problem.

The whole thing is a deterrent to leave good designs by ordinary people on the shelf, mine has been sitting in a cardboard box for about six years and that has stopped people who would welcome it from using it as it greatly simplifies a complex problem.

Has anyone had experience at this sort of thing because I have and it was not pleasant and has not resolved anything that could be applied the second time around. BTW it has nothing to do with woodwork or dust extraction.

I think Chris that you have a dilemma that likely only you can resolve but some thoughts that may help.. or not.

My other currently unpracticed hobby is syncronised christmas lighting. It is a hobby that a lot of the electronic control hardware has traditional been open sourced and freely shared though as the software control (firmwares) got more complex some of the key designers pulled hardware design back and it became closed.
I was one of those, with some of the original designs used for RGB LED lighting, however at that time things were moving fast and a couple guys out of the US quickly took over. At the same time the "we want it for nothing" crowd reverse engineered hardware designs and near to identical clones started to appear but still with custom firmware.
Five to six years on the originals still make money, just maybe not as much as they could of by cutting a deal with one of the commercial producers of hardware, though i think one did based on some hardware i seen hit the market.

Regardless the release of the equipment for sale generally benefitted the end users and didn't sit in a box. Apart from a couple of smaller controllers nothing was copied/cloned out of china though most designs got assembled in the electronics district.

Without any product context except it greatly simplifies a a complex problem if you are not prepared/cant afford/don't want/cant stand it again to go down the patent road and then have solid water tight NDA agreements and be prepared to sue if people breach the NDA your sort of in the hard place between keep it in the box or completely open source it.

Maybe the other line of thought is that anyone you is going to breach an NDA and/or steal the idea will do it anyway once it is out in the open so take the risk and start negotiating with companies.

Probably not helpful but i think i know where your at.
Cheers
Phil

Hi Chris, I have been through the same experience, I think if I were to do it again I would simply sell the product to a manufacturer, taking into account cost and projected sales as you say unless you are prepared to literally spend millions to protect your patent, it won't protect you, just ask Lucas Mill.

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Originally Posted by China

Hi Chris, I have been through the same experience, I think if I were to do it again I would simply sell the product to a manufacturer, taking into account cost and projected sales as you say unless you are prepared to literally spend millions to protect your patent, it won't protect you, just ask Lucas Mill.

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That is my preferred option but as soon as they look at it I am no longer required. I was speaking to someone else about this and he made the point that if the politicians want Australia to be the clever country then this problem is most probably holding back innovation because all the reward can go to others.

Chris you may take some solace in the fact that you are not alone. Sadly this is an all to common practice. IP law & the legal system works for the oligarchs who have the means to backup their assertions about a challenge from a competitor.

Perhaps another avenue is to go down the "Kickstarter" route.

Thanks for the thoughts, fortunately it is not a product that would require large amounts of capital but of course the money still has to be found. I don't even have to do any R&D because it works and in recent times we have purchased a 3D printer so the prototyping from drawing to working object has cost a few metres of filament. The first time around cost me a fair bit of money to prototype because that design had to be made in metal. 3D printers are a wonderful boon to anyone doing prototype work and owning the printer has made re-visiting this project viable due to the minimal costs of making and refining the design.

Thirty odd years ago my brother in Christchurch, NZ, designed and built the tooling required to open automotive vacuum advance units for the purpose of replacing the diaphragms. He built a successful business using the tool. He was extremely protective of his idea, when not in use it lived in a locked cabinet in his workshop. To use it he clamped it in the vise on his bench, any visitors he'd throw a towel over it, even couriers up his driveway two or three times a day, to pick up and drop off exchange units, didn't get a look at it.
He told me there was more money to be made this way than to outlay the large amount required to patent it with the danger of being ripped off as outlined above.
It was a business with a finite life span due to the emerging computer technology doing away with the need for VA units on engines.
Cheers,
Geoff.

Hi Chris, as others have mentioned getting a patent on something is expensive. I know of someone who had a friend, had one of Australia's top patent attorney, write up his patent. He had massive sales for it lined up, went to a field day and saw his product displayed, he took the maker to court, where he won, the other bloke appealed and so forth till it got to a supreme court only to be thrown out because of a technicality. The patent attorney had written it as adjoining whereas if he'd written it as adjoining/adjacent, it would have been a winner.
I came up with a fridge slide to suit fridges in the back of 4WD, about 1997 this was, I couldn't patent it as there was already a similar product, but his was attached to his storage drawer design. When I got rid of my business, there were about 14 different places making a similar product.
So basically no matter what you do, if someone wants to copy it, they will. I suppose even getting them to sign a statement saying that they won't copy the given design, will be meaningless in a court of law. Even then they only have to modify it 10%, I think it is, to be able to get away with it.
Have you contacted a lawyer to ask how to be able to protect your design???
Kryn

The bottom line is no matter how watertight your patent or legal standing is you still need the $$$$$ to enforce it when you feel someone has stepped over the line

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Originally Posted by KBs PensNmore

Have you contacted a lawyer to ask how to be able to protect your design???
Kryn

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Kryn, as mentioned in my first post, been there and done that which is the reason I am seeking other people's experiences with the same dilemma.

Sorry, thought it was in reference for your first venture.
About the only thing I can suggest, is that you make sure it can't be improved on, and that if you decide to produce it, that it sells for a price that the competition can't/couldn't be bothered with.
Kryn

I have been working in the R&D Tax Incentive space and submitting grants for Ausindustry/etc. I'd suggest getting in touch with - local council, state government, Ausindustry, and perhaps even a local University Commercialisation department. There's buckets of money, advice and support available at each level that can be accessed to get things moving.

Hi Chris,

In my day job I'm a commercial lawyer who does IP from time to time.

I would suggest if you're serious about protecting your IP you take the time to find a lawyer you click with and who you communicate well with. I am always surprised by how often people just go with whoever they are first introduced to or encounter - although I have a different perspective to many.

There are really no generalist answers to these types of things I'm afraid - it would be a little like a woodworker being asked, "What type of saw should I buy?"

Chris

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Originally Posted by Cgcc

There are really no generalist answers to these types of things I'm afraid - it would be a little like a woodworker being asked, "What type of saw should I buy?"

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answer -- one with teeth



:D

I'm in a similar position, i.e. developing and protecting IP, for years now. A patent is one way of obtaining protection but it's only as good as your ability to enforce it. If you're looking for a partner to produce and sell your invention you should start with a good non-disclosure agreement. If you like I can share ours with you, mind that it is written for US use and should be checked for applicability in your jurisdiction. If interested PM me your email and I'll send it. I've read that in China it is common to use what is called a NNN, non disclosure, non compete, non circumvent with liquidated damages. I don't have one of these but you may be able to find one on the net or get one from somebody who does business with a Chinese counterparty.