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