Legal Question in Intellectual Property in South Carolina

I have a patented design that I paid a machining group to help me further develop (after my patent application was submitted). After a year of R&D costs totaling more than $7000 (costs designated for R&D and separate from subsequent production costs) and more than a year of production time since, I have found that I need to explore other less expensive manufacturing options. I have asked for digital copies of my product design's CAD files in order to explore other manufacturing process options, but the manufacturer has so far not been willing to provide them to me. There is no written contract between myself and the manufacturer. I paid the agreed upon product development costs and am entitled to copies of those files, am I not?


Asked on 8/21/15, 5:51 pm

1 Answer from Attorneys

John Mitchell Interaction Law

Because you mention that you paid $$ and the designer did work, I'm assuming that you had some sort of agreement even if there was no "written contract." But for purposes of the Copyright Act, and the question of who owns the copyright in the design, the "work made for hire" definition (17 U.S.C. � 101) requires that, if it was not your employee, the work of authorship must have been "specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire." But since this pertains to a patent, I suspect that the designer has little use for the design, other than to try to extract payment from you.

So I suggest that you collect all documentation of your dealings with the designer (e-mail communications, receipts, notes describing what a payment was for) and consult with a local attorney to see what legal theories might be most useful in obtaining the best outcome.

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Answered on 8/26/15, 8:57 am


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