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Starting a physical product company? You’re gonna need a lawyer

259 points by molsonhart 6y ago

doctorfoo 6y ago
The first thing I notice is their Brain Flakes (TM) looks exactly like something I played with at school as a kid some 25-30 years ago (albeit the pieces were a little larger)
- pmunt 6y ago
  I remember having things exactly the same at my school in the early 90s
  - ToFundorNot 6y ago
    I've never personally used them, but there were many products like it back in the day. Specifically a quick search brought up this from the 90's: https://www.amazon.ca/First-Octons-48-pcs-Building/dp/B00000IVUK https://www.amazon.ca/First-Octons-48-pcs-Building/dp/B00000... I thought of ZAKS: https://en.wikipedia.org/wiki/Zaks https://en.wikipedia.org/wiki/Zaks
  - learnstats2 6y ago
    Those were most probably Galt Octons, which are still sold today. Weird how the article doesn't mention those, while it talks about being ripped off...
- bobby_bob 6y ago
  Deelie Bobbers by Parker Brothers [0]. They're smaller, 1" but there's no question that it's essentially the same thing. There's a patents US2984935A [1] and US3177611A [2] from 1959 and 62. So I suppose the question is, how can you make money as a distributor of an over 50 year old product? The article seems to suggest that they created this toy and that patent protection is an option, which seems at very least disingenuous. [0] https://www.etsy.com/ie/listing/704956160/deelie-bobbers-gameparker-bros-deelie?show_sold_out_detail=1&ref=nla_listing_details https://www.etsy.com/ie/listing/704956160/deelie-bobbers-gam... [1] https://patents.google.com/patent/US2984935A/en?oq=2984935 https://patents.google.com/patent/US2984935A/en?oq=2984935 [2] https://patents.google.com/patent/US3177611A/en?oq=3177611 https://patents.google.com/patent/US3177611A/en?oq=3177611
  - jimmydddd 6y ago
    You can patent an improvement or tweak to a previous product. E.g., someone could patent a pencil, then someone could patent a pencil with an eraser, then someone could patent a pencil with a pyramid-shaped eraser. So they possibly are trying to patent some small inprovement to the older product.
    - nikitaga 6y ago
      Then the copycats can bypass your tweak patent by not implementing your tweak. In theory. But having a patent lets you sue your competitors in a very expensive way for them, even if they win by invalidating your patent as straightforwardly as the legal system allows. Funny how that works. I guess when the OP said you need a lawyer, it was more of a threat than friendly advice.
      - jimmydddd 6y ago
        Agreed.
  - II2II 6y ago
    Copying a 20 year old product may explain why Brain Flakes are supposedly popular and why so many companies were comfortable with cloning the product, which makes it seem even more disingenuous. The only legitimate gripe that I see are a few other companies ripping off the marketing materials. Even so, the example of Brain Flakes vs. Creative Flakes is, IMHO, the only one that I would label as creating confusion among consumers.
beervirus 6y ago
> Utility patents cost around $6,000 including legal fees and drawings. This is for the initial filing, and it won’t cover the cost of dealing with the rejections that almost every patent application receives. It’s also a serious underestimate—10k is more typical for the initial filing. >file a provisional patent application yourself ($150) before revealing your product. That will give you 12 months to explore whether or not your product is viable. If it is, get an attorney before the 12 months expire. Almost every single provisional application I’ve seen filed without a lawyer’s input has been close to worthless. This is a false economy.
- molsonhart 6y ago
  >This is for the initial filing, and it won’t cover the cost of dealing with the rejections that almost every patent application receives. It’s also a serious underestimate—10k is more typical for the initial filing. That's not right. That's $6,000 all in. Maybe software patents are more expensive. >Almost every single provisional application I’ve seen filed without a lawyer’s input has been close to worthless. This is a false economy. That's a bad sample then. A lay person can definitely file a good provisional patent application. They just need to describe the invention inside and out.
  - jimmydddd 6y ago
    Re: Maybe $6k all in to FILE. But additional fees are needed when the patent issues, and to later maintain the patent. Also, often to negotiate with the patent office during the examination process. Re: Provisional-- But be careful. For example, a Design patent application cannot claim priority to a provisional patent application. So the article's advice regarding filing a provisional patent application would not apply to design patent applications.
    - molsonhart 6y ago
      That was $6k including office action. You're right about the design patents. Thanks for the correction.
jimmyswimmy 6y ago
I read this article expecting to hear about potential liability concerns, not IP protection. It seems to me that I remember playing with a toy quite like theirs as a child many years ago. Basically cheap poker chips with cuts around the edge so they can connect. So it seems quite unlikely that they'd try to protect that IP, since it probably wasn't their invention in the first place. The designs that they show being copied by others are an interesting problem. I got bored of all the pictures and didn't compare one by one, but it seems like if you were to do a clean room design of a helicopter made of these snowflake chips, it would be legitimate to copy. I would guess they are suing this other company based on the copyright protection of their instruction manuals. Seems hard. I'm quite glad my interests for developing products involve a healthy amount of algorithms rather than just pieces of plastic and instruction manuals. Success breeds competition, and in something like this I doubt it's feasible to compete on quality, only price, which is a hard battle.
- molsonhart 6y ago
  We didn't invent interlocking plastic discs, but we did improve them and have a patent pending for that improvement. You're right that it is copyright for the helicopter. There is also a trademark infringement claim for "building flakes" vs. Brain Flakes®
  - jimmydddd 6y ago
