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.

Chris,

In my various roles here and overseas, I've dealt with quite a number of inventors. One bloke in NY had something like 30 U.S. patents to his name but the majority had one big idea. However, they all had similar expectations, viz:

- Someone would steal their design

This is a valid concern with plenty of history to back it up. Occasionally the company they have approached has already developed the same thing, especially when the industry need is long standing. We always warned inventors if we were working in the same area. One bloke had a design for a child resistant plastic cap, and despite having signed two separate non-disclosure agreements, he still wouldn't show it to me. No new design has appeared since that time.

- The royalties would be significant

He who takes the risk makes the money. Often, serious money is needed for tooling, manufacturing, promotion, inventory, debtors and distribution before the real payoff begins. If the program works, everyone wins. If it fails, the inventor walks away. Any business to business licensing agreements I have made normally top out at 10% but more frequently 5% of wholesale. Many simply charge an annual licence fee. Our annual fee payable for a break ring tamper resistant cap and a one piece flip top cap each cost USD 10k. This was back in the 80s.

- Any improvement to a patented design is patentable

Here's where inventors have to be really careful. The break ring cap we licensed was quickly superceded by improved designs and materials despite using the same basic concept as our licensee; and we were prevented from using the better models.

Other contributors to this thread have provided some very sound advice. Unless you have sufficient faith in your invention to produce and market it yourself, like the hose reel guys, tread carefully and temper your expectations.

mick :)

Thanks to everyone for their thoughts and experiences. I suppose that my biggest problem is the thought that I could finish up with the same outcome as last time, I have no expectations of getting rich over the whole thing so the bar is set pretty low. During the last episode I said to Mrs. P that I thought I was going to get screwed for want of a better word but I couldn't see how. On reflection I was right so I am not going to go forward without some pretty good assurances this time. I sometimes wonder if I am being totally naive over the whole thing.

Mick, when you get a chance can you give me a call please.

I am in a similar position in that I have a simple product that hasn't been done before - anywhere. There are no patents recorded anywhere in the world that is even close to what I came up with. If it were to come to market I suspect that it could become a mandated product to be used in a few industries... It works so well that it makes me laugh everytime I have to pull it out to use it and try it will different materials and situations. But! being so simple anyone could copy it in a day or two, so I keep it to myself. If anyone asks I just put it away and change the subject...

My understanding of releasing anything to the market is you need to hit the world, or at least all the developed countries, hard and fast first in hopes that you brand imprint. And as the product has no competition it's sold at maximum value, and decreases over time as competition reaches the market. And in a few years, it's probably withdrawn as the chinese have flooded the market with rip offs. So you need capital - lots of it and the other resources needed to get it to market quick. Or an investor that believes in you and has a track record of ethics and can get it to market in lightening speed... The other problem one person designers face is creadibility. Not many investors out there, that are trust worthy, put stock in unproven people. Product maybe good but if the person behind it is an idiot, it's not worth it to them to find that out the hard way. Patents for products that aren't worth tens if not millions of dollars aren't worth the paper they're printed on if it costs more to defend them.

My thoughts are to try to find an ethical manufacturer that is in the area of my product, develope a relationship with them and eventually approach them with the idea. If that fails, I haven't the business acumen to get it to market adequately, in a way that would pay off, so it will stay exclusive to me.

I have thought selling the idea for what would be a bargain price in commercial terms might be the best solution for me. I would accept that I might not get the full reward that some might say I deserve, Miss P. is definitely of that opinion but at least I would get something. The last effort resulted in some big bills and zero return to pay them and others got a lot of money for whar basically was my idea.

I am pushing on and arranging for prototypes to be made into metal so the big decision time is months away and if I decide it is all too hard it will go back into the cardboard box never to see the light of day again. As pointed out above this is such a simple device one brief look is all it would take to copy it. On the other hand it is within a sport that is relatively small as sports go and copies would not make anyone a fortune either. Certainly the Chinese would not even bother as they have not made any attempts to move into the sport as the numbers are not there.

Its a nasty area to be in.....with people who can pinch your ideas and make money from them. Years ago the ABC, ran for a short period, a program looking at inventors who were ready to show the world what they had. In nearly every case large manufacturers developed the inventors ideas and that gave them "the right" to walk all over the inventors who ended up with nothing.

One tip one inventor found was, to not let one only manufacturer make and assemble the invention. He said that it is best to break up the manufacturing process into small pieces and give these small pieces to small workshops who were happy to just do what ever was necessary to make these small components. The inventor went on to say he would pick up these components and assemble them into the invention by himself and then put them up for sale.

Your situation may not be as simple as what I have written but it does give you some thing to ponder. I hope you can go forward with this venture and that you will enjoy the journey to the sales point