Creating New Product Similar to Existing Product

[halfempty]

Hi there, hoping someone can help with this query;

I am looking at producing a new product - for this example lets say they are a type of bicycle handle bar grips.

There is an existing product on the market that has a distinctive shape that I want to use. I don't believe they have a patent on their product but if possible I would like this answered in both cases, assuming they do and they don't (just in case I am wrong). I would also be using a very similar composite rubber material (although not exactly the same) as the other product. So my product would look and feel extremely similar to this other product, however....

My product would differ in the following ways:

- my product would be 10mm shorter in length and 1mm more narrow in width. So the product dimensions would differ
- the 'other' product has the product name stamped on the face of the grips, and on the end. My product would have a clean face and the brand name stamped only on the end
- my product would have a different name. for example, ther other product could be 'xxx grips' and my product is 'yyyyy grip'. The first word of the product name that I will be using sounds nothing like the first name of the other product and could not easily be confused
- my product would be a different colour to the other product. BUT would this matter? as in the future I may want to use the same colours as the existing product.


So in summary, while my product may look and feel very similar to the other product, the dimensions are slightly different and the product name is clearly different. The material used is extremely similar but not exactly the same. My questions are:

If there is a patent on this other product would I be in breach?
If there is no patent on this product would I still be in breach anyway?
If there is no patent on this product but they later apply for one after my product has already hit the shelves, would I be in breach?

Thanks for your time and help I really appreciate it!

 

[quincy]

Hi there, hoping someone can help with this query;

I am looking at producing a new product - for this example lets say they are a type of bicycle handle bar grips.

There is an existing product on the market that has a distinctive shape that I want to use. I don't believe they have a patent on their product but if possible I would like this answered in both cases, assuming they do and they don't (just in case I am wrong). I would also be using a very similar composite rubber material (although not exactly the same) as the other product. So my product would look and feel extremely similar to this other product, however....

My product would differ in the following ways:

- my product would be 10mm shorter in length and 1mm more narrow in width. So the product dimensions would differ
- the 'other' product has the product name stamped on the face of the grips, and on the end. My product would have a clean face and the brand name stamped only on the end
- my product would have a different name. for example, ther other product could be 'xxx grips' and my product is 'yyyyy grip'. The first word of the product name that I will be using sounds nothing like the first name of the other product and could not easily be confused
- my product would be a different colour to the other product. BUT would this matter? as in the future I may want to use the same colours as the existing product.


So in summary, while my product may look and feel very similar to the other product, the dimensions are slightly different and the product name is clearly different. The material used is extremely similar but not exactly the same. My questions are:

If there is a patent on this other product would I be in breach?
If there is no patent on this product would I still be in breach anyway?
If there is no patent on this product but they later apply for one after my product has already hit the shelves, would I be in breach?

Thanks for your time and help I really appreciate it!

I suggest you find out if there is a patent on the product first.

 

[halfempty]

I suggest you find out if there is a patent on the product first.

Okay I have just found out there is a patent on the product in USA, Europe and Canada. But there is no patent in Australia. I am based in Australia.

So my concern would be, what would happen if my product hit the shelves and they apply fo a patent in Australia? Would I have to cease my product?

 

[TheGeekess]

Okay I have just found out there is a patent on the product in USA, Europe and Canada. But there is no patent in Australia. I am based in Australia.

So my concern would be, what would happen if my product hit the shelves and they apply fo a patent in Australia? Would I have to cease my product?

US Law ONLY.

 

[FlyingRon]

US Law ONLY.

The way international patent law works now, there doesn't necessarily need a patent in each country. Frankly, even prior to that, a patent in any of the British Commonwealth countries (UK, Canada, Australia, etc...) will likely cover the other ones.

If there is a valid patent, it very much sounds like you are infringing. Decorative aspects have aren't covered by (utility) patents and neither will changes in sizing.

 

[halfempty]

US Law ONLY.

Okay...IF I was based in the USA, and there was no patent on this product in the USA and I created my product;

1. Would I be in breach
2. If they applied for a patent after my product was already on the shelves would I have to stop selling it?
3. Could I be punished for selling my product if they bought out a patent without my knowledge after my product was already on the shelf?

Thanks

 

[halfempty]

The way international patent law works now, there doesn't necessarily need a patent in each country. Frankly, even prior to that, a patent in any of the British Commonwealth countries (UK, Canada, Australia, etc...) will likely cover the other ones.