    You can't enforce pending patent applicaition, only an issued patent. Also, as OP notes in the article, actually trying to enforce an issued patent in court is time consuming and expensive. It's also difficult if the copycat is based outside the US. They could just close their doors and open up the next day under another name.
    - pardavis 6y ago
      You are replying to OP who wrote the article. I might have missed it but I don’t think they described any ongoing legal action against this particular copycat.
loraa 6y ago
This is a product that was in existence before this CEO was a sperm. I guess it's whoever patents it first jeez.
627467 6y ago
I don't recall how this toy was called back in the 80s but I certainly recall playing with them. Maybe author could have gone into details of the aspects of this product that deserves protection. I suppose trademark is one of them. I can certain try to sell something old with a new trademark.
- ogre_codes 6y ago
  He did. There are examples where another company copied the instructions manual with specific creations. Even if any protection for the “disc with slots” concept are invalid, there is likely some protection for the manuals. Of course all of this boils down to having enough money for lawyers to defend
hn_throwaway_99 6y ago
I think it's important to point out that the author is CEO of edisonlf.com, a law firm focused on suing IP infringers. I don't really think that cheapens any of his advice, and heck, he may have even decided to start the Edison business after dealing with so much infringement in his toy business. Still, he's not a disinterested party and he should have disclosed this more clearly in his article.
- 627467 6y ago
  It does change the subtext of the whole article. Thank you for highlighting it. It does read more like an article on "list of legal accessories you can add to a physical product to propup the chances in a IP lawsuit"... While smart, can't help but think this goes against the spirit of IP law.
  - GavinMcG 6y ago
    I think it was just distinguishing the different sorts of IP. There's no multiplier effect; they're distinct types/instances of infringement.
  - mannykannot 6y ago
    As these legal accessories are a response to people who have no respect for the spirit of IP law, I, personally, am not particularly concerned by this. It has been attempts to get round the spirit of the law that has brought these accessories into existence.
- jaimex2 6y ago
  kudos to him even more then for explaining how to keep the legal costs down.
- donmcronald 6y ago
  > I am not a lawyer It's hilarious to me because that seems like the type of statement a lawyer would tell you to make. It's concise and doesn't offer any information beyond being the exact truth. I read the article and wouldn't have realized he has any affiliation, so it's not like he's schilling real hard or anything. There's a couple good points too. I've never heard of a provisional patent before.
notmadnomad 6y ago
Former USPTO patent examiners who do consulting are gold to work with your patent lawyers. Remember that a provisional patent is like chicken soup: just throw everything into it. For general legal assistance: Orrick. Furthermore, utilize legal help wisely by extracting as much value out of every second of meetings as possible. You're paying for it. If you need a top-notch commercial or residential real estate agent, especially someone who's also a broker to trim the fees, ask who they would use who is plugged-in to the scene and get you a good property. Youtube about fair use: Lawful Masses with Leonard French https://www.youtube.com/user/ljfrench009 https://www.youtube.com/user/ljfrench009 - Defending against Prenda law fame
prawn 6y ago
Same happens with popular apps. You will almost certainly face blatant rip-offs.
- donmcronald 6y ago
  Same thing happens with everything unless you're a big company with a bunch of money to spend on IP protections. We have this really screwed up system where if an individual creates unique product you'll have to deal with copycats before you cash the first cheque, but mega-corps can have white noise demonetized for copyright infringement on YouTube.
Aeolun 6y ago
Is any of this relevant to anyone outside the US? Or can they copy your product as much as they want?
- molsonhart 6y ago
  Yes. You can register your ip in the US from outside the US.
- jimmydddd 6y ago
  If you only have US IP protection, then they can make it and sell it in foreign countries. The US IP protection would be relevant once the copycat tried to import or sell into the US. But, for a small company, such enforcement can be difficult. Especially if the online marketplace does not provide any assistance.
papito 6y ago
That's the least of your problems. To fire up an assembly line for even the most trivial of products you are going to be looking at initial expenses in the range of $1M, if you are lucky. Even if it's China, in which case you will also have to know how to navigate the industry there.
- starky 6y ago
  The only way $1M makes sense is if you are describing the entire project cost for a fairly basic electronics product including tooling, salaries, marketing, compliance, manufacturing fixturing, etc. What I would consider "firing up a manufacturing line" would cost maybe in the tens of thousands of dollars.
- molsonhart 6y ago
  This is wrong.
  - OnlyOneCannolo 6y ago
    This is not a very informative comment.
    - molsonhart 6y ago
      What do you want me to say? I can't tell you how much it cost because it varies by product, but to get most physical products of the ground in China costs less than $5k.
      - OnlyOneCannolo 6y ago
        That.
      - triangleman 6y ago
        How about if you don't want to go to China?
        6y ago
boltefnovor 6y ago
I had a toy 100% precisely like brain flakes when I was a kid.
RandomBacon 6y ago
I sympathize with the author, but his comparisons at the end (screenshots and pictures) show the problem: - The competitor's product is in stock, the author's product is not. - The competitor's price is cheaper. - The competitor's packaging looks better and advertises more pieces (while still being cheaper). Albeit packaging appearance is subjective, and so is this: I think the competitor has a better product name.
- jaimex2 6y ago
  The original has paid for the r&d, advertising and taken all the risk involved with launching a new product. Copy doesn't have to factor any of that in and can shop around for the cheapest labour to get the copy done. As stated in the article even the supplier has started a copy. Consumers still lose out if a product never gets created in the first place because its too much hassle to deal with copying.
