Design Patent

I am an Intern architect with growing interest in industrial design. I have been generating new designs for lighting fixtures, door hardware, furniture, etc but am unsure what steps to take next. Hypothetically lets say I designed the most amazing new light fixture. What steps should I take to get a company to manufacture and sell it. Is it very common for a designer to approach a company with an existing design idea? And would I have to patent that design before taking it to a company. I am also interested in what type of design fees are charged for product / furniture design. Any help or direction to relevant book would be greatly appreciated.

I could be wrong because I tend to ignore lawyers when they talk, but if an NDA (non-disclosure agreement) is in place, you do not need a pending patent to protect the idea. Patents are necessary before public disclosure. An NDA keeps the idea “secret” and it is not considered public disclosure.

At least, that’s what I think the lawyer told me.

As for information about royalty agreements, again, a lawyer would know.

Welome to Core!

A Non Disclosure Agreement has nothing to do with “patents”. They are between you and your client, or you and your employer, to prevent you from disclsoing potentially injurious information with third parties. So, if you are an intern working for an architect, the work you are doing is “his” so to speak and you are not free to use it “as your own”.

This is not to discourage you from posting any question, but the “how do I patent” subject has been discussed on CORE at length for some time. I’d suggest a search of the General Discussion, and Business Practices forums using the word “design patent” it would be faster.

This one turned up 420 matches: They are all not pertinent, but you can quickly scan through them by “title” and find a number to good discussions.

Correct. Publically disclosing an idea BEFORE a patent application is potentially injurious. You can no longer obtain a patent if the idea is in the public domain. If you talk with a company without an NDA, the idea can be considered in the public domain. With an NDA, the idea is shielded. NDAs are cheaper than patents.

You may be in a different country where this is true (and I don’t know where the OP is from), but in the US, you have one year from the date of the first public showing to file a patent. That said, a design patent (as opposed to a utility patent) is usually a waste of time and money.

With an NDA, the idea is shielded. NDAs are cheaper than patents.

I’m not an attorney, but I think I see where you are going with this. The idea is shielded (from ineligibility to be patented), but the “creator” of the idea is not protected from the party he is talking with from further developing the concept.

In reality, I don’t think too many “companies” are going to walk out on a limb and sign a NDA just to take a look at someone’s “idea”. If they approached with a patented product, probably more likely, but even then it would be a long shot.

To follow up on what Scott said, and just to clarify my position, I’m not much of an advocate of patents to begin with; especially “design” patents. Too expensive, and too easily defeated. A “utility” patent is another story altogether, but what the OP is referring to probably would not fall into that category.

My point is if you show a company the idea under an NDA, it is not considered a public showing. The 1 year clock does not start ticking at that point. If you show the idea without an NDA, it can be considered public. I have found the more time you have, the better the decision is with regards to getting a patent or not.

I would also agree a design patent is not worth much. Getting a trademark on a 3-D shape does have some bite. Apple got a trademark on the shape of the ipod. Shape of Things to Come - WSJ

I would like to add that a design patent is meaningless, totally different from a utility patent. It only covers “the ornamental nonfunctional design of an item”, all you have to do is submit the paperwork and show that your design is different from any other. Even little ol’ granma can get a design patent with napkin doodle.

As is mentioned design patents are 99% useless, and in this day and age easily disregarded by the slew of Chinese knockoffs.

Your best bet is to create a device that is so beautiful, so clever, and so well built that you don’t need any IP protection because it would simply be too expensive for anyone to copy and sell at a lower price to make enough profit to make it worth their while.

The other reality is almost no companies want your idea no matter how great you think it is.

It’s a tough gig bringing a product to life. It’s why usually it only happens within large corporations, or why people go bankrupt trying to productize their idea.

Check out Scott Wilson’s iPod watch for inspiration though - there are other options.

I see what you mean now, that’s a good point.

Design patents being seen as useless, do you think it is worth putting in your resume/portfolio that you have those? Would it show that one have worked on products with unique design that the client deemed worthy of protection, or would it just come across as being too self-important?

Yes, it would come across as being too self-important and so does talking about yourself on your webpage in the third person, another of my pet peeves. :unamused:

Not sure if this was a dig at me? My website? It would be self-important to make the conversation about me. I simply wanted to know whether a design patent is seen as any sort of merit at all in the industry, because as mentioned it doesn’t require much to get one granted. Either way, hopefully someone else will contribute, someone who has more self-respect than calling themselves “scrotum”.

Anything can be copied, manufactured with lower costs and sold cheaper. Its just a matter of increasing volumes, cutting corners where it counts and using 3rd world labour. Bigger companies generally have more options/resources to do that.

I`ve also heard about protecting an idea through widespread publicity. So that your new product is so widely known and associated with your name/brand/company that it is hard to copy and distribute it by someone else. Since design patents can so easily be crushed how about using that method?

No, no dig at you in particular, just giving my answer to your question. Like I mentioned in my earlier post, anyone can get a design patent.

