Design/manufacturing rights

[kerryn]

Ok some advice needed - hope what I say makes sense - this is long so bear with me

My industry is a fairly new one and pretty close knit to a certain extent, however more of us are moving into a more professional arena regarding patents, design protection etc. The downside is that a baby only has one bum and two legs so design wise you are pretty limited.

We took over a manufacturing company and all the rights to designs and manufacturer therein (this included several patents, design rights and of course client and agents) - this included a bin bag or two of cardboard patterns. The old owners then disappeared and we havent had contact since. We have successfully managed to pull the company out of the mire and manufacture several of the recognised products (owned by us) to a higher standard.

A competitor (call them A) has been told to cease and desist manufacturing a product (which looked familiar to me) by another company (B) . They are claiming that the product design belongs to them.

I have just discovered that the product used to be manufactured by the original owners (my co. C) but stopped when the designer couldnt continue for whatever reasons.

This designer it appears has sold the design to another company(B) - however as I understand it my company(C) 1) was never informed 2) still holds the patterns (found them tonight) 3) still holds the entitlement to manufacture this product (no letter of withdrawal has been found)

My concerns are that B have bought in some pretty big guns from London to sort this out - now we dont actually care about the product other than lost commissions and lack of contact on the part of the designer who incidently we talked to when we took over.

Does anyone know of our legal or moral obligations regarding the patterns? we have had them in our possession for 18mths now. we havent been told we cannot manufacture or find any paperwork telling the company they no longer are required to manufacture.

Sorry if this is complicated - part of me thinks stuff it let it go the other part thinks that this might actually be worth something and we have rights.

Kerry

 

[kyber]

Well, IMHO and given that IANAL...

This will probably get expensive so you need to think if you would be better walking away from those products or if your business could be undermined more broadly and you need to do something about it.

If the previous owner had sold/assigned rights/license to some other party and did not tell you this then it is he that you have an action against. The other party would be at liberty to exercise it rights/execute the license as appropriate and there would be little you could do about it.

If no such rights/license have been sold/granted then it is the other party that you have an action against (and let them pick a fight with the previous owner if they believe that they have been misled).

How confident are you that you can prove you own the original design and that the other company has a derivitive? If they can prove that they came up with the same essential design before your company this would make the whole patent shaky.

You really need advice from a competent patent lawyer.

Good luck.

Stuart

 

[kerryn]

Ok well after a long weekend looking through records we find that we dont own the design but still have a letter of agreement for us to manufacture the product and a letter of intent that we would be asked to continue to manufacture when the designer recovered from an illness.

We consulted a legal eagle friend who says that our case would be against the designer for any commissions due, and that a letter should be sent to the now owners of the design that we hold letter of intent.

After much thought we have decided that we dont have the time or energy to pursue this. We have asked a letter to be sent to both parties telling them of this - a sort of warning shot if you like.

TBH we have better things to be doing than getting involved in a product war esp as we dont own the rights.

thanks for the info

 

[woopi]

Consider taking them on. Never mind about 'big guns'. A small gun can pack a better punch than it's bigger rival if you aim right.

If the designer has a patent for the pattern, ask him for the patent number.

Then e-mail co. B and ask if they have a reciept for the payment of patent #. If not, you are legally entitled to ask for payment for their use of your payment. If you can proove that their product follows your patent guidelines...

W