  - jessriedel 6y ago
    > The original has paid for the r&d, As discussed in other comments, the "original" product from the author is in fact itself a copycat. Furthermore, for this product the author has mostly been using copyright and trademarks, not patents, suggesting that R&D was not their key input.
    - andi999 6y ago
      Patents is the R, copyright the D in R&D.
      - jessriedel 6y ago
        The common use of the term "R&D" does not back you up on that. https://en.wikipedia.org/wiki/Research_and_development https://en.wikipedia.org/wiki/Research_and_development
  - mordae 6y ago
    Yesss, battle about who gets to mold little pieces of plastic for kids to play with.
alex_young 6y ago
Your design is most likely to be copied by companies outside of US jurisdiction. Good luck enforcing IP there, even with a great lawyer.
- nickff 6y ago
  You can get an injunction preventing the importation of infringing devices in most jurisdictions where you can get a patent.
mmaunder 6y ago
I wonder if it’s possible for creators to successfully defend products from imitators. I’ve heard it’s rife on amazon and haven’t heard any practical solution. E.g was chatting to a very popular artist a few days ago and his only solution is to keep innovating and try to outpace the copycats.
aronpye 6y ago
Probably should have also mentioned you should always get liability insurance, with any business for that matter.
kev2908 6y ago
> If you need a lawyer and to file a lawsuit, try to get one on contingency. Contingency means that, instead of earning money by the hour, the attorney gets a portion of the money you recover. They’ll care more and your incentives will be better aligned. Unfortunately, this is not possible in all countries. I come from Austria where this is definitely not allowed. There are probably other european countries where this is disallowed.
Jsharm 6y ago
Hacker News tends to hate IP but I thought the article was very informative, really appreciate the costs breakdown. Maybe worth mentioning the legal up side company but I don't think it changes the advice.
zuhayeer 6y ago
Feels like this is where there’s some value in a physical retailer like Toys R Us as distribution. They wouldn’t stock both Brain Flakes and Picasso Tiles. Since Brain Flakes would have come to them first and with the right IP, they’d put them on the shelf. There’s some sort of in built filter with physical stores because it’d be awkward to show the exact same product under different brands, it may even reflect poorly on the retailer or store. Whereas on Amazon, brand value completely subsides and I’d assume the main competing factors are price and search rank.
- ascar 6y ago
  On the other hand, supermarkets do that on a regular basis with food. Brand product and inhouse alternative. Sometimes it goes as far as the brand producer providing both products, with the exact same ingredients and the supermarket puts them right next to each other. Only difference: Packaging and price.
DevKoala 6y ago
I remember playing with a toy very similar to the one in the article and this was over two decades ago. Weird that he now owns the copyright.
franga2000 6y ago
> Copyrights. In the physical product world, you can file a copyright for advertising copy, your packaging art, or even your e-commerce photos. They cost $65 to file with the US Copyright Office and you do not need an attorney to do it. Since when is this a thing? Isn't copyright automatic on any kind of creative work? Like, even the text I'm writing here should be protected by default, right?
- Juliate 6y ago
  Yes in principle. And then you need to have the means to efficiently defend it against any contestant. Having provable timestamped prior usage/publication/sale/distribution can be enough. Having a public registration office stamp is even more solid ground, before you effectively publish anything.
- chipsa 6y ago
  Copyright lets you file damages. But you need to prove damages amount. Registered copyright allows you to pursue statutory damages, and all you have to prove is that copying occurred.
baybal2 6y ago
You cannot protect yourself from copycats, and if somebody says he can, he is a fraud. I worked in, and around OEM consumer electronics since 2007. A much bigger problem why you need a lawyer to run just any physical business in USA, is because of militant litigation from pretty much everybody: 1. Consumers, some time legit, some times BS, and BS litigations hurt the most. You either hire a lawyer to write "Do not try to operate the gas stove with your genitals," or you simply cannot survive with nonsensical body of law covering product liability. Not saying that genuine screwups on your side can not be equally painful. A recall is usually the end of any non-MNC company in the industry. 2. Suppliers, and not in the way you usually expect. IP supplier-trolls at large. The moment somebody sells a single widget of yours in US, US judges believe they can apply American IP laws wherever you are in the world, and entitle trolls to your international revenue. It does not fly much anywhere in the world, but they have unlimited amount of tricks to lure you into US courtrooms. 3. Government bodies, again, some times legit, some times not. Tons of codes, and some well known vague, and contradictory regulations especially covering radio certification, and electrical safety. It's not like they are hard to follow, but it is the authorities in charge which themselves don't know what their rules mean, and don't want to tell even if compelled to. However, the biggest regulatory hurdle in US is much more about simply running the company as such. Militant IRS, labour related litigation, securities (just don't run a corporation in the US under any circumstance.) 4. Your own distributors. In what country a buyers of yours can not only owe you money, be overdue on the payment, and sue you for demanding them back? Yes, you know the answer. From my experience, it is extremely hard to exact payments from debtors in USA, and big co clients routinely exploit it every day.
- Mower99 6y ago
  Interesting, and while I sense that you have legitimate experience and insight, I cannot help but feel this contradicts the reality that I see: Many startups originate in the U.S. and while many fail, some either become profitable or are acquired. Why would another entity acquire if the future burden/liability you describe truly exists?
  - baybal2 6y ago
