Do these Award Winning Designs Infringe Patents?

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Industrial Design


Written by Brian Ling (Design Sojourn)
Jan 28, 2008


13 Comments


An interesting discussion between KK, the designer of the Chronotebook, and Scott a designer cum patent agent, has highlighted a potentially huge problem with concept design awards such as Muji Awards 02 and Red-Dot Concept.

Should the awards jury conduct patent searches on the winning products? And if a winning product is found to infringe a patent what happens then? This problem can only multiply as, in the recent years, there have been a huge growth in numbers of such awards, so much so you could enter one almost every month! Fortunately as I know KK personally, I do not doubt his integrity or his design ability to independently come up with a similar concept.

Out of curiosity, I have posted the images of the award winning designs and the supposed patents they infringe. After the images, you can find a quote of Scott’s well articulated discription on what does or does not infringe a patent so that you have it all in one convenient place. Do take study the images and the links to the patent descriptions, as I am interested to know your opinions on this matter?


Muji Award 02 Gold Prize: Towel with Further Options
By: NIIMI [Takuya Niimi/Yuki Niimi] (Japan)
Muji Award 02 Gold Prize: Towel with Further Options


Patent 5004637: Sanitary tearing towel
By: Chuen-Rong Liao
Sanitary tearing towel






Muji Award 02 Judges’ Prize: Chronotebook
By: Wong Kok Keong
Muji Award 02 Judges


Patent 6593942: Event programming guide
By: Dennis Bushmitch et al
Event programming guide

First, let’s take a look at your daily planner. From a patent point of view, you may be able to capture some patent protection on some specific features, such as the daytime and nighttime indicators, but since the concept of using the graphic of a clock to graphically convey information about the analog clock is shown in the prior art (the ‘942 patent), you will have a heck of a time getting meaningful utility patent protection for this item.

To get a patent, the invention has to meet three basic criteria – novelty (is it new), utility (does it have a use) and nonobviousness. This last one catches many wannabee inventions. Your invention could be considered “new” in that no one has applied the above concept to paper-versions of daily planners and it does have utility, but in my opinion, much of what you show would be obvious in view of the ‘942 patent (which uses an analog clock graphic to convey information that relates to particular times about the clock). The fact that the ‘942 conveys this information electronically on a screen doesn’t matter since the concept is shown and also because paper media is strongly connected to electronic displays since the latter followed directly from the former as a means of replacing many of the things we used to do with the former.

Also, clocks are known to be made from chalkboard so that the user can write appointment information directly on the surface in the same way, using the clock graphic as a means of conveying the event about the clock (I’ll send you an example of this to your email).

With regards to the towel, I respect the “spirit” of the design, but the patent office looks at structure of an invention and what a patent specification teaches to one of ordinary skill in the art. In this case, the prior art teaches that a towel may be made with a tear-line so that a user can tear off a piece of towel. Even if the inventor states a different reasone why the user should tear it off (because one section has been used and should be thrown away), it doesn’t matter since both towels include guide lines or tear lines meant to remove one section of the towel from the larger towel. The structure is similar. The fact that the MUJI version offers only guidelines instead of pre-cut lines could be patentable since the strength of the towel is not compromised and also, the MUJI towel provides reinforcement along those guide lines so cuts won’t fray. My point here is that the concept of doing this is known, the finer details may be new.

Interesting food for thought on your next project eh? It is for me, as this has kept me awake to 2.51 am!






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Comments

Scott
Jan 29, 08 – 2:34 am

Hey DT:

This is the patent guy, Scott. Just to clarify one point – infringement and novelty are two different things. Infringement occurs when a product or process meets all the limitations of at least one claim of a patent that has not yet expired. Novelty is if the product or process is new in view of the prior art (including the full disclosure of all expired and still-in-force patents).

An award winning design may be based on the concept of a patent and still not infringe because the claims of that patent may require some little element that is not present in the immediate design. However, if the concept is shown in the prior art patent, then the present design may fail the novelty requirement, regardless of the claims of the patent.

In my previous discussion, I was not suggesting that any of the new designs from these competitions infringes any patents, although they certainly could. My point was with regard to the true novelty of today’s designs. I have found that many of products that win awards are based on really old concepts that had been patented in the past, but the patents are usually no longer enforceable (“alive”). I posed the question who should get the credit for a winning design today, the person who first thought up the main concept that gives the design the “wow” and the “soul”, such as the concept of using a tear line with a towel, or the person who later makes that concept “look pretty”, by rounding the corners and applying the right color combo. I certainly would give some credit to the current designer to offer a new look to an old thing, but I object to s/he getting the full credit for the “wow”, which is usually the concept behind the design when that concept is shown to be old.

