*The views expressed herein are solely those of the author and do not necessarily represent the view of his firm or its clients.
Our articles so far have laid the foundation to repair the broken image of design patents. While this can help you argue for the resources to seek design patent protection, we also need to learn what to do to make sure that the design patents you seek end up meeting the expectations that you set for them.
A big part of the reason for requiring patent lawyers to have a science or technical background is to put a lawyer and inventor-client on the same page from the beginning of the patent drafting process. As illustrated in the graphic below, the knowledge involved in putting together a patent application has three components. First, someone needs to have deep knowledge of the product itself including how it works, how it was designed and what's unique about it. Clear on the other side of things, there needs to be deep knowledge of patent law, including all of the patent office rules, the legal limits of what you can claim and how and all of the various legal traps that one can fall into when writing a patent application.
Somewhere in the middle, though, there's a section of knowledge that requires viewing the product itself from a legal perspective. This involves all of the considerations discussed in the other parts of this article, including what to claim as individual inventions, what is the broadest coverage that you should seek and what backup positions should be included. On top of that, it also involves how to describe a product within the context of all the legal rules and requirements to achieve the type of coverage desired.
When a lawyer's technical background aligns with the area of the product being patented, the lawyer can handle the bulk of the middle section, as illustrated in the graphic below. The lawyer can generally describe the requirements for a patent including the theories of novelty and obviousness to help the client understand what the lawyer is doing. These bits of patent law knowledge can also help the client make decisions that balance potential coverage with real-world considerations such as cost and timing.
On the other hand, when dealing with design patents, there will likely be much less of a knowledge overlap between designer and lawyer. As illustrated below, there are many instances where there is no overlap at all or even a substantial gap in knowledge that really prevents the lawyer and designer from getting on the same page and developing a good working relationship. This, in turn, can prevent the lawyer from knowing what really needs protection within an overall scheme and can also prevent the designer from fully appreciating that something could be done.
All of this can really make it seem like an uphill battle for designers seeking a comfortable level of design protection. Do they first have to educate a lawyer on the finer points of design to close the knowledge gap? Do they, instead, have to first learn all there is to know about patents and patent strategy before discussing things with a lawyer? In a perfect world, yes, both sides could do a little extra work to close this gap, but as a more practical solution, I've developed a short list of questions that designers can ask themselves as a beginning to the design patent process. These questions are aimed to help designers start to bend their thinking toward the patent side of things. They can help designers put things in terms that a lawyer can use and understand.
What individual features of your design would you be upset to find in another product?
What about those features is unique or how are they used in a unique way in the context of your overall design?
What are the considerations that lead to the ultimate design of those features? Do the features serve a purpose (such as causing eye movement or establishing dominance) or are they somehow related to other features of the overall design?
What would a copyist likely change about the design to try and avoid a basic design patent while making a knock-off the design?
Continuing to keep these questions in mind throughout the application process can help designers ensure that they're moving in the right direction toward getting meaningful and valuable design patents. The first two questions will help to determine the features that are to be the focus of the design protection strategy by isolating the features that are both important and are likely to meet the requirements of novelty and nonobviousness. The third question can give insight into how to set up the drawings to put the claimed design in the proper context. This thinking can help ensure that the inventive portions of the design are communicated well enough for others, like a patent office examiner or a would-be copier, to understand.
With the fourth question, we're taking a slightly different angle. By thinking about how someone else would try to change "just enough" of your design to try and avoid infringement, you can get some insight into the less important features that can be left unclaimed in portions of an overall strategy. It's not always easy, however, to simply exclude features entirely, especially if those same features pop up in your answers to the third question. In those circumstances, it can be worthwhile to consider essentially designing your own knock-offs and then filing on those designs.
In many instances, the design development process will have already given you some close, but not quite right, alternatives in the form of earlier iterations of the final design or other design directions that you explored. Unlike trademarks, there is no requirement that a design be applied to a product that is actually sold. Accordingly, filing design applications on reasonable alternatives can be a good way to give a little competitive distance. A similar strategy is often implemented in drafting utility application claims, but people don't often think this way on the design side.
Of course, not every project includes an IP budget that can cover the extensive strategies that can arise from thinking in the context of these questions. Even still, these questions can make sure that trimming coverage to reduce cost won't eliminate coverage of the most important things. As I mentioned above, there are also ways to defer some costs and filing decisions until a later date by piggy-backing broader design claims off of an initial application. That initial application has to include all the information needed for any subsequent applications so it's important to be in the right frame of mind, regardless of how comprehensive your budget at that time allows.
It can be difficult to anticipate how successful a design is going to be and how much protection you'll actually need, and no one wants to end up a few thousand extra dollars in the hole for design patents covering an unsuccessful design. While that is certainly a risk, it can be even worse to skimp on coverage or to ignore it altogether at an early stage and then end up with a successful design with a lot of imitations from competitors and little to no recourse. Designers, corporate counsel and patent attorneys have been unwittingly doing this for years and the result has been disastrous for individual design patents and the overall reputation of the design patent system.
Throughout this series, we've been leading off with images from old, expired design patents covering some of the most significant products of industrial design in the last century. The illustrations depict brilliant, significant works in the field of design. The patents themselves, however, represent a far too narrow approach to protecting designs. These designers and their lawyers get a pass because the entire patent system was notably different back when these patents, even the one for the original Mac, were filed. The modern approach to design patent coverage, even before Apple v. Samsung, allows us to do much more with our design claims than what we see in these patents. Now, with the increased attention to design patents as a real form of protection it's critical to use the kind of strategy explained in these articles.
Valuable design patents are available, but designers need to be active in the process. Fortunately, this doesn't have to mean learning all the intricate Patent Office rules or reading court decisions involving design patents. Designers need to simply devote a little effort and take a few extra steps to make sure that their design patents reflect what makes a design worth implementing in the first place. In the short term, the effects of this can be seen in the small scale, giving the designers who follow these guidelines the kind of protection they would expect from the cost of patents. Of course, the cumulative effect of putting a significant number of good design patents into the system can only benefit the field of industrial design as a whole, strengthening the viewpoint that designs are assets and investments to be protected.