    > Why would another entity acquire if the future burden/liability you describe truly exists? There are too many bankers, and lawyers with an identity conflict finding themselves in doing business.
1vuio0pswjnm7 6y ago
"If you are successful, you will be copied and the copies will take your sales. You need a way to prevent this and that is "intellectual property" or "IP". This is a catch all term for an exclusive license from the government to sell something you created." Generally, you can't grant an exclusive license to rights that you do not own. The author's definition of "intellectual property" would appear to have the government owning exclusive rights to sell anything eligible for intellectual property protection. Sometimes, as a condition to receiving some form of financial support from the government, you might automatically assign rights to them. Obviously not all "intellectual property" is created with governmental support. Internet authors frequently try to explain intellectual property incorrectly, but this is one of the more intersting incorrect definitions I have seen. Patents, trademarks and copyrights do not grant a license to sell anything. They do provide rights to sue others.
deleted 6y ago
[deleted]
amelius 6y ago
How does one protect against selling products to Chinese companies and getting copied? (Except for the obvious "don't sell")
White_Wolf 6y ago
An(almost)identical product was available 20+ years ago in Eastern Europe(most likely all of Europe and Asia). Edit: Link to pic https://ro.pinterest.com/pin/559713059931829100/ https://ro.pinterest.com/pin/559713059931829100/
pueblito 6y ago
I have a physical product company in a very heavily regulated industry and I suspect strongly that my attorney has far less to do than if I made software. I'll have to ask him, maybe I'm misunderstanding and screwing up bad
- roland35 6y ago
  Having heavy regulations almost helps in some cases because it both discourages low level copycats and also protects you to a degree - if someone sues you can say "I followed all the compliance standards!". And hopefully you have the documents to back that up.
  - pueblito 6y ago
    True! In many/most ways, my business ( marijuana ) IS compliance.
roland35 6y ago
I am thinking of starting a hardware product based company, and the thing that worries me the most is liability since the US is so litigious If your product is so easily copied, unfortunately it will be copied. It isn't a good thing but that's the way it is! I think toys are probably the hardest industry to avoid copycats. To be successful you need to keep innovating and try to build moats around your product, whether that is having better quality, having a software aspect which is harder to copy, or even just having the brand name.
slightwinder 6y ago
Not limited to physical products. It's common sense to have a lawer if you do business. There is all kind of nasty stuff that will harm you; and you yourself might be even the first one on that list. A laywer should also be around check how you not break any law yourself. You might unwillingly break someones IP yourself, or go against some easy to find trademark or patent. Or your businees might be based on some idea which is actually illegal in some aspect. And if your business is running, you need someone to take care of customer-complains, copycats, piracy, problems with employees and partnered companies... There is so much that can go wrong, so many toxic people who wanna milk you for a cheap dollar. It's like the real world-version of anti-malware-software. If you don';t know exactly what you are doing, it might be healthier to have some good protection.
herodotus 6y ago
This is a quibble, but you might find it useful. The writer of this otherwise well-written article writes "i.e." where they should have written "e.g.". i.e. means "that is". e.g. means "for example". I have no idea why people keep getting this wrong.
- jimmaswell 6y ago
  I remember it with "eggxample"
- carapace 6y ago
  > I have no idea why people keep getting this wrong. Because we stopped teaching Latin? My fav is et cetera ("and so on") where et is of course "and" and has its own symbol "&" (which, if you look closely, is clearly made of an "E" and a "t") and so you can abbreviate "etc." as "&c."
mcv 6y ago
They released those "Brain Flakes" in 2014 and had copycats within a year. But I remember toys that look exactly like that from much longer ago. Aren't Brain Flakes the copycats here?
ColanR 6y ago
IIRC, snowboards are a counter-example to this article. The design was never patented, and the original company did pretty well on the principle that 'a rising tide floats all boats'. Edit. The article makes me think of the different (extreme) failure modes of companies run by experts in different sub-departments. An accountant might run the company into the ground with bean-counting, a marketer might sell! sell! sell! what they've got without regard for quality, an engineer might forget to find customers, and apparently a lawyer might protect their idea so far as to prevent anyone else from helping popularize the idea. Everyone thinks their own tool is perfect for all the nails...
gohbgl 6y ago
So basically the author does not like it when someone competes with them (who does?) and runs to the government to get a monopoly on the product. Spending money and effort on suing instead of continuous innovation and improvement. What a great system.
Kiro 6y ago
Unpopular opinion and anecdotal but in all the companies I've started lawyers have been the single biggest waste of money. They gave me nothing that I couldn't have found by doing a Ctrl+F in the law code. It may help that I live in a country with pretty straight-forward laws and very little bureaucracy, which doesn't seem to be the case in the US. Even the preparatory work and case-laws are easy to digest.
- roland35 6y ago
  I think it is one of those things like insurance - you won't need it 99% of the time but it is good to have for that awful 1%!
carapace 6y ago
It strikes me that having the time/space lag from "good idea" to "available everywhere cheaply" decrease is, overall, a good thing. But like Napster, too much of a good thing causes it's own problems, eh? (I'm kidding, napster was great and nothing better has yet replaced it.) As time goes on this lag will reduce and the problem becomes how can I pay my bills? But that's a problem everybody (who doesn't own a robo-omni-factory) shares with you. So UBI baby. (Universal Basic Income) Star Trek. Yay.

