Design Convergence and Design Patents

The other night, I read my son his favorite Train Book. This book contains a global panoply of  Train designs ranging from the old school "Tank" engine of Thomas to the ultra-sleek trolley trains of modern Germany. *See left.

Unfortunately for my 2 year old son, the modern trains have a more than a passing resemblance to buses.  My son insisted that the vehicle to the left was a "bus" and not a "train."

I was crushed, I had failed in my helicopter parenting. I failed to teach my son about the sordid world of design convergence.  He looked at me with puzzled eyes as I explained that, as the life cycle of a product category grows, the lion's share of new development efforts are directed to squeezing  maximum utility from the product.

In this case, buses and trains, no mater their underlying mechanisms of action, are both means of conveying people form location A to location B as quickly as possible (assuming you're not talking about the Manhattan X-Town).  Because they are mature technologies directed toward the same goals, designers will achieve  convergent design. This is true even when taking into account the unique technological platforms.

 The bus to the left is slightly higher due to engine and drive train. The trolley is longer and has less ground clearance.  However, overall, the design of the bus and the train are pretty similar. The windows on the side, the larger driver windshield,  the double doors, all of them speak to an optimization of certain design element that we look for in public transit.

Now, what does this have to do with intellectual property?

When an inventor or designer is contemplating obtaining protection for a concept, it is essential to understand the underlying function. However, it is also important to look to optimal form for achieving that function.

 In our bus/train example, if a designer had a design for a new bus, a Design Patent that covered some of the elements relating to usability, would run afoul of "no functional elements" prohibition of design patents.

 However, if you simply drafted utility claims directed to big windshields and double doors  you are unlikely to get very far with the patent office. The solution then is to break your concept down into two parts, the function of the device, and how the user interacts with it. Double doors become passenger clearance enhancers, not simply design elements.

Most inventors are quick to seek protection on the function of the device. A far smaller number actually obtain protection on commercially viable product form factors. One company that has aggressively exploited this gap is Apple. Since the internal components of Iphones are generally known technology, Apple relies heavily on Design Patents to protect the unique look of its products. The function of a Samsung phone and an Apple phone are technically identical. However, the appearance are worlds apart.

In order for an inventor to cover both avenues, it is essential to have a working knowledge of how users will interact with the technology and what forces will drive convergence.  Inventors have done themselves a great disservice by not pushing some quantitative analysis of user interface designs, as they relate to their specific technology. Once they find the optimal design, they could file for a Design patent along with their utility applications.

By the time I finished explaining all this, my son had decided it was just easier to go to sleep, hopefully dreaming of converged automotive design.

By: Jordan Garner
Contact me at: jgarner@leasonellis.com

Changes in Patent Law and Kickstarter

I love Kickstarter as much as the next person. Friends and colleagues have used the crowd-sourcing platforms, and ones like it, it generate interest in various projects that were too nebulous or personal to fund directly.

However, there are some serious issues that any designer, inventor, or artist, should consider when using the platform.

But first, lets discuss some changes in the U.S. Patent law. (Something I have lectured about in Shenzhen for 2 years running).

On March 16, 2013, the U.S. moves to a "First Inventor to File" system. This is the creamy middle between the rest of the world's "First to File" system, and the old U.S. system of "First to Invent." The reasons for this change are detailed and boring, and largely have to do with large companies wanting to harmonize their patent dockets across global jurisdictions.

Fascinating you say! Well, you don't, unless you are a patent geek.  However, if you are a producer of "kickstarter-able" (an adjective denoting awesome concept stage project) items, this should interest you.

Why? Because, if you place your custom designed fixe bike lock on Kickstarter, and you have not filed for a patent (even a design patent), you are in trouble. There are two mistakes that you made by going to Kickstarter before going to the patent office.

Mistake 1 - by publishing on the Internet, you have FOREVER given up your right to get a patent in "absolute novelty" countries. So, your sweet bike lock concept? You can never get protection on that in Amsterdam because the EU is a "absolute novelty" system. You have to, if you want protection in Europe, (and investors and business partners love to see IP before they give Euros) you need to file for protection before disclosing the idea, even for designs.

Mistake 2 - By not filing an application, even a provisional application with just some drawings and the $75.00 fee to the USPTO, you have set yourself up to be beaten to the patent office.  Say, for example, that after you go live with your Kickstarter page, a unscrupulous individual in  "Asia" decides that your idea is pretty sweet. So he(or she, 'Pirate' is an equal opportunity profession) files a patent in the US based on your concept.

 In the old days, when you filed a patent, there would be something called an "interference" which would determine who of the pair of you was the first to invent. Since we have gotten rid of that system, the new procedure is called a derivation procedure. We have no idea how time and money intensive this procedure is, since it is brand new. Either way, you are going into the Patent Office and spending time and money you probably would have preferred to keep. All the while, this individual is flooding the market, and her bank account, with your concept.

So the two bits of advice I give to clients who want to go the crowd funding route is: 1 File SOMETHING at the patent office before you go live, and 2, after you have filed something place "patent pending" somewhere on your page.

I hope this help. As always, you got a question, you drop me a line.