What kinds of protection are possible for your design?

There are four basic forms of intellectual property protection you can obtain for a new design – a patent, a trademark, an industrial design registration, and a copyright. The type of intellectual property protection will depend on the type of design. Last month, we looked at industrial design registrations, and learned that these protect the shape, configuration, pattern or ornamentation of an article. This month, we look at patents.

Patents protect new inventions or processes that offer innovative and useful functions. This includes new ways of making things, new processes in general, new machines, and any new thing, or improvement on a thing. Unlike industrial designs, which protect the esthetics of an item, a patent protects the utility of the item. To get a patent, you have to describe the new thing you’ve invented, and you have to define exactly what it is you’ve invented and are claiming ownership of.

Some examples of “design-like” things that can often be protected by patent include:
• a new, more easy to use can opener
• a machine that sews buttons faster
• A better flushing toilet
• a different shape for a wedding band that makes it more comfortable

You’d be right if you noticed that some of these examples appear to overlap with the industrial design protection we were discussing last month. For example, the esthetic shape of the wedding band would be protectable under industrial design. But the fact that the shape has a function or utility means that aspects of the design may also be patentable.

Confusingly and counter intuitively, a patent does not give you the right to make, use or sell your invention. Instead, it gives you the right to exclude others from making, using or selling your invention. Due to overlapping rights, even if you have a patent for your new “thing”, you may not have the right to make or sell it, because someone else has a different patent that would exclude you. A hypothetical example of this is the armchair. In a world without chairs, someone invents a chair. They obtain a patent for an object a person can sit on, having four legs, a seat, and a back. A second person decides to put arms on it, inventing the “arm chair”. They obtain a patent for an object a person can sit on, having four legs, a seat, a back, and two arms. The second person can obtain a patent, since what they have is new, not obvious, and useful. But they can’t actually make the armchair without infringing the first person’s rights – since any arm chair they make would have four legs, a seat and a back. Amazingly, the first person can’t make an arm chair either – though they invented the chair, making an armchair would infringe the second person’s rights.

If you’ve been in business for a while, you’ve probably dealt with patents. Your competitors likely have patents. You’ve thought about getting protection for a neat gizmo you’ve invented. What you may not realize is the incredible cost of obtaining, and enforcing, a patent right. Just filing a patent is typically a five figure process. And protection is country-by-country: depending on the number of countries you want protection in, the cost of getting a single patent issued in your key markets is often in the six figures. Unlike an industrial design application, getting the patent drafted can take many weeks, and involve a fair amount of work on your part – you can’t always push all of the work to your lawyer or patent agent. And going through the process is a long term commitment – it can take upwards of 5 years to get your patent issued.

And once it’s issued, you need to enforce it. Enforcement in the courts often adds yet another order of magnitude to your costs.

Of course, people obtain, and enforce, patents all the time. Sometimes, they can be useful currency to trade with your competitors or business associates. Instead of the “stick” of litigation, they can be used as a carrot in licensing negotiations, or to create partnerships where you normally wouldn’t get the time of day. They sometimes “add credibility” if you are a small technology company looking for financing. And they can often bring in substantial revenues.

A nice business guideline to use is that, unless you have a very specific strategic reason for obtaining a certain patent, it should only be done for your “million dollar ideas”. Short of that, and you have to look a little harder as to whether it is worth going through the process.

Next month, we’ll be taking a break from our “what kinds of intellectual property can I obtain” to look at cease and desist letters: How do identify one, and what to do when you get one.

This is the third article in a series that discusses real-world intellectual property issues for non-patent professionals. (Click here for previous article)

Charles Boulakia, M.Sc., MBA/LLP., is a patent attorney with the Toronto-based IP firm Ridout & Maybee LLP (cboulakia@ridoutmaybee.com).
www.ridoutmaybee.com