Issue link: http://read.dmtmag.com/i/430655
I DA U N I V E R S A L N ove m b e r - D e ce m b e r 2 0 1 4 11 LEGAL LINE Robert W. McIntyre IDA Association Legal Counsel Continued on page 76 G randfather's Ax is a story from American folklore…" e head was replaced three times and the handle fi ve, but it is still Grandfather's Ax." Much the same could be said about reman- ufacturing or rebuilding compo- nents and parts that were initially OEM or OEM Tier supplier products. Where does the old end and the new begin? is subject has been discussed at length, and a er reading the excellent recent article about fuel injection remanufacturing in the Universal, revisiting this topic again seemed appropriate. First, as a caution, this article will NOT be about electronics, ECUs or general control so ware issues – an ongoing situation that I expect to cover in depth in 2015. Today, the focus will be on the "hard parts" and how the OEM or Tier supplier intellectual property protections in force may aff ect the ability to remanu- facture or rebuild the "cores" that are the basic building blocks for every rebuilding or remanufacturing process. e key issue faced by every remanu- facturing process is how far the process can be taken without running into patent or copyright problems that can completely scuttle a product launch. e problem lies in the fact that a rebuilder may not know the "fence line" between its planned processes and replace- ment parts and the intellectual property built into the product that will be remanufactured. is information is available in public databases, but is hard to dig out and will require, in some cases, interpretation by a patent advisor, as the devil is in the details. First, however, to put this all in context, here are some examples: e fi rst example is fuel injec- tion related. In this situation, not only were "cores" to be remanu- factured, but also all new OEM equivalent replacements were to be made and sold. Despite an investigation that cleared the machined parts of the unit injectors, a somewhat obscure Tier 1 supplier to the OEM had patented a literally invisible part of the control coil for the injector bleed system. e actual product was not marked with any patent number, the patent itself was very obscure, and it was only used on some of the Tier 1 products. e upshot was a very long and costly patent fi ght that sank the product launch for some time, until a design- around was undertaken and the mess cleaned up in the court. A second example was a turbocharger that was reasonably well identifi ed as having patented components and systems. e problem arose when the exact boundaries of the patent had to be drawn, and, to be on the safe side, several key wear items in the turbo control system could not be safely duplicated to be used in an overall remanufacturing process. is doomed the project, but saved the company from a larger problem that would have occurred had the project gone to market. e next example involves an electronically controlled injector that requires a form of "boot up" to recognize the engine and system that will use it a er remanufacturing. Basically, the injector is "dumb," and its embedded electronic unit must be programmed to understand for which engine, power setting and application it will be used. e OEM provides this information in its products by way of a DVD that is used to upload the relevant data to the injector. e concern is not, in this case, any patents on the "hard parts" that are remanu- factured or replaced, but whether the OEM so ware provided with the OEM replacement part is copyrighted and unable to be copied and re-used. e last example involves a head gasket which, at the time it was fi rst used by the OEM in engines, was actually quite unique. Not only was the overall design and use of material a truly new concept, but several features of the gasket not related to materials were engine specifi c. is posed a two part problem: 1) Are the materials and assembly process protected? 2) If not, is the overall design protected in some manner? e investiga- tion of this situation revealed that the only patents were for the "machinery and method" for manufacturing the gasket itself Grandfather's Ax