"In house" Engineering

[MechMon]

Hello all,
Recently we were faced with a problem in our production process. I designed a new piece of equipment and solved the issue. Now I am begining to wonder about the pattent/legal side of things.
The question is: if you engineer a solution to a problem for your own use, ie your production process, could it still potentaly fall into an infringment issue, even if it's just used "in house"? If so, then how do I avoid such issues in the future?

Mon

 

[IRstuff]

That's why people do patent searches. There are several free patent lookup sites, including one from Google.

TTFN

FAQ731-376

 

[zdas04]

This is a question for a lawyer. One good thing about it is that if you are doing engineering under an industrial exemption any infringement was likely done by your firm, not by you (in terms of liability). If you had hired a PE to do the same mod, the liability would probably be different.


David Simpson, PE
MuleShoe Engineering

http://www.muleshoe-eng.com

Please see FAQ731-376 for tips on how to make the best use of Eng-Tips Fora.

"It is always a poor idea to ask your Bridge Club for medical advice or a collection of geek engineers for legal advice"

 

[IRstuff]

The factor that usually decides who to sue is how deep their pockets are. Given the choice between you or your company, your company will invariably get the shaft in this instance.

TTFN

FAQ731-376

 

[ornerynorsk]

Better off not to open this can of worms. You will not come out on the good side. Walk up to anybody on the street and ask them if they would like you to give them money, the answer will invariably be yes. Essentially the same situation.

 

[Eltron]

I'd say that there is no reasonable way to avoid infringement in many cases. The real question is really one of ethics. Are you doing it deliberately and knowingly? Then you might be in the wrong. However, as the folks above have pointed out right and wrong have more to do with how deep your pockets are than morality.

Dan

http://www.eltronresearch.com

Dan's Blog

 

[unclesyd]

Based on personal experience, Yes. This especially true if you show the patent holder your invention. In my case all the work done was in house and everything was cleared by our legal and patent department.

 

[TheTick]

If you use a patented process or device to produce a product that is being sold, you are certainly infringing. If you used knowledge of a patent to fix a machine, it's a bit greyer.

 

[unclesyd]

In our case nothing was sold as the machine was used in house. The problem was we used part of a frame of purchased machine that wouldn't do the job it was bought to do. We only used part of the frame, no other parts, with the problem being we left the manufacturers name on it because it was a CI casting. We didn't apply for a patent as it was considered to be a competitive advantage with our product sales.

The litigation came when we had a supervisor show our machine to a VP of the OEM. All of sudden the group that built the machine had to give any prints, sketches, or personal notes to the legal department. I never heard the outcome but our machine is still operating. One of the Supervisors said that we settled out of court by paying a fairly large fee.
There was a lot discussion within the engineering group about modifying or building anything that had the OEM's name on it.

The irony of it is that the OEM now offers a machine based on our machine design principals. When we asked about this we were told in no uncertain terms that this was of no concern to us.
One of our problems were the company patented very few new ideas. I personally filed 5 records of invention with our patent department and they only pursued one patent. I have one patent on a subject completely out of my field.

One of the engineers who worked on the project who was a RC airplane hobbyist told us he was scared to buy a kit as he always made some modifications to the airplane or controls.

 

[MechMon]

Thank you all for the input. I am not aware of any infringment on my part, I've still not found anything on my solution. But just to be on the safe side I'll contact the legal dept.

 

[Cockroach]

I wouldn't get overly concerned about the legal issue here. For one thing, you can show independent analysis and a vein of original thought not associated with any said patent.

From experience, there are two types of patents: engineers who are simply making a buck and file for protection from predators, and the rest who file in the hope of a violation in order to make a buck. The patent law has so many loopholes and way to get around it, they are useless. I've had patents violated, infringed upon, "improved" and plain out stolen. Part of the business.

Don't let a patent stop you, most lawyers bank on your own fear in order to drum up business. I highly doubt there is a patent that specifically concerns your application.

Kenneth J Hueston, PEng
Principal
Sturni-Hueston Engineering Inc
Edmonton, Alberta Canada

 

[Tmoose]

A little Google patent searching might be interesting.

Years ago, a decade before I arrived, The company I work for came up with a slick add on device for a fuel burning system. A patent was applied for in the proper time frame relative to first sale. Shortly after a more encompassing one was filed. "Our" attorney suggested we abandon the second one since his search came up with "prior art" (one odd example was mentioned secondarily in some goofy portable hair dryer ).

A few years later a competitor applied for a patent on a device functionally VERY similar to ours (that we've been selling and installing for over a decade) with about 30 "claims." A little later the patent application was re-issued (there is an odd legal word for that) with the "claims" list trimmed down by about 80%.