How to Protect an Innovative or Proprietary Design? 1

[soiset]

I've put a great deal of time and thought into an innovative retaining wall design, and am about to implement this design for the first time on my own property. This design is my baby, unique as far as I can discern (and I've really looked) and my objective is to employ it repeatedly as a design-build subcontractor. I don't know if it is patentable, and have somewhat exhausted my finances in the development of the original project, anyway, so hiring a patent lawyer is not desirable at the moment.

I will permit the project, and will seal my drawings - but will probably label the retaining wall system as "proprietary" and leave it off the drawings. I figure my seal and a promise of a letter of acceptance upon completion of construction should get it through the permitting process. I've made some effort to keep my idea under wraps, but when it comes time to market the system, which my company would actually construct each time, what is to prevent another engineer from repeating my design, which he could easily enough derive from a visual inspection?

My design consists basically of three elements, all available separately on the market - it's just a little more complicated than the brilliant idea of taking chocolate and peanut butter and sticking them together, so there's nothing I could do to prevent someone else from simply buying the pieces and building a similar system. But any job where this system would be used would require a permit, and thus an engineer's seal in any major municipality, so I really only need to know how to protect my design from being co-opted by another engineer. Is it possible?

 

[MiketheEngineer]

Call a lawyer anyway. You can get a copyright or I think something of a "conditional" patent or "patent pending" status fairly cheaply.

Also take a set of plans to the Post Office and have them date stamp it. It might later be used to prove that you had the idea first.!!

 

[soiset]

Awesome idea number two there. Supa cheap. Conditional patents are essentially "placemarkers" that do the same thing as your post office idea. They expire after a year.

 

[spats]

I don't think it would matter if "you had the idea first". If somebody else copies your design, or patents it, there's nothing you can do about it.

 

[soiset]

Well, I could challenge their patent if I could demonstrate that I had the idea before they submitted, but that wouldn't do me much good. But I do need some kind of protection - a copyright, or something. I figure that there might be something easier than a patent, considering that all I really need to prevent is the use of the design by other engineers - because it will (or should) necessitate an engineer to permit the kind of job that would use this design.

 

[rb1957]

a patent requires complete declaration of the unique features of the design, no? what's to stop someone copying that ? not an awfull lot. part of the trick to effectively protecting your idea is to enforce the patent, track down the copiers and sue them.

if you want to get something out of this, what about selling the idea to a company ? if it is that special, then people who build retaining walls will want a cheaper/better solution. first get a non-disclosure agreement.

 

[soiset]

I did a little more reading - it seems a copyright would only apply to my plans, not to the the assemblies that are detailed in them. So that leaves a patent - or some other avenue I have yet to learn of. And again, I'm not sure if it is patentable, because my write-up on the invention would basically be, "I take this product, which is fairly well known among civil/structural engineers, and this other product, which as far as I can tell has never been used to build a retaining wall, but is astonishingly well-suited to it in some contexts, and then a third pretty darned common product, mash it all together like this, and bang: magic retaining wall. Gimme a patent, please.

 

[dhengr]

A clever, but very complicated design and analysis may be enough to discourage some interlopers. The more so if you’ve built a few, really thought the problem through and there is a fairly limited market. Less so if there is a greater market for the product and other people who can do the same kind of manufacturing or construction as you had to do. There is almost always a way to get around a patent unless it is very narrow and well defined. There is very little protection short of a patent, if there is a large market and all you have done is very cleverly combined three or four standard products in a unique fashion. Your post marked, unopened, envelope would show when you conceived the idea but offer little else; and I believe the first to patent something has presidence. Your patent gives you the right to protect your idea or product; gives you the right to fight to protect it and prevent others from using it, but you must be vigilant and willing to spend the time and money to bring the fight. Then the date of conception comes into play. Then, the question becomes, how much more can you spend fighting to protect the idea, than the income it brings in to continue the fight. As regards the patent and patent attorney, in the first place, spend an hour with one for his/her advice. What will the patent cost you, do they think there is a real patent there, and compare this against a realistic market potential for the scheme as a part of your total business. If you make $2000 each on ten retaining walls per year, and this new idea increased that to $2500 per wall, how much can you afford for the patent, the cheap part of the process, and then the actions to protect it, the costly part of the process, assuming you are even aware the idea is being copied. As rb1957 suggests, large companies may have a larger market and can afford the fight, and will pay you for the idea and a royalty for each use. Again, a patent attorney’s advice might be money well spent. The bigger advantage may just be your experience in using the system to make a better wall, less expensively (lower bid), in less time, for more profit, while it lasts. Half your clients won’t know what you’re doing, half the wall builders will never see what you’re doing, so just ride it while you can, and don’t advertise your scheme to other contractors, or wall builders.

