Patent Infringement: Shotgun Concho Dog Collar

[HellcatLeathers]

Hey y'all! I just thought I'd bring this to your attention. This morning, I received an email from a "Adam Benjamin" at grizzlycollars@yahoo.com. He forwarded one email to about 7 different makers and I was one of them.

I've never heard of this guy, he's not on any of the Facebook leather pages I am on and I couldn't find him on here either. Anyway, he wrote me an email which said:

"My name is Adam Benjamin. I currently hold a Design Patent for a product that you are manufacturing. Please contact me as soon as possible regarding this matter. I would willing to discuss a amicable solution, I look forward to hearing from you. Thank You."

And I responded with this:

"Hi Adam,

I am a hobbyist leathersmith, so I don't do this full time or own a shop.

Please email me several pictures, a description of your product with size and material specifications and copies of your patent records and I will gladly take a look at them.

Every item I make is by hand one at a time. I so not use patterns or templates nor so I mass-manufacture anything.

I am pretty sure we're not even in the same league, but I'll take a look at what you are referring to.

Thanks!

Maria"

So I'm waiting to hear how he replies. In the meantime, I can't find a website for him anywhere...no Etsy store either. So I went to the patent office online and started researching. The guy actually has a patent for a "band with spaced bullet cartridge elements". So it's just a band with evenly spaced 12 gauge shotgun conchos you can buy from Tandy and about a hundred other places. I wonder if he even makes these or is he one of those people who patent a bunch of simple objects and then gets in touch with people who unknowingly make them and then he says "we can take care of this amicably" and then wants a percentage of your profits.

I am attaching the copy of the patent I found online.

The funny thing is, I didn't even infringe on his patent as my collar has brass dome rivets in-between each concho and I only have (1) of them for sale in my Etsy shop.

So, I'm just letting everyone know, don't bother making a plain dog collar with evenly spaced shotgun conchos on it, because this guy will contact you. Thanks.

Anybody have this happen before?

[tnawrot2]

I don't know the legality of this , but the patent is for bullet cartridge element. A cartridge is the casing in which primer, powder and a bullet is used. A 12 gauge is a SHELL in which primer, powder and SHOT is used. He doesn't have a picture of the "bullet cartridge elements". Maybe you should get a patent for "shotgun shell conchos"

[veedub3]

I looked at the attached image on his patent and I took a look at yours on your site. I guess one can say they are similar but to me that is in no way infringement. Yours have and additional element. Depending on the type of patent he holds, one can take a product and improve upon it without infringement which would include for example, the additional element, a wider band, etc.

I think you responded in the proper manner, although being a hobbyist or doing them one by one by hand does not matter, (you only have to sell one), I too would have requested detailed information on his product.

When he made the statement "we can take care of this amicably" I immediately thought that this guy is just trying to dupe people that are not knowledgeable on the subject, but that's just me.

When/if he contacts you again, tell him that you requested the detailed information on his product so that your Attorney may review it, just to see what response you get. I would then contact an IP Attorney, (usually they will give you a free phone consultation) and see what he says.

Good Luck with it all!

Karina

[atcspaul]

personally i would ignore him. patents are pretty exact and if yours is just a little different then i do not believe he has a case. plus it will cost him a good amount of money to pursue it.

[BearMan]

Hi Maria, I'm not a patent lawyer, but there is a lot of good info, that can be easily found. There are a few different types of Patents. A "Design" patent is the least protected type of patent as any change to the design, does not infringe on the patent. Here is a bit of info from a patent site: Detriments of Design Patents

• Design patents do not protect the functional features of an invention (most inventions have functional features).
  
• Design patents can be relatively easy to design around by simply changing the overall appearance of the competing product.
  
• Difficult to protect different variations product. So, the way I see it, is that unless you are making an exact copy of his design, there shouldn't be a problem. Here is the site where the info came from: http://www.patent-ideas.com/Design-Utility-Patents/Design-Patent-vs-Utility-Patent.aspx
  

[ChuckBurrows]

_{It's mainly a type of scam that has been ongoing for some years now - people do these patents and then go out and "charge" people with infringement in order to make money.. it happened with wed designers a few years ago and was all the rage - unless your piece is an exacting copy of his patent you are basically safe although he can try and cost you money but that's the scam - they settle "amicably" by you sending them a chunk of change - I had it happen to me some years ago and told them to get stuffed after discussing it with a patent lawyer which cost me $50.00 (they wanted $10,000.00 grand with on going payments) ...haven't heard from them since after the lawyer sent a letter as part of the charges.. it may go higher but I doubt it, especially if he doesn't respond in a professional manner}

Edited May 12, 2013 by ChuckBurrows

[BearMan]

After doing some more research, it looks like he could have a problem if he tries to push the matter on you. Some recent Patent laws show that his patent could be deemed "unpatentable" if it can be shown that it's not a unique enough design. Here is the info, from the same site as before: Post-Grant Review

Any patent issued from a patent application governed by the new first-to-file provisions will be subject to a post grant review. For patents issued from a patent application filed before March 16, 2013, a post-grant review may be utilized for a few classes such as business method patents. To initiate a post-grant review, a third-party must file a request for post-grant review within nine (9) months of the issue date of the patent establishing that (i) at least one claim of the patent is more likely than not to be declared unpatentable or (ii) that the request raises a novel or unsettled legal question that is important to other patents or patent applications. In essence, post-grant review may be sought on any grounds that may be used to challenge the validity of a patent claim. Check it for yourself,,, & make your own determination, as I'm not attempting to give legal advise,,, just info.

[Cyberthrasher]

I don't really have much experience with patents. But, I'm pretty sure that Ed nailed it. Talk to an attorney and get their thoughts, but I don't see anything about that that's really patentable. One good way to prove that he didn't "invent" that design is to find an example of it that pre-dates 2011. If someone else was already manufacturing something with that "design", then it's obvious he didn't invent it. I do know that there are "first-to-patent" laws, but this is only a step above patenting a plain dog collar with nothing on it and saying you invented the design for the dog collar.

For reference - here's someone who was making them in 2010 - predating his "invention"

http://www.dobermantalk.com/doberman-related-chat/48970-ginos-new-collar-pictures.html

[HellcatLeathers]

Thanks y'all for all the advice and comments. I work at a law firm, so I'm going to talk to one of our attorneys. If he was a leatherworker, you would think he would have a website somewhere. I have a hunch he's looking for a payout. I made one collar for one customer and I haven't even sold it. I might just remove it from my Etsy page and put it on one of my dogs and call it a day. LOL.

[Frank]

I was going to say that it sounds like a scam as well, to get you to pay "royalties"