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Designer copyright & patent


#1

This really bothers me. How can someone get a patent and copyright
on gemstone settings. From what I can tell, much of this even looks
like the same drawings used in many books on gemsetting.

So while everyone is worried about design copyright and patent, we
apparently are all violating the law everytime we set a stone.

Inventors: Udko; Richard W. (Beverly Hills, CA)
Assignee: Unigem International (Beverly Hills, CA)
Appl. No.: 934266
Filed: August 25, 1992
United States Patent    5,218,839
http://patft.uspto.gov/

#2
Inventors: Udko; Richard W. (Beverly Hills, CA) United States
Patent    5,218,839 

First, I have no clue what “designer copyright” means since that
terminology has (near as I can tell) absolutely no basis in law.
Second, no Richard Udko has any copyrights registered with the U.S.
Library of Congress Copyright Office (no international search was
done however and copyright enjoys wide reciprocal agreements among
nations). Third, copyright can only be used to protect "expressions"
and not functionality (I find no evidence that Richard W. Udko is
even making jewelry with copyright notices associated therewith, he
may be an attorney, someone with that name made the Dean’s List at
UCLA Law School, and, if so, would likely agree with all of the
above).

As for the patent, the DRAWINGS do NOT govern what is covered by the
patent, only the claims spell out (with some definitional basis in
the rest of the specification and the drawings) what is covered. For
someone to infringe a patent they must meet ALL elements of at least
1 claim in that patent. Also, if prior art exists that meets ALL
elements of a claim then that claim is invalid.

The following is Richard’s main claim with defined (in the
specification) part numbers [in brackets] added by me and a couple of
notations (parenthetical or {braced} numbers with explanations below
the claim):

I claim:

  1. A jewelry setting for holding a decorative element (1)
    comprising:

(a) a gemstone [10] having a crown member [11] with a table surface
[13] and crown facets [15, 16, 17] and a pavilion member [14]; and

(b) an annular collar [20] (2) having an outer engagement surface
[29], an upper reflecting surface [24,25] and a [22start] central
bore disposed therethrough [22end] along the longitudinal axis [23]
of said collar, said upper reflecting surface comprising outer [24]
and inner [25] concentric surfaces [26start] intersecting along a
common edge [26end], said outer concentric surface having an
[28start] outer edge integral with said outer engagement
surface[28end], said {3start} gemstone being secured within said
central bore {3end}, said {4start} upper reflecting surface being
uniformly disposed adjacent a portion of said crown member {4end] and
being {5start} coextensive with the table surface of said gemstone
{5end}.

(1), {3} The language of the preamble directs to the “jewelry
setting” only but it does NOT govern since the “comprising” term
means that both (a), the gemstone, and (b), the setting, must be
present. NOTE: this is a common legal subterfuge that artificially
creates “structure” beyond the invention itself so that the
"structure" (of the full claim) is patentable----it’s a subterfuge
because the “contributory infringement” aspects of the law mean that
simply making and selling the (in this case) "annular collar"
without a gemstone but for obvious intent for others to add the
gemstone would be considered to be infringement.

(2) this ring shaped collar is really what is being claimed, the
rest of the (b) section spells out all the elements required to be a
patent protected “annular collar.” My [] and {} enclosed numbers
identify what I see as the elements which must be present (IANAL and
cannot give you “legal” advice on what constitutes elements, only a
lawyer can give you a “legal” guess and only a judge can actually
determine what the actual elements of a claim are).

{4} It’s not clear to me why this element is in here and it’s
terminology is self contradictory “uniformly disposed” and “a
portion.” (Lots of room for legal wrangling, and big fees:-), if your
reflecting surface is NOT “uniform,” how big, or small, "a portion"
gets you on, or off [or vice versa?] the hook?)

{5} The reflecting surface and the gemstone MUST stick out
(“coextensive,” it’s in your big dictionary) about the same (of
course “about” could occasion plenty of lawyer wrangling too:-).

I’m not a jewelry expert but I’d guess that 1) even your “annular
collar” tube settings will extremely rarely, if ever, come close to
meeting the [24,25,26] reflecting surface elements or the {5}
“coextensive” element let alone both simultaneously (unless you’re
already buying them via a Richard licensed maker?) and 2) if, for any
"annular collar" setting you do
that-MIGHT-meet-ALL-elements-of-this-claim, you can find a nearly
identical (in terms of the comparative range [measurement/style/etc?]
of all elements) that predates August 25, 1992 (Richard’s filing
date) you clearly will NOT be infringing Richard’s patent----and, in
fact, if a judge and/or jury would say it does meet the all elements
test your prior art item would invalidate Richard’s claim 1 and
perhaps some or all of it’s dependant claims. (Each dependant claim,
2-6, would have to have it’s additional element(s) checked against
your jewelry’s “annular collar” individually. Also claim 7, the other
independent claim, and it’s dependant claims would have to be
analyzed too.)

For example see figure 2B of patent 5,044,177 which is referenced as
prior art by Richard’s patent. If your settings match that then you
clearly cannot be infringing Richard’s
patentoops, but you could be infringing
Henri’s, so you’d have to analyze your setting against his claims and
analyze prior art to see if his patent is valid and…isn’t this
getting to be a lot of fun?

If you can find a book published prior to 1992 that shows any
"annular collar" drawing that meet’s Richards claims element for
element then his patent is clearly invalid.

In short, I doubt you have much to fear primarily because I doubt
you make or use “annular collars” that match ALL his claim elements.
(I also doubt you’ve been “copying” his “expression” if indeed there
is any protectable expression there to copy and if he is even
inclined to claim or enforce any copyright.) Consult with an attorney
also licensed to practice before the USPTO if you have any doubts.

Besides, I doubt that I would be faked into believing a tiny
gemstone was 250% bigger just because a reflective collar was around
it and, FYI, I buy what I feel is “pretty” at a “fair” price for my
wife—so far that’s ranged from $8 to $600 with somewhere toward the
lower end being most common.

James E. White
Inventor, Marketer, and Author of “Will It Sell?
How to Determine If Your Invention Is Profitably Marketable
(Before Wasting Money on a Patent)” www.willitsell.com
Also: www.booksforinventors.com and www.idearights.com