Is Your Awesome Design Patented? (And Tips to Patent It Faster)

America is a litigious country.  Without any subjective opinion, many of our founding fathers were lawyers and many of the rights and benefits that we enjoy today are the result of court cases.  In terms of intellectual property, it can be a double-edged sword.

While intellectual property and the protection that it affords to companies in the U.S. is invaluable to producing great products, many have bastardized the protection that a patent affords. Companies have often been sued over patent infringement by no-practicing entities who abuse the system (as was done in a small East Texas district).

Regardless, it is imperative to patent your new product idea as soon as possible.  The America Invents Act means that patent rights go to first-to-file, versus first-to-invent.  For us laypeople, this means that if two inventors create the same product, the patent goes to the first person who files a full patent application, versus the first person who files a provisional patent (which used to serve as proof that they invented it).  

Before you patent it, however, you have to make sure you know the scope of what you are patenting, and why.  

In the event that you are patenting an entirely new invention in an entirely new industry, as in the first internal combustion engine,  your patent can be as broad as you would like. As the internal combustion engine patented by Alphonse Beau de Rochas is almost 160 years old, if you wanted to patent an internal combustion engine, you would have to be very specific, otherwise, you are infringing on others’ work. 

Thus begins the search.

A warning though–patent searches take time, especially if you haven’t done it before.  

At the United States Patent Office (USPTO), the patent examiners have a lot of systems in place to search patents easily.  They even have their own database available to the public for searching.  In my opinion, Google Patents is much easier to use, however different strokes for different folks.

And still, the best way to learn how to search patents is to search patents… for a long, long time. However, as with many things in life, there are some hacks. You can save a lot of time if you know what to look for.  Here, we’ll cover Design Patents and tips for saving time while doing your due diligence searches. (Utility Patents are a different animal altogether that we can cover later.)

In a Design Patent, the shape is the claim, as in the pictures of the invention in the patent are the invention itself. 

And here’s your tip–If you are patenting a design, don’t start with Google Patents, start with Google Image search.  Select ‘Search by image’, then ‘Upload an image’ to make the magic happen.

Google Image search looks for visually similar images to the one you uploaded. So, if you take a sketch, screenshot, rendering or a photo of your design, Google Images will find the closest thing to it.  Careful, though. As with all Google searches, you may uncover images of drugs, sex and maybe even *ahem* rock and roll. So, act accordingly if, you know, you’re in a public place

Now, let’s say so far that your invention didn’t turn up many image matches. Ok, now you’re ready to search google, by images. When I was a Design Patent Examiner, searching through the first 10 pages of google images was a very good litmus test if a design was new.  

How do you search?

First, when you upload your image, is anything similar? Search through 10 pages of google images. Yes? No?

Second, what is your invention? Search through 10 pages of google images. Try different keywords/phrases. Does anything match? 

Third, drill down into anything similar. At this point, you’ve got an exhaustive list of visually similar objects, brands, and models.

Now. Now it’s time to search Google Patents.  

Here, you are searching for several things:

• stuff that looks like your invention
• the companies that make them
• the people who invented them 

From your previous searches, you should already have a good idea of stuff that looks like your invention as well as the companies that make them. So, what’s next?

Google Patents has its own syntax (e.g. [assignee:”Google Inc”], [inventor:page], and [before:2001]). Use it to find the companies who patented products as well as inventors who work for those companies.  

Although it is not always the case, many listed inventors for Design Patents tend to stick to one area. For example, Frank Nuovo has patented a lot of cell phone designs for Vertu, so if your invention is a high-end cell phone, see if Frank Nuovo patented something close to your design.  Although Frank Nuovo is the inventor, he assigned the patent to Vertu. So if you’re looking for similar designs, look for patents where Vertu is the assignee.  And wait, doesn’t this look like a Blackberry?  Let’s search patents where Blackberry is the assignee and then find the designer(s) who invented it.

While Utility Patents may be more involved, Design Patents are a lot simpler. As an analogy, if Utility Patents are six degrees of Kevin Bacon, Design Patents are a good three. Yeah… that works. In short, to make sure your patent is original, search out three degrees (products, assignees, inventors) from your idea. If you search out that far and receive more dead ends than hits, you can be more confident your invention is unique.  Likewise, if you search out four levels and you’re still turning up matching designs, it may be time to go back to the drawing board.

Lastly, I teased how to differentiate your invention if you find that it’s already patented. Fortunately, you’re not the first person this has happened to. Let’s think about cell phones again. In the era of smartphones, most phones are rounded rectangles. There are only so many ways you can design a rounded rectangle. Companies such as Apple and Samsung patent elements of their phone’s shape, not the entire phone. While you may not be able to patent the entire shape of your invention, you can certainly patent elements, such as the top, bottom, or sides, and if you have enough money, some of each!

Establishing your patent can be tough, but not impossible, and I am certainly not the only source of information you should rely on.  Think of this article as an introduction to the wide and complicated world of Design Patents. Happy inventing!

Disclaimer: The information in this blog post is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from EvD Media, SolidSmack, or the individual author, nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through, this post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country or other appropriate licensing jurisdiction.

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