In some ways a patent pending give you more protection than the patent. Because, at the outset you have divulged little info. on the scheme to the public, and can say patent pending; but once you have a patent and I can get a copy of the patent, and I can work on ways to circumvent it. If you are not very careful how you craft the patent, I might get around it by just using a slight variation on one of your standard components. You might be better off to try to hide an important component or two in the details of the way you put things together; or to obscure the nifty way you do a few steps in the operation, to any but the most observant eyes.

 

[soiset]

dhengr, you are probably right that the pursuit of patent violations would probably not be worth the trouble and expense - and that the best way to protect the design would be a combination of giving the appearance of analytical magic, throwing some misleading spandrels in, and generally keeping it on the DL. That's kind of a conflict of interests, though, because on the one hand I'd want to market the fact that I've got a miracle solution, and on the other I wouldn't want competitors coming around to take a look at it (I'm not greedy - I just need some ROI).

But, there is the advantage of experience - the application for which this is intended will cause the paying clients apprehension ("Will my building collapse into the giant pit below it?") that could be relieved by my being the original designer and the only experienced installer of the system.

Still, though, I can't see me getting away with it for more than 2-3 years. It's just too good.

 

[ColinPearson]

Just a thought... I assume that you are personally involved in producing plans and having them permitted (from the way your posts sound). That being said, I would also assume that you probably know at least some of the city/county/state folks who see your plans and the plans of other projects in the area. If you know some of them well, it may be worth a call to ask that they let you know if they see someone else turning in plans that are too similar to your idea?

Like I said, just a thought. I'm not saying that you should ask the County to spy on everyone and tell you everyone else's ideas, just to let you know if it seems like somebody is ripping yours off. Probably a grey area and worth a few minutes consideration if you talk to a lawyer.

In any event, good luck.

 

[Qshake]

We must presume by "I've really looked" means you've done patent searches and not just internet searches.

You'd really be surprised as to how many ideas there are that have been patented already. I know I was and I was searching in an out of the way material engineering for civil engineering applications, not something that I would have thought existed already and once a patent search was finished I was amazed....

Otherwise good luck.

Regards,
Qshake

Eng-Tips Forums:Real Solutions for Real Problems Really Quick.

 

[msquared48]

I worked on one of those projects years ago, and we all had to sign a Non-Disclosure Agreement with the client.

Mike McCann
MMC Engineering

 

[ishvaaag]

Patents today work mainly as a way of disclosure of innovation to the main players. It worthy to/messing with them, a myriad of attorneys will deal with the patent application to set the fact that the patent must not be awarded because they have from before all the elements in it either in the public domain or their hands. Not that they need much this, they resource to industrial spionnage, and even national agencies' turn innovations to the power-players to enhance national capacities and competitivity (a particular set of privileged information).

On the other hand, some patents are awarded nationally that surely look inviable from a public domain viewpoint elsewhere, since solutions of the kind are being previously practiced with just the protection of the general intelectual property rights an author has on his work. These patents are unlikely to get any enforcement elsewhere than in the awarding country.

So if you have something of value, and if you are able to keep the secrecy about it (unlikely for anything stored in/worked with computers) quite likely the most rewarding process would be to inundate the actual inmediate market with your innovation, something that is difficult in design matters, and for products may easily require a degree of capitalization rare within individuals. So they just almost inmediately AFTER making the public apparition use to resource to some capital venture (because if BEFORE it can result in the steal of the idea). Quite difficult for individuals, these times.

 

[RacingAZ]

This is straight from my patent lawyer as I'm also developing an idea right now.

The moment you apply for a permit to build your very first one, you only have a year to patent it. After that and you still have not filed for a patent (whether provisional or utility), it is considered as residing in the public domain.

If money is an issue but you'd want to move forward, you best bet is to apply for a provisional patent. For provisional patent application, you don't need to divulge in detail the inner workings of your invention, just a general abstract and supporting pictures (or photo realistic 3d model). This would only give you 1 year to protect your invention. As someone already mentioned here, it’s really just a placeholder so no one can jump ahead of you in securing the actual patent. If you don't apply for a utility patent before the 1 year timeline expires, you lose the right to patent your invention and no one else can apply to patent it, as your invention would now be considered part of the public domain.

Your question about people ripping off your invention, I think you are getting ahead of yourself. Think about it, if your invention is something that needs to be submitted to a building jurisdiction for a permit and a sign off from a PE; those are actually barriers to entry. The population for would be patent violators of your invention is really small. Also, I’d like to think that the ethical standard of PE’s is higher than an average person although some would definitely try. Corporations would only come in and would try to circumvent you patent if you’re making a killing. It’s just the nature of the beast, if your invention is really marketable and if there’s money to be made. Until you’re generating huge amount of revenues, I wouldn’t worry about it.

Your greatest risk right now is inadvertently divulging your invention to a 3rd party (like transmitting the plans to a fabricator without an NDA, publishing it where the public can view the documents, things of that nature) and not knowing that your 1 year countdown has already started by doing so.

That’s why you need to get a lawyer. The initial consultation is typically free or at very minimal cost. Make a list of all possible questions that you can come up with and try to squeeze them all into that 1st meeting.