259 points by molsonhart 6y ago

The first thing I notice is their Brain Flakes (TM) looks exactly like something I played with at school as a kid some 25-30 years ago (albeit the pieces were a little larger)

pmunt 6y ago
I remember having things exactly the same at my school in the early 90s
- ToFundorNot 6y ago
  I've never personally used them, but there were many products like it back in the day. Specifically a quick search brought up this from the 90's: https://www.amazon.ca/First-Octons-48-pcs-Building/dp/B00000IVUK https://www.amazon.ca/First-Octons-48-pcs-Building/dp/B00000... I thought of ZAKS: https://en.wikipedia.org/wiki/Zaks https://en.wikipedia.org/wiki/Zaks
- learnstats2 6y ago
  Those were most probably Galt Octons, which are still sold today. Weird how the article doesn't mention those, while it talks about being ripped off...
bobby_bob 6y ago
Deelie Bobbers by Parker Brothers [0]. They're smaller, 1" but there's no question that it's essentially the same thing. There's a patents US2984935A [1] and US3177611A [2] from 1959 and 62. So I suppose the question is, how can you make money as a distributor of an over 50 year old product? The article seems to suggest that they created this toy and that patent protection is an option, which seems at very least disingenuous. [0] https://www.etsy.com/ie/listing/704956160/deelie-bobbers-gameparker-bros-deelie?show_sold_out_detail=1&ref=nla_listing_details https://www.etsy.com/ie/listing/704956160/deelie-bobbers-gam... [1] https://patents.google.com/patent/US2984935A/en?oq=2984935 https://patents.google.com/patent/US2984935A/en?oq=2984935 [2] https://patents.google.com/patent/US3177611A/en?oq=3177611 https://patents.google.com/patent/US3177611A/en?oq=3177611
- jimmydddd 6y ago
  You can patent an improvement or tweak to a previous product. E.g., someone could patent a pencil, then someone could patent a pencil with an eraser, then someone could patent a pencil with a pyramid-shaped eraser. So they possibly are trying to patent some small inprovement to the older product.
  - nikitaga 6y ago
    Then the copycats can bypass your tweak patent by not implementing your tweak. In theory. But having a patent lets you sue your competitors in a very expensive way for them, even if they win by invalidating your patent as straightforwardly as the legal system allows. Funny how that works. I guess when the OP said you need a lawyer, it was more of a threat than friendly advice.
    - jimmydddd 6y ago
      Agreed.
- II2II 6y ago
  Copying a 20 year old product may explain why Brain Flakes are supposedly popular and why so many companies were comfortable with cloning the product, which makes it seem even more disingenuous. The only legitimate gripe that I see are a few other companies ripping off the marketing materials. Even so, the example of Brain Flakes vs. Creative Flakes is, IMHO, the only one that I would label as creating confusion among consumers.

beervirus 6y ago

> Utility patents cost around $6,000 including legal fees and drawings. This is for the initial filing, and it won’t cover the cost of dealing with the rejections that almost every patent application receives. It’s also a serious underestimate—10k is more typical for the initial filing. >file a provisional patent application yourself ($150) before revealing your product. That will give you 12 months to explore whether or not your product is viable. If it is, get an attorney before the 12 months expire. Almost every single provisional application I’ve seen filed without a lawyer’s input has been close to worthless. This is a false economy.

molsonhart 6y ago
>This is for the initial filing, and it won’t cover the cost of dealing with the rejections that almost every patent application receives. It’s also a serious underestimate—10k is more typical for the initial filing. That's not right. That's $6,000 all in. Maybe software patents are more expensive. >Almost every single provisional application I’ve seen filed without a lawyer’s input has been close to worthless. This is a false economy. That's a bad sample then. A lay person can definitely file a good provisional patent application. They just need to describe the invention inside and out.
- jimmydddd 6y ago
  Re: Maybe $6k all in to FILE. But additional fees are needed when the patent issues, and to later maintain the patent. Also, often to negotiate with the patent office during the examination process. Re: Provisional-- But be careful. For example, a Design patent application cannot claim priority to a provisional patent application. So the article's advice regarding filing a provisional patent application would not apply to design patent applications.
  - molsonhart 6y ago
    That was $6k including office action. You're right about the design patents. Thanks for the correction.

jimmyswimmy 6y ago

I read this article expecting to hear about potential liability concerns, not IP protection. It seems to me that I remember playing with a toy quite like theirs as a child many years ago. Basically cheap poker chips with cuts around the edge so they can connect. So it seems quite unlikely that they'd try to protect that IP, since it probably wasn't their invention in the first place. The designs that they show being copied by others are an interesting problem. I got bored of all the pictures and didn't compare one by one, but it seems like if you were to do a clean room design of a helicopter made of these snowflake chips, it would be legitimate to copy. I would guess they are suing this other company based on the copyright protection of their instruction manuals. Seems hard. I'm quite glad my interests for developing products involve a healthy amount of algorithms rather than just pieces of plastic and instruction manuals. Success breeds competition, and in something like this I doubt it's feasible to compete on quality, only price, which is a hard battle.

molsonhart 6y ago
We didn't invent interlocking plastic discs, but we did improve them and have a patent pending for that improvement. You're right that it is copyright for the helicopter. There is also a trademark infringement claim for "building flakes" vs. Brain Flakes®
- jimmydddd 6y ago
  You can't enforce pending patent applicaition, only an issued patent. Also, as OP notes in the article, actually trying to enforce an issued patent in court is time consuming and expensive. It's also difficult if the copycat is based outside the US. They could just close their doors and open up the next day under another name.
  - pardavis 6y ago
    You are replying to OP who wrote the article. I might have missed it but I don’t think they described any ongoing legal action against this particular copycat.

loraa 6y ago

This is a product that was in existence before this CEO was a sperm. I guess it's whoever patents it first jeez.

