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Patent Basics for Design Engineers

DN Staff

September 29, 2010

6 Min Read
Patent Basics for Design Engineers

There are three types of patents-plant patents,design patents and utility patents. Unless you dabble in genetically engineeredfruits or vegetables, you don't need to be concerned with plant patents. However,you should be knowledgeable of design patents and utility patents.

As the name implies, design patents cover not thetechnology behind a product, but the actual design--its exterior appearance andwhat makes it look different from another product that may do the same orsimilar things. The purpose of a design patent is to protect a product that hasa unique look. It is not uncommon for manufacturers to periodically give aproduct a facelift of sorts to improve sales. There might be no significantchange to what the tool, device, machine or other item does, but improving itsappearance can give sales a lift, and it might make sense to patent the newdesign.

Utility patents constitute more than 90 percent ofall patents issued. A utility patentcovers the technology behind a product or service. If the invention is "novel"(i.e., it is new and not a product or service that is already beingmanufactured or offered for sale) and it is "non-obvious" (i.e., it is notsomething that someone could easily figure out on his own), it may qualify fora patent. Any truly new technology should be patented to protect thispotentially valuable intellectual asset.

Trademarks,Brands and Logos
Both patents and trademarks are issued by the U.S.Patent and Trademark Office (an agency of the Department of Commerce), but theyare very different. If a product's design includes the use of a brand nameand/or the company's logo, it would not normally qualify for a design patentunless there were other unique aspects of its design. However, the company logoshould definitely be trademarked and, if the manufacturer or designer of aproduct has a unique brand or name for the product (Sears' DieHard battery and Apple'siPod are two good examples), the brand or product name should also betrademarked. Unlike a design patent that only refers to the exterior appearanceof a product, a trademark covers use of the logo, brand or product name.

If you're wondering whether or not you should filefor a design patent, a utility patent, or a trademark, the answer is clearly"Yes!" Each new product you develop, and each improvement or updating of aproduct, needs to be considered on a case-by-case basis for each of these formsof intellectual property protection. While a product that uses a new technology(and really is an invention) should probably be patented, another product thatis simply an update to a previous technology might not be applicable for patent.The DieHard battery was not a new technology or even an improvement to aprevious technology, so it was not the subject of any patent applications.However, the DieHard trademark very effectively created a distinct brand andimage for Sears' high-end batteries, and the trademark has since been extendedto cover other products. While iPod was trademarked by Apple, the device isalso covered by a slew of patents.

Filing for a Patent
Any company seeking to patent an invention shouldseek the services of a patent practitioner--a patent agent or patent attorney. Theseare professionals in what is known as "patent prosecution," which is theprocess of applying for and ultimately receiving a U.S. Patent. Both arelicensed by the U.S. Patent and Trademark Office to assist patent applicants. Eachpatent agent and patent attorney specializes in specific scientific areas suchas electrical engineering, chemistry or physics.

It currently takes about three years to receive apatent, so the sooner you file your application, the sooner you will receiveyour patent. You can file what is called a "provisional" application thatessentially establishes a point in time at which your invention entered thepatent application process, and doing so could give you an advantage should acompetitor file for an identical or very similar patent at a later date.Consult with your patent agent or patent attorney as to whether or not this isthe right strategy for you.

There is an alternative to filing for a patent foran invention, and that is to keep it a trade secret. If your invention caneasily be reverse-engineered--that is, a competitor can pretty easily figure outhow you did what you did by just buying your device or getting a schematic ofit off your Website--you definitely want to patent it. If, however, you believeit would be very unlikely that a competitor could reverse-engineer yourinvention, and it is equally unlikely that someone would independently inventyour invention on his or her own, you can keep your invention a "trade secret,"and you are not required to divulge your invention and its intricacies. This iswhat Coca-Cola chose to do with the formula to its popular drink. Despite manyefforts, no one has been able to re-invent the formula, so this turned out tobe a wise decision by Dr. John Pembert, the Atlanta pharmacist who invented Coca-Cola,founded the company and died very rich. Had Pembert filed a patent on theformula, it would have expired around 1907 or 1908.

Once a patent has been issued, if a competitorbrings to market a product that infringes on your patented invention, you haveseveral courses of action. You can sue the infringer for damages, and thatincludes what the infringer would have had to pay you in royalties to licensethe patent. In some instances, you may be able to recover lost profits on theproducts the infringer sold, if you can prove that you lost sales due to the infringermaking those sales. In some cases, you may even be entitled to what is called"injunctive relief." The court may order the infringer to cease sales of theinfringing product. So, for making public your invention you receive in returna patent that provides a level of protection for your intellectual property. Itis important to understand that patent infringement is still infringementwhether it is willful or unintentional. It is entirely possible that acompetitor could independently--and very innocently--re-invent what you invented.But since you have a patent, your invention is protected and the competitor'sis not.

RelatedPatent Issues
Every industrialized nation has its own patentsystem, and the European Union has a patent system that covers all the E.U. membercountries. A U.S. Patent only protects you in the U.S. A company in Germany, forexample, could produce an infringing product, sell it all over Europe, Asia,Africa and South America, even Mexico and Canada, and you would have norecourse until the company started selling the product in the U.S. And in thatcase, you could only sue for damages for U.S. sales of the product. If youare likely to sell the products that use your new technology in other nations,and especially if you have competitors in those nations, you should also filefor patents in those countries.

Since patents are not permanent, the process of "reexamination"can take place. This is a reconsideration of a patent by the Patent Office, andit most often occurs when an alleged infringer demands that the patent bereexamined in the hope that it will be invalidated, putting an end to thepatent infringement litigation since there is no longer a patent to enforce. Apatent can be invalidated by finding prior art (documentation that proves, orat least suggests, that the invention for which the patent was issued actuallyexisted previous to the patent application). Not all prior art is invalidating, and during reexamination it is thepatent owner's job to prove that the prior art does not invalidate thepatent.

KathleneIngham is director of licensing at General Patent Corporation.

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