If there is a valid patent, it very much sounds like you are infringing. Decorative aspects have aren't covered by (utility) patents and neither will changes in sizing.

Thanks for your helpful reply FlyingRon... this is the kind of response I was looking for.

 

[quincy]

Okay I have just found out there is a patent on the product in USA, Europe and Canada. But there is no patent in Australia. I am based in Australia.

So my concern would be, what would happen if my product hit the shelves and they apply fo a patent in Australia? Would I have to cease my product?

My goodness. That was an awfully fast patent search.

You might want to google "Paris Convention" and "Patent Cooperation Treaty."

For those wanting to do a patent search, for patents both here and abroad, you can visit the USPTO website at http://www.uspto.gov/patents/process/search.

 

[halfempty]

I found the info on the products website

 

[quincy]

I found the info on the products website

Well, that explains the speed.

Good luck in Australia.

 

[halfempty]

Thanks for the above replies but nobody has really answered my questions yet. Based on US law if there was no patent on the product...

1. Would I be in breach
2. If they applied for a patent after my product was already on the shelves would I have to stop selling it?
3. Could I be punished for selling my product if they bought out a patent without my knowledge after my product was already on the shelf?

Some straight up answers would be great. Thankyou

 

[quincy]

Thanks for the above replies but nobody has really answered my questions yet. Based on US law if there was no patent on the product...

1. Would I be in breach
2. If they applied for a patent after my product was already on the shelves would I have to stop selling it?
3. Could I be punished for selling my product if they bought out a patent without my knowledge after my product was already on the shelf?

Some straight up answers would be great. Thankyou

This site is for U.S. law only and we do not do hypotheticals. I'm sorry, halfempty.

But if you go to the USPTO website, you can learn about US patent laws, and you can consult with an attorney in Australia for advice and direction for your specific needs.

If you are planning on patenting a product, you will want to sit down with a patent attorney in your area anyway.

Good luck.

 

[halfempty]

Quincy, thanks for taking the time to reply to my queries but on the whole I must say this forum has been extremely dissapointing. There have been a few people attempt to answer my relatively simple legal questions without really coming close to providing a straight answer. A hypothetical question is just as good as a real life situation as it still begs the same answer. One can't help but feel that the level of knowledge just isn't here. Then you have TheGeekess 'liking' every second post that pretty much says 'I can help you but I'm not going to'. What is there to 'like' about that?

Once again, this forum is extremely dissapointing.

 

[quincy]

Quincy, thanks for taking the time to reply to my queries but on the whole I must say this forum has been extremely dissapointing. There have been a few people attempt to answer my relatively simple legal questions without really coming close to providing a straight answer. A hypothetical question is just as good as a real life situation as it still begs the same answer. One can't help but feel that the level of knowledge just isn't here. Then you have TheGeekess 'liking' every second post that pretty much says 'I can help you but I'm not going to'. What is there to 'like' about that?

Once again, this forum is extremely dissapointing.

I am sorry you are disappointed, halfempty. Perhaps you can find a forum in Australia that is better able to address your legal questions and concerns.

The best answer I can give you for your questions 1, 2 and 3 is "it depends." For one example: A patent can be protected not only under patent law but also under trademark and copyright laws. Facts always matter.

While Australia and the U.S. have many things in common, and there are international treaties that have worked to bring some commonality to our laws, there are still far too many significant differences in how we handle legal matters here and how you handle legal matters in Australia to be able to accurately answer your questions for you.

In addition, we do not do hypotheticals on this forum. At least generally. Sometimes we will play around with them.

Hypotheticals are not as good as real life situations because, with real life situations, you have a set of facts that do not change. With hypotheticals, there are too many possibilities, too many variables. And, of course, the end to any hypothetical can always be: "Then an asteroid hit and everything was destroyed."

I suspect, as FlyingRon does, that what you are proposing would infringe on the existing patent. But, without knowing more, it is impossible to say for sure. You might find the link I provided to the USPTO site a help.

If what you have is a real product or a concept you are working on, however, you will probably be best served by sitting down with an IP attorney for a personal review.

Good luck.


And one final note: The "like" feature on this forum is relatively new (since 2012?). I find it a nice way to indicate that a post is liked for its content, whatever that content might be. And I like that TheGeekess liked my posts and I am sure FlyingRon likes that you liked his.