627467 6y ago

I don't recall how this toy was called back in the 80s but I certainly recall playing with them. Maybe author could have gone into details of the aspects of this product that deserves protection. I suppose trademark is one of them. I can certain try to sell something old with a new trademark.

ogre_codes 6y ago
He did. There are examples where another company copied the instructions manual with specific creations. Even if any protection for the “disc with slots” concept are invalid, there is likely some protection for the manuals. Of course all of this boils down to having enough money for lawyers to defend

hn_throwaway_99 6y ago

I think it's important to point out that the author is CEO of edisonlf.com, a law firm focused on suing IP infringers. I don't really think that cheapens any of his advice, and heck, he may have even decided to start the Edison business after dealing with so much infringement in his toy business. Still, he's not a disinterested party and he should have disclosed this more clearly in his article.

627467 6y ago
It does change the subtext of the whole article. Thank you for highlighting it. It does read more like an article on "list of legal accessories you can add to a physical product to propup the chances in a IP lawsuit"... While smart, can't help but think this goes against the spirit of IP law.
- GavinMcG 6y ago
  I think it was just distinguishing the different sorts of IP. There's no multiplier effect; they're distinct types/instances of infringement.
- mannykannot 6y ago
  As these legal accessories are a response to people who have no respect for the spirit of IP law, I, personally, am not particularly concerned by this. It has been attempts to get round the spirit of the law that has brought these accessories into existence.
jaimex2 6y ago
kudos to him even more then for explaining how to keep the legal costs down.
donmcronald 6y ago
> I am not a lawyer It's hilarious to me because that seems like the type of statement a lawyer would tell you to make. It's concise and doesn't offer any information beyond being the exact truth. I read the article and wouldn't have realized he has any affiliation, so it's not like he's schilling real hard or anything. There's a couple good points too. I've never heard of a provisional patent before.

notmadnomad 6y ago

Former USPTO patent examiners who do consulting are gold to work with your patent lawyers. Remember that a provisional patent is like chicken soup: just throw everything into it. For general legal assistance: Orrick. Furthermore, utilize legal help wisely by extracting as much value out of every second of meetings as possible. You're paying for it. If you need a top-notch commercial or residential real estate agent, especially someone who's also a broker to trim the fees, ask who they would use who is plugged-in to the scene and get you a good property. Youtube about fair use: Lawful Masses with Leonard French https://www.youtube.com/user/ljfrench009 https://www.youtube.com/user/ljfrench009 - Defending against Prenda law fame

prawn 6y ago

Same happens with popular apps. You will almost certainly face blatant rip-offs.

donmcronald 6y ago
Same thing happens with everything unless you're a big company with a bunch of money to spend on IP protections. We have this really screwed up system where if an individual creates unique product you'll have to deal with copycats before you cash the first cheque, but mega-corps can have white noise demonetized for copyright infringement on YouTube.

Aeolun 6y ago

Is any of this relevant to anyone outside the US? Or can they copy your product as much as they want?

molsonhart 6y ago
Yes. You can register your ip in the US from outside the US.
jimmydddd 6y ago
If you only have US IP protection, then they can make it and sell it in foreign countries. The US IP protection would be relevant once the copycat tried to import or sell into the US. But, for a small company, such enforcement can be difficult. Especially if the online marketplace does not provide any assistance.

papito 6y ago

That's the least of your problems. To fire up an assembly line for even the most trivial of products you are going to be looking at initial expenses in the range of $1M, if you are lucky. Even if it's China, in which case you will also have to know how to navigate the industry there.

starky 6y ago
The only way $1M makes sense is if you are describing the entire project cost for a fairly basic electronics product including tooling, salaries, marketing, compliance, manufacturing fixturing, etc. What I would consider "firing up a manufacturing line" would cost maybe in the tens of thousands of dollars.
molsonhart 6y ago
This is wrong.
- OnlyOneCannolo 6y ago
  This is not a very informative comment.
  - molsonhart 6y ago
    What do you want me to say? I can't tell you how much it cost because it varies by product, but to get most physical products of the ground in China costs less than $5k.
    - OnlyOneCannolo 6y ago
      That.
    - triangleman 6y ago
      How about if you don't want to go to China?
      - 6y ago

boltefnovor 6y ago

I had a toy 100% precisely like brain flakes when I was a kid.

