Legal Clarification IP laws
 

I would like to know if there are any experts here in the legal field that can help out? This is in regards to building replicas and kit cars. I realize that these have been around for many decades without any issues with the exception of Carrol Shelby and his numerous lawsuits, that he eventually lost.

My questions:
-Can you replicate one-off concept cars legally?
-Are there any Intellectual Property restrictions after so many years (decades)?

Thx

1. You can replicate whatever you like as long as it is for non commercial purposes.
2. If they have a design patent on the design, these expire after a term, or earlier for non payment of maintenance - check UPSTO.gov for the latest info. Utility patents usually expire ~ 20 years after the priority date. I dont have any design patents (I have nearly 40 utility patents) so dont know if they are different.

If there is a patent expiration date after 35-40 years why can't it be used for commercial purposes? Since its a one-off concept car, I would need a product license for business application?

Huh? Where did 35-40 years come from?

A patent is a temporary monopoly that is given in exchange for sharing the idea (teaching) within the jurisdiction in which the patent is issued.

If the design is 35-40 years old, and if there was a design patent on it in your jurisdiction, that patent is long since expired (the 15 year monopoly is over). You can go ahead, even for commercial purposes.

https://www.law.cornell.edu/uscode/text/35/173#:~:text=Patents%20for%20designs%20shall%20be,f rom%20the%20date%20of%20grant.

do you have more lawyers than a car company?
you can't afford to fight them for long if they do come after you.
Right or wrong doesn't matter if they are willing to outspend you.

So the question should be,
how likely is it that they would go after you for copying
something they consider theirs?
It's not only about copyright or IP,
they can claim harm to their brand,
you name it.
Whatever it takes to rack up the attorney fees.

Ford might not give a crap,
but Ferrari has proven that they will.
Vigorously.

Disclaimer:
I'm not a licensed attorney but I watched all the episodes of suits.

The design is over 35yrs old. One-off concept not a Ferrari. Car will probably be hammered out outside the U.S. given the prohibitive costs. Might ask for a product license....

Before you spend anymore time or money on this, if you are serious, hire an IP lawyer and get him to do a freedom to operate. I’m certain everything is fine but since you are asking…

Thx for the advise!

My company deals with this all the time...and we have a "guy who knows a guy" because the downside of IP/Data Rights/Patent infringement dwarfs the upside unless you are careful.

There are specific things that garner IP and a Patent, none of them have anything to do with a specific vehicle or shape, none...you can't Patent an airplane or a car but you can Patent a wing design for an airplane or an application for a car...

In my companies world, UAS, we have a unique set of designs we developed for the commercial UAS/drone market. What we own, the IP, is our control software...nothing else matters in our community. We also have, and this is important, proprietary rights for other software applications we developed, which we jealously guard.

For the Department of Defense we like to pursuit Small Business Innovative Research (SBIR) projects because the the government assigns data rights under the SBIR and other companies much larger than mine can't use the data and designs we produced under the SBIR contract to compete with us. A big deal.

All that said, to your questions:

-Can you replicate one-off concept cars legally? Yes, just do not do an exact replica of the design and do due diligence on any particular design artifacts that may be IP related: Don't include an item that the OEM still feels they own. That is where the Guy, who...

-Are there any Intellectual Property restrictions after so many years (decades)? For the shape, I doubt it. Again, you cannot assign IP to a shape or widely accepted concept like a car...parts of the car, yes, a car, no. Change the outer mold line and you should be ok.

I live this stuff and we have always, and I recommend this, reached out to the OEM. You don't have to divulge a think, just see if they care. For instance, Raytheon builds a jamming missile, MALD, that I was asked by the Pentagon to do design excursions on. So we did...all data from the public domain (insane amount of design data on line for MALD and I don't know why).

After they folks liked what we did, we contacted Raytheon and I thought there would be a phalanx of lawyers parachuting into our small company to cease and desist.

They loved it and we are still working together. Communicate first.

Long post, just get a Guy or Gal, five hours time and you should be clear. Worth the money.

Actually, this is not true.

A utility patent is exactly what you describe but the US does have design patents as well which cover the look and ornamentality of a design.

The Difference Between Design and Utility Patents

In general terms, a "utility patent" protects the way an article is used and works (35 U.S.C. 101), while a "design patent" protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics.

https://www.uspto.gov/patents/basics/apply/design-patent

Here is an example of a design patent - the Tesla Model X:

https://patents.google.com/patent/USD683268S1/en

Note the D prefix in the patent number.

http://forums.pelicanparts.com/uploa...1720296956.jpg

I also said change the outer mold line and the problem ends.

Every SUV looks exactly the same, as do drones. The Tesla you posted has zero claim to a shape: Their shape, perhaps.

I actually had to read what the design was specifically since they all look the same.

Design patents only have one claim and several views, I only posted the first page. They are a ‘thing’, they aren’t common, and I’m told can be difficult to enforce… unless you are Ferrari.

If you look at the link I posted, it walks you through the necessary requirements to file a design patent.

I did. We never do one. Very hard to enforce and pricy. Getting a Patent of any type is very time consuming and expensive.

That is why we focus on IP and data rights for specific aspects.

All I will recommend from here on out, after doing this for decades, is that the OP call the OEM to see what they think.

Ferrari vs. Ares Design

Ares lost. "Similar" design. Close enough in appearance that consumers would confuse the Ares to a Ferrari.

Sure.

Ferrari can; We, my company, can’t.

What I would do is contact the OEM and be honest about the OPs intentions.

Then, based on their response, know what he is dealing with.

If there is going to be a gun fight, he’ll know.

Ares Design won, Ferrari lost.

I stand corrected. According to Hagerty Ares won on appeal.

I wonder if Todd Serota is still practicing trademark, patent and intellectual property law. He is in Manhattan Beach, Ca. If you are serious about this, you might reach out to him.

http://forums.pelicanparts.com/uploa...1720316289.jpg

https://www.hagerty.co.uk/articles/ferrari-loses-trademark-battle-with-ares-design-over-250-gto-recreation/

Watch the movie 'Flash of Genius' - a true story about the inventor of the intermittent wiper and how it was stolen by Ford.