As to my comment about people referring to themselves in the third person, I was suggesting that to be the ultimate act of sounding self-important, especially when it includes self-praise. :slight_smile:

I have actually been doing a lot of research on this recently.

If you are in the US, you have potentially 2 years to test your idea to see if it’s financially profitable.
From the first time your idea is “publicly disclosed”, you have 1 year to file for a patent. Before that first year ends, you should file for a Provisional Patent Application (PPA), which is about $110 in fees, more if you hire an attorney to write it for you. After the PPA is filed, you have another year to decide whether you want to file for a regular patent application (utility) which seems to vary from $3,000-7,000 probably depending on your patent attorney.

If you are looking to file your patents outside of the US, you cannot publicly disclose your concept before filing a PPA or regular patent and I believe you have one year to do so after filing.

Hope that helps!

EDIT: Provisial Patent Applications are only for utility patents. From what I’ve heard, most of the time design patents are a waste of time/money.

I hope the OP is still listening. Lots of info in the previous posts, but some misinformation and assumptions as well.

My name is on 155 patents (about a 2 to 1 split (Design vs. Utility)) as of last November and my company shops IP to manufacturers and marketers (buyers) so hopefully my information below might be of help.

Patents, whether design or utility are of great value…sometimes! Patents are meant to protect financially viable ideas but only if you have the wherewithal to defend your intellectual property. There are situations where investing in a patent isn’t worth the cost and effort, but the reverse can be true sometimes as well. Filing for a provisional is a great start but be careful of the claims you include - and how they’re written, for they will affect your ability to claim substantially different IP in the utility patent app down the road. Also of consideration is the target category where your IP might be of value - the way you file can affect your ability to file elsewhere (globally) down the road.

Also for the OP to consider is the value of presenting ideas. Sometimes an inventor can achieve more equity in collaboration (developing an idea WITH a targeted manufacturer) than in a pitch to license or sell the IP that could be the result of developing the idea.

I’ve seen it all - we recently picked up a 66 yr old nice guy of a client who has 22 patents (most of which are truly great ideas) and he’s nearly broke from 40 years of patenting and developing the ideas but not achieving a single commercialization deal. On the flip side, we helped a client spend $15k in investment and then reap $1.2 million in royalties over a 24 month period.

Some in previous posts mentioned design patents being a waste of time, whether due to rip-offs or competitors implementing changes of at least 10%. Those are valid arguments and I’ve seen examples of each…but, if you develop what you believe is a truly novel form, it might be wise to protect it.

In all the instances above, I recommend using an accomplished intellectual property attorney who utilizes a USPTO patent examining searcher to help you determine validity and patentability of your ideas while also helping you determine what to defensively claim (claim not only the obvious benefits of your idea, but defensively claim what others might invent to circumvent your IP). Commercial viability is a separate issue and an attorney can’t help you there. My company and others like us can.

Lastly, it’s a game like many others…determine the chances of success, bake in the risks of investment and consider the prices of action or inaction! Fun, huh.

Some more info for the original poster…

Smaller manufacturers will be more apt to meet with you no matter your IP’s protection status - as someone posted from earlier in this thread, smaller companies are interested in helping the bottom line, but a cooperative arrangement with a small company to develop, manufacture and market a great idea can be a recipe for disaster if the resulting product is later found to be infringing on earlier published IPm belonging to a big fish in that product category - in which case you will be hoping your IP attorney satisfactorily wrote you out of liability claims.

Larger companies will shy away from speaking with you about unprotected IP for several reasons, primarily because any company with an R&D arm may already be developing similar IP and they do not want to acknowledge your IP for fear of later lawsuits that they ‘stole’ your idea. Most such companies will insist on a waiver if they’ll see you at all.

Lastly, as I mentioned in my earlier post a few days ago - it’s a game. Plenty of folks jump in fully intent on saving the $$ it might take to protect an idea because their market research might indicate they have a 1-2 year window to sell, sell, sell before the ripoffs and competitive next-gen products hit and absorb the market share. So it’s quick in, quick out and probably won’t matter much if they’re infringing anyway!

Have fun!

Perfect timing, I saw this article in Monday’s paper;

U.S. Sets 21st-Century Goal: Building a Better Patent Office

David Kappos of the Patent Office, with an Edison bulb.

Published: February 20, 2011

WASHINGTON — President Obama, who emphasizes American innovation, says modernizing the federal Patent and Trademark Office is crucial to “winning the future.” So at a time when a quarter of patent applications come from California, and many of those from Silicon Valley, the patent office is opening its first satellite office — in Detroit.

That is only one of the signs that have many critics saying that the office has its head firmly in the 20th century, if not the 19th.

Only in the last three years has the office begun to accept a majority of its applications in digital form. Mr. Obama astonished a group of technology executives last year when he described how the office has to print some applications filed by computer and scan them into another, incompatible computer system.