RandomBacon 6y ago

I sympathize with the author, but his comparisons at the end (screenshots and pictures) show the problem: - The competitor's product is in stock, the author's product is not. - The competitor's price is cheaper. - The competitor's packaging looks better and advertises more pieces (while still being cheaper). Albeit packaging appearance is subjective, and so is this: I think the competitor has a better product name.

jaimex2 6y ago
The original has paid for the r&d, advertising and taken all the risk involved with launching a new product. Copy doesn't have to factor any of that in and can shop around for the cheapest labour to get the copy done. As stated in the article even the supplier has started a copy. Consumers still lose out if a product never gets created in the first place because its too much hassle to deal with copying.
- jessriedel 6y ago
  > The original has paid for the r&d, As discussed in other comments, the "original" product from the author is in fact itself a copycat. Furthermore, for this product the author has mostly been using copyright and trademarks, not patents, suggesting that R&D was not their key input.
  - andi999 6y ago
    Patents is the R, copyright the D in R&D.
    - jessriedel 6y ago
      The common use of the term "R&D" does not back you up on that. https://en.wikipedia.org/wiki/Research_and_development https://en.wikipedia.org/wiki/Research_and_development
- mordae 6y ago
  Yesss, battle about who gets to mold little pieces of plastic for kids to play with.

alex_young 6y ago

Your design is most likely to be copied by companies outside of US jurisdiction. Good luck enforcing IP there, even with a great lawyer.

nickff 6y ago
You can get an injunction preventing the importation of infringing devices in most jurisdictions where you can get a patent.

mmaunder 6y ago

I wonder if it’s possible for creators to successfully defend products from imitators. I’ve heard it’s rife on amazon and haven’t heard any practical solution. E.g was chatting to a very popular artist a few days ago and his only solution is to keep innovating and try to outpace the copycats.

aronpye 6y ago

Probably should have also mentioned you should always get liability insurance, with any business for that matter.

kev2908 6y ago

> If you need a lawyer and to file a lawsuit, try to get one on contingency. Contingency means that, instead of earning money by the hour, the attorney gets a portion of the money you recover. They’ll care more and your incentives will be better aligned. Unfortunately, this is not possible in all countries. I come from Austria where this is definitely not allowed. There are probably other european countries where this is disallowed.

Jsharm 6y ago

Hacker News tends to hate IP but I thought the article was very informative, really appreciate the costs breakdown. Maybe worth mentioning the legal up side company but I don't think it changes the advice.

zuhayeer 6y ago

Feels like this is where there’s some value in a physical retailer like Toys R Us as distribution. They wouldn’t stock both Brain Flakes and Picasso Tiles. Since Brain Flakes would have come to them first and with the right IP, they’d put them on the shelf. There’s some sort of in built filter with physical stores because it’d be awkward to show the exact same product under different brands, it may even reflect poorly on the retailer or store. Whereas on Amazon, brand value completely subsides and I’d assume the main competing factors are price and search rank.

ascar 6y ago
On the other hand, supermarkets do that on a regular basis with food. Brand product and inhouse alternative. Sometimes it goes as far as the brand producer providing both products, with the exact same ingredients and the supermarket puts them right next to each other. Only difference: Packaging and price.

DevKoala 6y ago

I remember playing with a toy very similar to the one in the article and this was over two decades ago. Weird that he now owns the copyright.

franga2000 6y ago

> Copyrights. In the physical product world, you can file a copyright for advertising copy, your packaging art, or even your e-commerce photos. They cost $65 to file with the US Copyright Office and you do not need an attorney to do it. Since when is this a thing? Isn't copyright automatic on any kind of creative work? Like, even the text I'm writing here should be protected by default, right?

Juliate 6y ago
Yes in principle. And then you need to have the means to efficiently defend it against any contestant. Having provable timestamped prior usage/publication/sale/distribution can be enough. Having a public registration office stamp is even more solid ground, before you effectively publish anything.
chipsa 6y ago
Copyright lets you file damages. But you need to prove damages amount. Registered copyright allows you to pursue statutory damages, and all you have to prove is that copying occurred.

baybal2 6y ago

You cannot protect yourself from copycats, and if somebody says he can, he is a fraud. I worked in, and around OEM consumer electronics since 2007. A much bigger problem why you need a lawyer to run just any physical business in USA, is because of militant litigation from pretty much everybody: 1. Consumers, some time legit, some times BS, and BS litigations hurt the most. You either hire a lawyer to write "Do not try to operate the gas stove with your genitals," or you simply cannot survive with nonsensical body of law covering product liability. Not saying that genuine screwups on your side can not be equally painful. A recall is usually the end of any non-MNC company in the industry. 2. Suppliers, and not in the way you usually expect. IP supplier-trolls at large. The moment somebody sells a single widget of yours in US, US judges believe they can apply American IP laws wherever you are in the world, and entitle trolls to your international revenue. It does not fly much anywhere in the world, but they have unlimited amount of tricks to lure you into US courtrooms. 3. Government bodies, again, some times legit, some times not. Tons of codes, and some well known vague, and contradictory regulations especially covering radio certification, and electrical safety. It's not like they are hard to follow, but it is the authorities in charge which themselves don't know what their rules mean, and don't want to tell even if compelled to. However, the biggest regulatory hurdle in US is much more about simply running the company as such. Militant IRS, labour related litigation, securities (just don't run a corporation in the US under any circumstance.) 4. Your own distributors. In what country a buyers of yours can not only owe you money, be overdue on the payment, and sue you for demanding them back? Yes, you know the answer. From my experience, it is extremely hard to exact payments from debtors in USA, and big co clients routinely exploit it every day.

Mower99 6y ago
Interesting, and while I sense that you have legitimate experience and insight, I cannot help but feel this contradicts the reality that I see: Many startups originate in the U.S. and while many fail, some either become profitable or are acquired. Why would another entity acquire if the future burden/liability you describe truly exists?
- baybal2 6y ago
  > Why would another entity acquire if the future burden/liability you describe truly exists? There are too many bankers, and lawyers with an identity conflict finding themselves in doing business.

