Maximize Your Patent’s Potential Via Its Enabling Technologies And Appearance

Fig 1. Google’s U.S. Design Patent No. 599,372 (“the ’372 patent”), entitled “Graphical User Interface For A Display Screen Of A Communications Terminal,” clearly illustrates that user interfaces are patentable and that innovative and aggressive companies are actively pursuing and obtaining design patents.

Fig 2. Despite its title, Apple’s U.S. Design Patent No. 635,566 (“the ’566 patent”), entitled “Electronic Device,” is really directed to the ornamental appearance of the exterior of the casing and the user touchpad rather than the laptop as a whole.

Fig 3. Apple’s U.S. Patent No. 635,123 (“the ’123 patent”), also entitled “Electronic Device,” shows how the exterior appearance of a familiar device can be reengineered to provide a new “look.” The design patent provides exclusive rights to the new appearance.

Designers and engineers in the electronic design industry are increasingly obtaining patents for their products to prevent competitors from selling infringing products in the marketplace. However, the patenting activities of most developers fail to maximize the available rights by missing out on two important strategies.

First, developers should target enabling technologies. In this regard, electronic design engineers can secure a utility patent not merely at the “product” level, but at the more fundamental “innovation” level as well. This approach may be especially desirable when dealing with lower-level enabling technologies—for example, for use in embedded systems.

Second, developers may be unaware that there are two types of patents available that may be helpful deterring in competition: a utility patent and a design patent. More specifically, if an electronic design engineer were to obtain a utility patent, it would provide a right to exclude a competitor from selling a product that works or functions in the same way as the engineer’s product.

A design patent, on the other hand, provides exclusive rights with regard to the appearance of the product, including any ornamental or aesthetic elements. In this regard, while design engineers may be focused on obtaining a utility patent for the function of their device, they may be unaware that they can obtain a design patent as well. Further, they may not realize that the exclusive right with regard to the ornamental appearance of their product that is granted by a design patent can be a valuable tool to promote market exclusivity.

Target Enabling Technologies

When electronic design engineers think of a patent, they often associate the concept of the patent with their whole product. They do not consider that each function or each way of performing a function that is implemented in the product can potentially be individually patentable. By shifting attention to the functional level, broader patent coverage can typically be obtained.

Consider a product that improves the delivery of a design characteristic. For instance, a signal is processed to deliver a result faster than in previous systems. Typically, the electronic design engineer may want to patent the “product,” and in this case the innovation is conceptualized as “an improvement in signal processing speed.”

Consequently, the patent application is prepared with an eye toward only protecting the concept of “processing speed.” This often means that the claims of the patent end up being structured so that for infringement to take place, the alleged infringing product must improve signal processing speed.

Of course, any patent is better than none, but this approach often leaves valuable rights on the table. Digging a little deeper into the product we might find that the improvement in signal processing speed is primarily the result of two technologies that are embedded in the product and underlie the product’s ability to deliver its improved result. Perhaps one of these technologies provides enhanced process control while the other provides for better power management.

So instead of just targeting the end result of improved signal processing speed with a single patent application, now each of the underlying systems—enhanced process control and better power management—can be the focus of its own independent patenting efforts as well. One advantage here is that the original patent right may now become much broader, and therefore, potentially more financially valuable.

That is, instead of the innovations of enhanced process control and better power management being limited to the specific context of a product that provides improved signal processing speed, the developer now can obtain patent protection for two additional standalone subsystems, regardless of the end result of the overall product in which the standalone subsystem is implemented.

Thus, by shaping the patenting effort to focus on a fundamental enabling technology, an electronic design engineer may obtain broader patent rights than by merely focusing on the end result of the product itself. These broader rights may prevent a competitor from using the innovation in any context, instead of just preventing a competitor from using the innovation in the specific context of improving signal processing speed.

Target Ornamental Appearance

Developers frequently overlook the exclusive rights that may be obtained with regard to the ornamental aspects of a design. However, these rights can be captured using a design patent. Design patents provide the owner with an exclusionary right with regard to the ornamental appearance of an “industrial article.” Although an industrial article may sound like something found in a factory, it actually refers to the appearance of just about any product available, even some software displays.

Additionally, it is fairly easy for a design patent to be infringed. Under the most recent case law, if an ordinary observer familiar with prior, similar designs would be deceived into believing that the alleged infringing product is the same as the product shown in the design patent, then the alleged infringing product does in fact infringe.

Design patents have also recently become much more interesting to developers, including those in the electronic design industry. In the last 10 years, the number of design patents filed annually at the Patent and Trademark Office (PTO) has doubled. Many filers are likely attracted by the fairly liberal legal standard for infringement as well as the relative speed at which the PTO issues design patents. For example, the PTO reports that the average design patent issues in about 17 months, as opposed to 30 months or longer for a utility patent.

For an electronic design engineer, a design patent may be especially useful in at least two instances: the appearance of an interface, and the appearance of the exterior of the design. In these cases, if a competitor produces a deceptively similar interface or product exterior, the design patent owner can bring an action against the competitor and likely be paid money damages or have the deceptively similar product withdrawn from the market.

Many large companies are increasingly directing their efforts toward design patents. With regard to design interfaces, consider Google’s U.S. Design Patent No. 599,372 (“the ’372 patent”), entitled “Graphical User Interface For A Display Screen Of A Communications Terminal” (Fig. 1). The ’372 patent clearly illustrates that user interfaces are patentable and that innovative and aggressive companies are actively pursuing and obtaining design patents.

Also, consider Apple’s U.S. Design Patent No. 635,566 (“the ’566 patent”), entitled “Electronic Device” (Fig. 2). Despite the title, the patent is really directed to the ornamental appearance of the exterior of the casing and the user touchpad rather than the laptop as a whole.

This is an important concept because an electronic design engineer may not immediately recognize that the aesthetic design work that is the subject of the design patent need not be the product as a whole. Instead, sub-parts of the product may be patentable.

Essentially, any part of a product that has been aesthetically or ornamentally designed to evoke an artistic “Wow!” factor in the consumer should be considered for potential design patenting to exclude others from reproducing the desirable element and selling it in the marketplace.

With regard to the appearance of the exterior of a design element, Apple’s U.S. Patent No. 635,123 (“the ’123 patent”), also entitled “Electronic Device,” provides a relevant example (Fig. 3). Here, the exterior appearance of a familiar device has been reengineered to provide a new “look,” and the design patent provides exclusive rights to the new appearance.

In examples such as this, the functionality of the device would likely remain similar, but consumers may be drawn to the improved ornamental design that is more sleek and streamlined. Capturing the increased consumer demand based on the improved appearance of the device has been very important to Apple’s market success.

Strengthen Your Patent Portfolio

Both of these strategies can be employed to increase your patent portfolio’s ability to provide a competitive and market share advantage. More specifically, improved utility patenting, arising from a focus at the innovation level in addition to the product level, provides a larger scope for patent rights. Design patents also are an effective hurdle to block a competitor that is attempting to siphon away market share based on design elements that are attractive to the consumer.