That’s all.

Thanks

Scott
Jan 29, 08 – 4:21 am

Hi DT, It’s me again. Here’s another one for you regarding the winner of 2006 MUJI-01 – the “cast off” plug thing.

According to the designer, the plug serves three functions:

#1. to save energy,
#2. to prevent dust or waste from penetrating an outlet.
#3. to maintain a connection between an outlet plug and an outlet.

Regarding # 1, this device does not save energy! Perhaps the act of turning off a device, or pulling out the plug may, but a plastic plug in itself will not.

Regarding # 2, this may be true, but dust collection in an outlet is really not much of a pressing concern. This would be like designing a cover for a car exhaust pipe to prevent dust from collecting in it. A better point would be perhaps to say that it provides some sort of child safety, but sadly, as a father of two kids, the MUJI plug would actually have increased play-value since now there is a cool clear plastic thing dangling from the outlet.

Regarding # 3, I’ll give the Japanese and this designer the benefit of much doubt here – perhaps I’m not spiritual enough, but who is to say that connecting a plastic dummy plug into an outlet is sufficient to keep the spirit world connected to the real world, as the designer claims?

I’m not trying to rag on this entry, but just to continue with my theme here. To this end, I conducted a quick patent search (less than 20 minutes) and noticed that the US Patent Office actually has a whole subclass dedicated to such plugs (called “dummy plugs”) – class 439, “electrical connectors”, subclass 148, “dummy connectors”. The 135 or so patents within this subclass are designed to prevent a child from sticking something into the outlet and do not have much to do with dust-collection prevention or other spiritual connections.

Here’s a link to US patent No. 4,662,697 of Paul Moses, issued in 1987:

http://www.google.com/patents?id=ymY6AAAAEBAJ&printsec=abstract&zoom=4&dq=4662697

If you look at Figs. 1 and 3, you can see that Paul Moses came up with the concept of providing a plastic dummy plug that connects to the “real” cord of another device and plugs into an outlet. Although there are some clear differences, the structure of Moses’ device is basically the same as the MUJI one, although the MUJI one looks much prettier. Does the less spiritual Paul get any credit for his inventive work that pre-dates MUJI by over 20 years? Nope, the MUJI winner takes all -both the pretty design and the basic concept.

“Traditional Japanese people called an existing thing in this world ‘Utsusemi’.” If this is true, then some of MUJI’s products I’ve seen should be called this, because they seem to have already existed in this world.

Scott

Jim Rait
Jan 29, 08 – 8:23 pm

When my Internal company design group created or received (from a design house) a design we had the legal people carry out a design patent and if deemed necessary a patent search, in order to ensure the intellectual property rights were ours… that being said we often saw our rivals create something with our prior art and vice versa. These were then negotiated and settled in a business-like way. It is rare that IP was “stolen”; more often it was a congruence of need that led to similarity. If we start get legalistic about provenance then we could criticise high-end Nokia luxury mobiles and iPods as being “not-original” whilst I would argue it is the artistic and cultural DNA that has informed their shape…
So my conclusion is: IPR is for the brand or product/service owner and the industry to police copying, not award scheme panels.. although maybe there is a revenue stream here… but that might infringe something.. lets not risk it… damn! No more innovation!

titan
Jan 30, 08 – 12:07 am

tbe chronobook is such a ripoff and it’s not sth new at all. Amazed it could win something. And we don’t need a lengthy description just to back up its design… talking about rounded corners??? stating the obvious…

