SA Design with Similar Function - Patent It?

[elcarter]

Hi. Had an odd call about a fabricated product I have made that has similarities but not a direct copy of someone else's. eg dimensions and structure differ but the function is inherently the same.

This is a physical metal item with 4 parts and is used in a process.

The item appears to be not patented and the profit from sales over the years would be much lower than the cost to do so.

I'm wondering if the other party has any course of action if they have not patented the design. It appears that they have made a similar product for some length of time and have not patented it.

They certainly made claims that they could and would.

I found a few links that appear to suggest that because they failed to patent it and it's been well over 12 months that they now no longer can - New Inventors: How to patent your invention

So I'm figuring "if" they have no other options and may now not be able to patent the design, I may be safe.

I appreciate any help, first time I've ever encountered this and not sure what to do next.

 

[John R]

Hi @elcarter,

1. Have you confirmed that they have not filed a patent application in Australia or other jurisdictions (e.g. USA) for the design? To clarify, many non-patent attorneys make the mistake of simply searching for granted patents and not patent applications. It is important to perform both searches.
2. If appropriate, have you asked the other party to provide further information in relation to their "claims"?
3. Whilst patent protection of a design is the most common way to protect the IP of a design, a design owner may also take steps to allege misleading or deceptive conduct, etc. if you were selling your design (as a product) in a similar way or in a similar market as their product.

Hope this helps. Please keep us updated with your progress.