IP from a Design Perspective

September 6, 2012

As designers, we are always looking to expand our knowledge on what is going on in and around the design industry. Last week, we hosted an event at our studio called “IP from a Design Perspective”. We invited IP attorneys from some of the top firms in Chicago to join us for an evening of discussion around design and utility patents, trademarks, copyrights, and trade dresses.

The goal for the event was to demonstrate how our development team creates IP as part of our design process, and, more importantly, learn more about IP from the attorneys who protect the work being created. Lawyers from a number of firms were represented, including Brinks, Hofer, Gilson & Lane, McAndrews, Held, & Malloy, Foley & Lardner, Klintworth & Rozenblat IP LLC, Faier & Faier, Beem Patent Law, and Saper Law.

A big part of the reason for requiring patent lawyers to have an engineering or technical background is to put a lawyer and an inventor/client on the same page from the beginning of the patent drafting process. In this process, the client/inventor is typically the one who has a deep understanding of the product (how it works, how it was designed, what’s unique about it, etc.) while the patent lawyer shares their knowledge of patent law and all of the legal constraints involved.

A few of the attorneys said that, with design consultancies, even though the client is typically the one to file the patent it would be beneficial for designers working with these clients to be involved in the process early on as well. After all, the designers are really the ones who understand the details of the product, the meaning of it, why the unique features were added, and how they are used. The most significant thing when filing a design patent is to recognize the features that are important and how these meet the standards of a design patent, which must be both non-obviousness and novelty. There aren’t too many clear standards for determining when a design is obvious and when it’s not, which means that individual patent lawyers have a lot of freedom in making these decisions.

The attorneys had some great insight into what we need to know about IP and some thought-provoking questions were asked. How can you differentiate between inspiration and imitation? Just how much inspiration can a company take from another before it is patent and trade dress infringement? What should designers know about IP going forward?

As designers, there has always been an issue as to what is original, copying, and inspiration. We constantly learn from other designs and often discover how it could be better and build on that idea. As shown in the image above, there is a very fine line between inspiration and imitation. It is difficult to define in legal terms, but it is often easy to recognize when you see it. In this case, is it only the grill that looks similar? Or is it the combination of the grill and headlights? Or is it something else entirely? These questions are all considered, and, as mentioned earlier, cultural bias often play a larger role in determining the difference rather than a legal definition.

How does inspiration vs. imitation play into the design field and what we create? After some conversation, we learned that if you are designing a non-competing product that falls under a different industry, it is acceptable to “copy” some of the ideas from other industries. For instance, when designing exercise equipment we could use a similar interface as the iPhone without facing legal penalties. However, it is up to you to decide how far you want to go. In the case of Apple v. Samsung, Samsung took a calculated risk in copying the look and functionality of the iPhone, and, since they both fall in the same industry, Apple was able to sue them – and win. An important question to always ask is, “Would the ordinary observer be deceived into thinking the accused product is the patented product?”

Imitation or Inspiration?

Of course, Apple v. Samsung was a hot topic for the evening. Thanks to this case, industrial design and the importance of IP have gained a lot of attention in recent months. While some may worry about an increased need to check what design patents are already out there before creating a new design, one attorney noted that we shouldn’t be too focused on that issue. “If it truly is an innovation, there won’t be a design patent even close to it.”

There is definitely a risk in filing for a design patent when you really have no idea how successful a design is going to be. However, as seen in the case of Apple v. Samsung, the risk might be worth taking in the long run in order to avoid imitations from competitors. As mentioned at the event, while Samsung had hundreds of patents on their designs, they weren’t as well thought-out and descriptive as Apple’s patents. It can really depend on the lawyer filing the patent and exactly how much detail is explained.

Design patents are defined by figures (Shown: the design patent for the Aero Pakmat®)

There is much to learn about the world of design law and how it, in turn, affects the world of design. With the increased attention to design patents as a real form of protection, it’s critical for designers to devote a little extra time and effort into understanding how these patents can benefit them and the field of industrial design.

You can read more about design patents in a great series of articles from Michael Hages (an IP attorney in New Jersey), which can be found on Core77. In this four-part series, Hages concludes by saying that “designs are assets and investments to be protected.” It will be interesting to see what happens in the field of design as it relates to IP in coming years.

Special thanks to all those who attended the event – it was a really great evening!

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