Scott
Jan 30, 08 – 2:03 am

Thanks for your comments Titan. If you think my above discussions were lengthy, than I would recommend you avoid the patent business. What I gave you was nothing! Regarding “rounded corners”, you appear not to understand why I wrote that. First, I was being somewhat sarcastic because I thought that the improvements of the MUJI winners were very slight over what is known. Second, I was not backing up the design of the Chronotebook, I was actually referring to the towel winner of MUJI. Regardless, innovation sometimes lies with very subtle advances over the prior art and those advances often do deserve credit. Titan, you can stop reading now because this is getting pretty long again and you are probably getting pretty tired. But for all others who are interested, as an example, the iPod could have been made with a simple momentary-push rotating rheostat-type knob to control the volume and choice-selection. This is well known in the prior art and would work with the iPod to input commands for operation. But instead, Apple developed (with the help of another company) a really cool sensor-touch pad to essentially do the same thing and people responded by making it such a success. Should Apple be rewarded (forget about patents – think product design) for this subtle and almost unnecessary and more complex “advance” over the old rotating knob? I think so, and Titan, if you are still with us, that’s what I meant. In the world of patents, almost every invention today is just an improvement or a slight advance over earlier technologies and perhaps the same applies to product design and other areas of intellectual property. In my view, some of these advances truly deserve credit for innovation… however slight, but they don’t necessarily deserve credit for the main concept behind the product.

Scott
Jan 30, 08 – 2:23 am

Good comments, Jim. It almost sounds like you are referring to the software industry where portions of code could easily overlap with that of a competitor and often any patent infringement between big companies ends up being settled by cancelling opposing litigation threats. You mention that intellectual property rights should be controlled by the industry and the property holder, not an awards panel. I disagree, but I don’t know an immediate solution. I think INFRINGEMENT should be handled outside the design-competition arena, but I think questions of novelty and innovation should reside therein because these elements often make up a strong part of what design competitions are all about – what is new! And, as I mentioned before, it’s a lot easier for a designer to leap-off an old concept and make it look pretty than it is to create a whole new concept from nothing. If they do this, I think they should NOT get credit for the stone (the concept) the leaped from, just the height from that point (the advance).

Also, when I worked at IDEO, often very late, I witnessed young “clean” people sifting through our dumpster and pulling papers like hungry rats and I see it happening at Williams-Sonoma, now (going through our recycling papers). In my view IP is stolen very often, at least in Silicon Valley (Palo Alto, CA).

Jim Rait
Jan 30, 08 – 5:20 pm

Fascinating Feedback… I am actually referring to the Fast Moving Consumer Goods Industry, but it shows how we can cross-fertilise very easily.. I have worked in many different industries including academic aero-engineering and computer!
As a properly designed product/service/experience will have been through an IP checking process maybe what an award submission should contain is explicit evidence this has taken place. Otherwise I can see some merry disputes arising where the jury becomes judged for its efforts rather than respected for its deliberations.. in law we separate policing and trying.

scott
Jan 30, 08 – 5:45 pm

Good points, Jim:

Considering that these design competitions rarely offer more than 5 or 10 grand in prize money, I doubt the organizers could ever justify any IP checking. Being a patent agent since 1986 and working with patent attorneys for 15 years (way too long), I know first hand that even a simple novelty search can cost several thousand dollars and take about a month to complete.

Perhaps we could employ the system that the US Trademark Office uses – six months before allowing a trademark, they publish the mark and allow the world to comment and refute the legitamacy and novelty of the mark. After the grace period, the mark either lives or dies. Similarly, a design competition organizer could published a short list of potential winners allowing the design world to express their views, such as refuting the novelty. The judges could then reconvene and vote the final winners in view of the feedback. The winners that survived this critical test could truly be honored because now they would have passed the eyes of the toughest of critics, their fellow designers.

I think a cool design competition would allow the judges to select a short list from all the entries and then allow ALL of the designers who entered to view and vote the winners from that short list.

Jim Rait
Jan 30, 08 – 6:28 pm

I agree with you about the resources needed to check which is why asking the submitting organisation to show they’ve done the work is an economic and effective requirement!
I am very nervous of designers judging work; I have only been on panels with practising designers in a minority.. if significant innovation is to change the world of the consumer/user then is the designer’s world changed in the same way?

DT
Jan 30, 08 – 6:32 pm

Hi All, this is a fantastic discussion! Don’t mind me, I’m just observing and listening on the sidelines. Please carry on!

Some of my thoughts to add to this conversation:

1) The whole idea of “there is no such thing as a truly original design” seems to hold true these days. I do not doubt the possibility of designers, through their own inspiration and conclusions, are able come up with something very similar to an existing patent. There are just so many people in the world, that there are things that bound to come up the same. However, if a design is based on “prior art” I believe credit should be given when credit is due. However what if the development is truly independent, should reference be given just because this person came first, when it could be conceivable that to separate parties from the other side of the world stumbled over the same idea? Honestly as a person who values ideas, I don’t think so. Then again I tend to see the good in everyone and never consider anyone “stealing” from someone else. As all of us know as designers, there is a lot more that goes into making a successful product then just an idea or patent. As it is many patents never see commercialization or the light of day. Everybody has good ideas, the making them work in the real world that matters.