“There is no company I know of that would have permitted its information technology to get into the state we’re in,” David J. Kappos, who 18 months ago became director of the Patent and Trademark Office and undersecretary of commerce for intellectual property, said in a recent interview. “If it had, the C.E.O. would have been fired, the board would have been thrown out, and you would have had shareholder lawsuits.”

Once patent applications are in the system, they sit — for years. The patent office’s pipeline is so clogged it takes two years for an inventor to get an initial ruling, and an additional year or more before a patent is finally issued.

The delays and inefficiencies are more than a nuisance for inventors. Patentable ideas are the basis for many start-up companies and small businesses. Venture capitalists often require start-ups to have a patent before offering financing. That means that patent delays cost jobs, slow the economy and threaten the ability of American companies to compete with foreign businesses.

Much of the patent office’s decline has occurred in the last 13 years, as the Internet age created a surge in applications. In 1997, 2.25 patents were pending for every one issued. By 2008, that rate had nearly tripled, to 6.6 patents pending for every one issued. The figure fell below six last year.

Though the office’s ranks of patent examiners and its budget have increased by about 25 percent in the last five years, that has not been enough to keep up with a flood of applications — which grew to more than 2,000 a day last year, for a total of 509,000, from 950 a day in 1997.

The office, like a few other corners of the government, has long paid its way, thanks to application and maintenance fees. That income — $2.1 billion last year — has made it an inviting target for Congress, which over the last 20 years has diverted a total of $800 million to other uses, rather than letting the office invest the money in its operations.

Applications have also become far more complex, said Douglas K. Norman, president of the Intellectual Property Owners Association, a trade group mainly of large technology and manufacturing companies.

“When I was a young patent lawyer, a patent application would be 20 to 25 pages and have 10 to 15 claims,” Mr. Norman said. A claim is the part of the patent that defines what is protected. “Now they run hundreds of pages, with hundreds, and sometimes thousands, of claims.”

Lost in the scrutiny of the office’s logjam, however, was the fact that the number of patents issued reached a record last year — more than 209,000, or 29 percent more than the average of 162,000 a year over the previous four years. Rejections also hit a high of 258,000 — not a measure of quality, Mr. Kappos said, but a sign of greater efficiency.

Between the backlog of 700,000 patents awaiting their first action by an examiner and the 500,000 patents that are in process, a total of 1.2 million applications are pending.

Sitting in his suburban Virginia office, not far from a model of the light bulb Edison presented for patent in November 1879 (which was approved two and a half months later), Mr. Kappos proudly ticked off figures that he said proved the agency was heading in the right direction.

The backlog has actually declined about 10 percent from a peak of 770,000 at the end of 2008.

“We were able to work a 13-month year last year,” he said, referring to the productivity increase in 2010 over the 2009. “We are processing a far larger workload with the same number of examiners.”

Still, Mr. Kappos wants to add more than 1,000 examiners in each of the next two years, a 30 percent increase. Mr. Obama’s 2012 budget calls for a 28 percent increase in spending, to $2.7 billion, over 2010. In two consecutive sessions, Congress has defeated a bill that would allow the patent office to keep all of the fees it collects. While another similar effort is under way, a big staffing increase will not be easy in a climate of cuts.

Mr. Kappos, a former electrical engineer and lawyer who joined the patent office in 2009 after 27 years at I.B.M., has improved relations with the union representing patent examiners. He and the union agreed on performance evaluation measures last year, the first time in 50 years that the yardsticks had been revised.

“I give David Kappos a good deal of credit for seeing where the problems have been and being willing to address them,” said Robert D. Budens, president of the union, the Patent Office Professional Association. “I think it’s a little early to see the full extent of the changes. But we have seen an increase in morale and a decrease in attrition, which is now almost the lowest it’s been since I came here” in 1990.

Patent applications come from all over the United States, and the office has forgone satellite offices — until now. Last year, the office announced it would put about 100 examiners in Detroit. Some prominent lawmakers from Michigan have worked on patent issues, including Representative John Conyers Jr., a Detroit Democrat who, when the decision was made, was chairman of the House Judiciary Committee, which oversees patents.

Mr. Kappos said he chose Detroit because it had a large communities of patent lawyers and agents, nearby universities and transportation centers, and relatively low costs of living and real estate. “Detroit has long been an innovation center,” he said. “It’s undervalued, and that is where we want to invest.” He said it would also attract a work force with more varied skills.

Mr. Kappos is also pushing an initiative that would charge patent applicants a higher fee to guarantee that their applications will receive a ruling within a year. But that initiative and others are not enough, said Paul R. Michel, who recently retired as chief judge for the United States Court of Appeals for the Federal Circuit in Washington, the main forum for patent appeals.

“The office can’t be made efficient in 18 months without a vast increase in finances,” said Mr. Michel, who has made evangelizing for an overhaul of the office a pet cause. “Small efficiency improvements will only make a small difference in the problem.”