I know I need an attorney, but what kind?
February 20, 2007 2:29 PM   Subscribe

I want to make internal parts for someone else's electronic item, please help me determine the legal direction I should take.

My very small company repairs electronic precision instruments. One older instrument is no longer supported by it's well-known manufacturer, despite many of them still in use throughout the US. This means the manufacturer has deemed it obsolete; they will no longer stock parts for this particular instrument and their repair department will not repair them. The manufacturer will also no longer have parts for sale to independent repair facilities like mine. My company receives a significant number of these instruments for repair, and I'd like to continue servicing them. In order for me do this, however, I need the proprietary circuit boards that enable the various functions of the instrument. I have the capability to have the circuit boards reverse engineered and manufactured. I'm concerned that the manufacturer will be able to sue me for patent infringement (or something). I need to consult an attorney, but don't know what type of attorney I need. I'm in the Dallas/Fort Worth TX area, any advice, MeFites?
posted by luckyshirl to Law & Government (7 answers total) 1 user marked this as a favorite
You need a patent attorney. If memory serves, dios' is in Dallas and can probably give you a good lead on one. If he doesn't show up in the thread you might check his profile for an email.
posted by Carbolic at 2:41 PM on February 20, 2007

You will likely need a patent attorney, though sometimes the answer can be pretty self-evident: e.g., if the patent is valid, you can't reverse-engineer and manufacture without a license. If you want to refine your question for discussion with an attorney, locate the patent number (on the board or its literature) and run a search (e.g., at google's utility).
posted by Clyde Mnestra at 2:57 PM on February 20, 2007

Yeah, you should call a patent attorney / firm; they can easily be found via google or lawyers.com (or Martindale, or the local bar association, or-or-or). Clyde's suggestion is fine as far as it goes, but I would add that you shouldn't assume everything's fine just because you can't find any patents on your own that appear relevant - one of the reasons you pay the attorney is to do a proper search. Even if what you propose to do would be clear-cut patent infringement, they might be able to walk you through a license negotiation if it's worth your trouble.

This is not legal advice, consult a qualified attorney.
posted by rkent at 3:13 PM on February 20, 2007

By the reasoning above, most automobile aftermarket stuff would be patent infringement.

I think you have less to worry about from patent infringement than from DMCA. Reverse engineering isn't as safe as it was when I started doing it!

While it's seldom a bad idea to consult an attorney, I have some practical advice from actually having done the above.

I also loves me some reverse engineering... True dat.

Have you contacted the company to determine their interests in their obsolete equipment? If not, why not? If they have an obsolete item in the field that can be maintained, it may be an interference with their replacement business to have it working, so I could understand if if they were opposed. But you'll never know unless you ask someone in a position to give you a good answer. Get on the phone and chat with their legal department. Be up front.

Are you talking millions of dollars here? I doubt they will stomp on you for a few thousand a year.

Would you be willing to pay them some sort of license fee for each one you did to allow them to participate at no cost to themselves?

There are a number of ways to get things done. Don't automatically assume that business is all about cutting throats, subterfuge and lawyers. In its best manifestation, it's about win win.

If you want, write me specifics (email in profile) and I'd be happy to continue the discussion without you having to excessively air the details.

FYI... lovable old Tektronix, scope and logic analyzer makers to the gods, freely allow copying of their obsolete manuals, and do not interfere in the very sizeable community of hackers and engineers (like me!) who keep all that old, gold plated, stunningly engineered, beautiful hardware alive and humming away. I will never buy an Agilent scope for that reason alone. They very, very much encourge brand loyalty with their sane approach. I wind up buying $20,000/year worth of their goodies... sometimes a lot more.

Again, the motivations of business folks is complex. The art of the deal is to divine them and speak to them. Don't start out assuming they are your committed adversary.
posted by FauxScot at 4:16 PM on February 20, 2007

Get a lawyer first. Your lawyer may give you FauxScot's advice, but until then make sure you are on the right ground.
posted by Ironmouth at 4:32 PM on February 20, 2007

It would be a whole lot easier if the company just gave you the schematics and technical details. I would contact them. They would probably be happy to have someone out there who can service these so that their customers are not so pissed off. It probably just doesn't make financial sense for them to continue. If they are a big company their cost structure works against them in matters such as this. If there are patent issues they might still willingly give you a license. However, it is permissible to repair, but not reconstruct, a patented device. The difference between repair and reconstruction has been the subject of numerous lawsuits so you would really need a patent attorney to give you advice if indeed there is a patent. The easiest way to find out if there is one is to ask the company. If there isn't you are saving significant attorney fees. The only downside of working through the company is that if it is indeed something they don't want you to do it puts a spotlight on your activity. If it were significant though, they will find out anyway. I say contact them rather than just go it alone. I would still talk to an attorney eventually as they may ask you to sign a confidentiality agreement or some other contract if they do agree to some technology transfer. I don't know how hooked up dios is into the patent attorney community in Dallas, but I am sure he give you recommendations for general practice types for the simple stuff of technology transfer and confidentiality agreements (patent attorneys specialize in this as well). If you get into a licensing situation make sure you work with someone who has specific experience there. Not all patent attorneys are competent in that area.
posted by caddis at 5:07 PM on February 20, 2007 [1 favorite]

[moved more to inside]
posted by jessamyn (staff) at 6:52 PM on February 20, 2007

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