2) This leads me to my next thought. Perhaps we should remove the idea of patents? Seems to me there could be instances of companies or designers discard ideas similar to patents when they could have been perfect in a different context that the original patent owner did not think about. For example the Chronotebook? Perhaps, there should be an avenue of say a 5 year shelf life for the owner to develop the idea, after which it becomes “Creative Commons” and a designer just need to search and reference if required. This is very similar to what post-grade students and academics do before they write their thesis, a literature search. However at this time I am undecided if doing a search of “prior art” is effective during the creative phase in a design program.

scott
Jan 30, 08 – 7:56 pm

It’s funny that at this very moment (at 3:13am in CA), I’m writing a patent application for a very big company (medical-devices) and the invention is sooooo subtle in view of the prior art, yet I see the benefits of this subtle advance and I have no doubt that the company will profit by getting a jump over its competition. There is always an advance to be made, no matter how crowded the art is.

Designers may claim originality for their ideas, but we all know that designers constantly review the designs of others – we have to… for inspiration. I know that when I design something that I believe is really fresh, I’m sometimes sadly surprised when I come across my “inspiration” when I review an old design yearbook and see the similarities of a prior work. When this happens, I’m humbled.

DT, to your comment #2, patents protect innovation and if the chonotebook includes innovative features that were not considered in the prior art, then it is likely that Kok could get a patent on it, if he wishes and could argue patentability over the prior art. The patent system (in the US) does allow the inventor 20 years from filing an exclusive run of his or her invention, but they have to pay what are called maintenance fees every four years (a kind of rent) and if they fail, the patent is then free to use by anyone, but again this is an issue of infringement.

The question I’ve been concerned with is novelty. In the US, we had a show called American Inventor wherein inventors pitched their ideas to judges. As they pitched each idea, I conducted a 3 minute search on my computer and found strong references for at least 90% of them, including the finalists and they all thought their idea was completely new and the less-informed viewers no doubt blindly offered them their respective claims of novelty.

I still think that designers should only get credit for their input, their advance or improvement or combination of known features. As an example for discussion, let’s say I designed a wall-mounted DVD player that one could proudly display next to their wall-mounted plasma TV. My design was very clean and MOMA-esque and included a power cord that the user could pull to adjust the volume. I decided to not include a cover in my design and allowed the spinning DVD to be in full view (very MOMA). During a design competition, if I win, should I get full credit in the industry for the concept of a wall-mounted DISC player that includes an exposed spinning disc and an interactive power cord? Or should I offer credit to Naoto Fukasawa for creating the concept of a wall-mounted CD player having an exposed disc and an interactive power cord and thereafter humbly accept my small advance of providing basically his idea in a DVD format with volume adjust instead of on/off. I could say, ah, but my design is completely different because I was thinking DVD, not CD and I was thinking volume control, not power control.

When we put up the inspiration behind a designer’s work, sometimes his shinny work can becomes pretty dull. If I put up Naoto’s beautiful CD player next to mine, I would be embarrassed to accept an award.

Do you really think the MUJI 2007 winner of a plastic nested coat hanger is the FIRST of its kind? That no one else has ever thought of actually nesting plastic hangers? Yet we are led to think that by MUJI giving that person the award without footnotes. What if I come up with the same idea as Kok’s Chronotebook, but my design was in the form of a pad of POST-ITs and I truly have never seen Kok’s version, should I win an award 5 years from now that claims the full concept behind KOK’s idea…and should he get full credit even though the concept is was shown to be used in TV scheduling years earlier?

I do agree with your statement that making the good ideas work in the real world is what matters.

Good discussion – now I have to get back to this patent application.

scott
Jan 30, 08 – 8:00 pm

Jim, I misread your earlier comment regarding who was to perform due-diligence for their work. I agree with you that this would be more economical, but I would not trust the designer’s efforts. As I thought more, I now share your apprehension to let designers judge the work of their peers.

Jim Rait
Jan 30, 08 – 10:05 pm

I guess it is about best efforts… I’ve had most of my more radical ideas shot down at the ideas, feasibility and capability stage but we have to try and change the world even if we don’t expect to get credit for it!


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