1vuio0pswjnm7 6y ago

"If you are successful, you will be copied and the copies will take your sales. You need a way to prevent this and that is "intellectual property" or "IP". This is a catch all term for an exclusive license from the government to sell something you created." Generally, you can't grant an exclusive license to rights that you do not own. The author's definition of "intellectual property" would appear to have the government owning exclusive rights to sell anything eligible for intellectual property protection. Sometimes, as a condition to receiving some form of financial support from the government, you might automatically assign rights to them. Obviously not all "intellectual property" is created with governmental support. Internet authors frequently try to explain intellectual property incorrectly, but this is one of the more intersting incorrect definitions I have seen. Patents, trademarks and copyrights do not grant a license to sell anything. They do provide rights to sue others.

deleted 6y ago

[deleted]

amelius 6y ago

How does one protect against selling products to Chinese companies and getting copied? (Except for the obvious "don't sell")

White_Wolf 6y ago

An(almost)identical product was available 20+ years ago in Eastern Europe(most likely all of Europe and Asia). Edit: Link to pic https://ro.pinterest.com/pin/559713059931829100/ https://ro.pinterest.com/pin/559713059931829100/

pueblito 6y ago

I have a physical product company in a very heavily regulated industry and I suspect strongly that my attorney has far less to do than if I made software. I'll have to ask him, maybe I'm misunderstanding and screwing up bad

roland35 6y ago
Having heavy regulations almost helps in some cases because it both discourages low level copycats and also protects you to a degree - if someone sues you can say "I followed all the compliance standards!". And hopefully you have the documents to back that up.
- pueblito 6y ago
  True! In many/most ways, my business ( marijuana ) IS compliance.

roland35 6y ago

I am thinking of starting a hardware product based company, and the thing that worries me the most is liability since the US is so litigious If your product is so easily copied, unfortunately it will be copied. It isn't a good thing but that's the way it is! I think toys are probably the hardest industry to avoid copycats. To be successful you need to keep innovating and try to build moats around your product, whether that is having better quality, having a software aspect which is harder to copy, or even just having the brand name.

slightwinder 6y ago

Not limited to physical products. It's common sense to have a lawer if you do business. There is all kind of nasty stuff that will harm you; and you yourself might be even the first one on that list. A laywer should also be around check how you not break any law yourself. You might unwillingly break someones IP yourself, or go against some easy to find trademark or patent. Or your businees might be based on some idea which is actually illegal in some aspect. And if your business is running, you need someone to take care of customer-complains, copycats, piracy, problems with employees and partnered companies... There is so much that can go wrong, so many toxic people who wanna milk you for a cheap dollar. It's like the real world-version of anti-malware-software. If you don';t know exactly what you are doing, it might be healthier to have some good protection.

herodotus 6y ago

This is a quibble, but you might find it useful. The writer of this otherwise well-written article writes "i.e." where they should have written "e.g.". i.e. means "that is". e.g. means "for example". I have no idea why people keep getting this wrong.

jimmaswell 6y ago
I remember it with "eggxample"
carapace 6y ago
> I have no idea why people keep getting this wrong. Because we stopped teaching Latin? My fav is et cetera ("and so on") where et is of course "and" and has its own symbol "&" (which, if you look closely, is clearly made of an "E" and a "t") and so you can abbreviate "etc." as "&c."

mcv 6y ago

They released those "Brain Flakes" in 2014 and had copycats within a year. But I remember toys that look exactly like that from much longer ago. Aren't Brain Flakes the copycats here?

ColanR 6y ago

IIRC, snowboards are a counter-example to this article. The design was never patented, and the original company did pretty well on the principle that 'a rising tide floats all boats'. Edit. The article makes me think of the different (extreme) failure modes of companies run by experts in different sub-departments. An accountant might run the company into the ground with bean-counting, a marketer might sell! sell! sell! what they've got without regard for quality, an engineer might forget to find customers, and apparently a lawyer might protect their idea so far as to prevent anyone else from helping popularize the idea. Everyone thinks their own tool is perfect for all the nails...

gohbgl 6y ago

So basically the author does not like it when someone competes with them (who does?) and runs to the government to get a monopoly on the product. Spending money and effort on suing instead of continuous innovation and improvement. What a great system.

Kiro 6y ago

Unpopular opinion and anecdotal but in all the companies I've started lawyers have been the single biggest waste of money. They gave me nothing that I couldn't have found by doing a Ctrl+F in the law code. It may help that I live in a country with pretty straight-forward laws and very little bureaucracy, which doesn't seem to be the case in the US. Even the preparatory work and case-laws are easy to digest.

roland35 6y ago
I think it is one of those things like insurance - you won't need it 99% of the time but it is good to have for that awful 1%!

carapace 6y ago

It strikes me that having the time/space lag from "good idea" to "available everywhere cheaply" decrease is, overall, a good thing. But like Napster, too much of a good thing causes it's own problems, eh? (I'm kidding, napster was great and nothing better has yet replaced it.) As time goes on this lag will reduce and the problem becomes how can I pay my bills? But that's a problem everybody (who doesn't own a robo-omni-factory) shares with you. So UBI baby. (Universal Basic Income) Star Trek. Yay.