I am about to file a utility patent to change the way a tablet case (Galazy Tablet, Ipad, Playbook, etc) is used. It is an original idea and I can find not traces of it in a patent search.
If I am issued a utility patent is it possible that someone else could copy my product, make a minor ornamental change, get a design patent and start selling the item even if it still maintains the same basic structure and function. For example, if someone adapted my change from a square to a triangle but the function and use are still exactly the same is it legal for them to sell the product without infringing on my utility patent?
So if I understand, you are filing a utility application to improve upon something that is already out there. This is why the vast majority of patent applications get filed. It is certainly possible, then, for someone else to take what you have done, improve upon it, and file their own patent application (be it a design or utility).
Now, assuming that you get your patent and the person improving on your idea gets their patent, then you could be precluded from making an item that infringed upon their patent, and vice versa.
Understand that a patent does not give you the right to make, use, sell, etc. anything. It does give you the right to exclude others from making, using, selling, etc. the invention defined by the claims of your patent. This is an important distinction. It is possible for someone to get a patent that if produced, sold, etc., would infringe upon another’s patent. For example… if I am the first to patent a 4-legged stool, and some else takes that idea and adds a back and arms and gets the first patent on a 4-legged chair, then they could not make, sell, etc. the chair because it would necessarily infringe my stool patent (just like I could not make, sell chairs without infringing their chair patent). This is the world of cross-licensing; a topic for another day.
Best of Luck!
Legal disclaimer: This answer is not legal advice, but is for informational purposes only. My answer to your question does not create an attorney-client relationship between us. Please contact a licensed attorney in your area for competent legal advice.
No. If you have a patent, you have a right to exclude others. A design patent is for something primarily ornamental, a utility patent covers functionality or composition. You may have both a design patent and utility patent. Doing cosmetic changes is not enough to stay clear from the area of exclusion of a patent.
Contact a Patent attorney before you file, or waste your time and money
USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.
If you obtain a utility patent, someone else in theory could obtain a design patent to cover the ornamental appearance of a product with the same basic structure and function that looks different. That being said, a patent gives a right of exclusion (it does not confer an affirmative right to make, use, or sell the invention -- only the right to exclude others from doing so without your permission). Assuming the claims of your utility patent cover the basic structure and function, you can prevent the design patentee from selling that product. In this example, the utility patent would dominate over the design patent. But the design patentee could prevent you from using that new design. In this situation, companies sometimes will cross-license their patents to each other.
This answer is for informational purposes only. It is not intended as specific legal advice regarding your question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.
A patent is the right to exclude others marketing a product covered by the claims of your patent. However, a patent does not preclude someone from designing an ornamental improvement on your patent and obtaining a design patent. The ornamental improvement does not infringe your patent and is outside of the scope of your right to exclude. However, if someone uses the ornamental improvement in making a competing product that has the same function as your invention and performs in the same manner as what is claimed in your patent, you have the right to exclude sales of this competing product. Thus, while you cannot someone from obtaining a design patent on an ornamental improvement to your patent, you probably can stop someone else from selling a product containing the ornmamental improvement as long as the product infringes your patent. Of course, this discussion is occurring on a theoretical level, without full knowledge of all facts and relevant information. No lawyer can give you definitive advice on a question like this without understanding the factual details.
Of equal importance, if you are filing a utility patent for a tablet case, you would be well-served by retaining counsel to conduct a patent search---with due respect, the fact that your patent search does not reveal "traces of it" does not mean that your innovation would not be covered by existing patents. Further, if your table case is an improvement over current designs, it is quite possible that you would need a license of patents of currrent designs before you would be free to commercialize the invention in your patent. In a situations such as this, it is quite important that you retain and work with patent/IP counsel. Failure to do so often is a fatal and economically disastrous mistake.
There are basically two sides to this coin - patentability and infringement. Your preliminary research looks like a good omen, but if you truly have an idea worth pursuing, it's worth doing correctly. Blind spots at the outset can be fatal to your intellectual property and cost you more in the long run than if you'd had hired a competent patent attorney to give you some proper guidance. Your patent attorney will likely commission a professional search followed by a patentability opinion and, if advisable, an infringement opinion. These informed steps might save you thousands of dollars on a futile patent application and from a possible infringement suit should you decide to produce the tablet case yourself.
Note that the written claims will the heart of your utility patent. The claims determine what it is that you can exclude others from doing. A patent attorney may be able to write sufficiently broad claims to prevent others from successfully making the "minor" changes you fear.
You might also ask your patent attorney about filing a design patent application simultaneously with your utility patent application. Your patent attorney should explain the functional limitation of a design compared to a utility patent application. If your invention is eligible for both types and you can obtain both, it should give you overlapping protection.
Don't forget to ask your attorney about a trademark as well (if you're going to produce and/or sell the tablet case yourself).
Again, a competent patent attorney will explain the various intellectual property concepts, their interplay, and where your tablet case falls on the intellectual property landscape.
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