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Title: “Design Patents: What They Are & How To Utilize Them”
Guest: Tom McNulty of Lando & Anastasi
Interviewer: Jonathan Freedman – MAGE LLC

Click here to read the transcript
Jonathan (0s):
Welcome back to Radio Entrepreneurs. I’m Jonathan Friedman and our next guest in the studio, Tom McNulty of Lando and Anastazi. Hi, great to have you on,

Tom (8s):
It’s always a pleasure to be here.

Jonathan (11s):
Good stuff, Tom. Today, you wanted to talk about something a little bit different within the patent realm, design patents.

Tom (17s):
Yeah, exactly. Exactly. When people think about patents, you know, they usually think about you sorta hear traditional, how something works, how something’s made, you know, covering the, the underlying technology kind of a patent that’s called the utility patent, you know, and those are great to have. I certainly would encourage people who, who are inventing things to try to get utility patents, but there’s a second kind of patent. That’s kind of the forgotten, you know, the redheaded stepchild in the patent world, I guess. And that’s, that’s the design patent design patents cover the visual appearance of something. So the visual appearance, the ornamental characteristics of whatever product you happen to be selling

Jonathan (1m 1s):
Christian, Tom, is, is it somewhat less demanding to, to achieve design pen than utility pen?

Tom (1m 10s):
That’s kind of a yes and no answer. I mean, strictly speaking design patents go through the same examination process as utility patents and you have to be novel and non-obvious and things like that. But practically speaking, they tend to be a fair amount cheaper to get because the claim in a design patent is just a drawing of the design. You know, there’s not a, there’s not a big written section. There’s not a lot of back and forth about the meaning of, you know, term, extra term Y so they tend to, they tend to be a bit cheaper to get, they tend to get through the patent office a half decent amount quicker as well. Again, I think in part, because they’re underutilized the office, isn’t quite so busy

Jonathan (1m 51s):
And just curiously speaking, would it be unusual or inappropriate to get a design patent out of the gate on, on something? And then is it, is it redundant to get a utility patent after the fact?

Tom (2m 5s):
I think it’s a good idea, you know, depending on what it is you’re doing and what you’re selling, I think it can be a great idea. Actually get a design patent out of the gate. You know, a lot of, a lot of products are kind of sold somewhat on the basis of how they perform and how they function, but also on the appearance and on the style and, you know, characteristics like that. And that’s the kind of thing that you can get designed protection on quickly and, and preclude people from, from jumping in and, and, you know, making knockoffs. One of the things that is available and trademark law is trade dress protection, which also can cover the appearance in the packaging and things like that, but that you can’t get protection until you’ve obtained.

Tom (2m 46s):
Acquired distinctiveness is, is the technical term basically until it’s been in the market long enough for people to say that design is, is yours. Whereas with design patents, it can be effective immediately. Well, immediately upon issuance, you, you don’t have to be on the market yet, you know, so it offers advantages over, excuse me, over trade dress protection.

Jonathan (3m 11s):
And is that something that’s typically, I mean, you know, in my mind, at least you’d think of consumer products, but I guess it could be industrial products. Does it have to always be a, I mean, this may be a silly question, but a tangible product to have a design patent. I mean, as long as you can put something on paper, I guess a, so I guess the question is a physical product

Tom (3m 32s):
Of something. The design that you’re claiming has to be applied on some kind of a physical product, but it can be, I mean, you’re right. Consumer products. And one of the big areas, you know, a lot of like the vape pens now is kind of one of the areas of design patents, kind of getting a lot of play because it’s, you know, the, the, that whole industry is still a little bit the wild, wild west athletic shoes. A shoe designs are a frequent frequent source of a design patent protection because there’s a lot that goes into, you know, if Nike makes a shoe with a certain kind of pattern, it’s not necessarily something that offers technical advantages that would qualify for utility patent, but they certainly don’t want people knocking off the design, but it can apply to things like graphic user interfaces.

Tom (4m 18s):
So if you’ve got a, a particular, you know, configuration on an app, say, you can get a design patent on that configuration, excuse me. And you know, you see them on things like sunglasses tools. Like I say, athletic shoes, you can actually get a design patent on your packaging as well. So that’s something that people could look at.

Jonathan (4m 40s):
So, so help us in terms of the breadth of coverage of a design patent. I mean, utility patent, because I think, you know, as you start talking about consumer products and people are entrepreneurs are developing their products, thinking about what that production might offer. It comes to mind when you mentioned sneakers or sunglasses, things of that nature. It doesn’t take too long to find a knockoff of any of those branded products sold domestically, whether or not they are produced domestically is a whole other question that may be where it’s getting under that, that loophole. But it seems to me that, you know, companies, it’s one thing to have the patent. It’s a whole other thing to defend that patent and to, you know, issue of cease and desist or whatever.

Jonathan (5m 23s):
What have you to prevent others from selling lookalike products?

Tom (5m 28s):
Yeah, I understand, I understand what you’re talking about. I mean, one of the advantages with a, with design pound protection is if, if people are importing, you know, if you’ve got a claim on sunglasses and people are importing infringing sunglasses, you can go to the ITC and try to ban their import. So it gives you, you know, you can kind of cut it off at the source instead of having to go after every little mom and pop star store that’s selling the sunglasses. So that’s, you know, that’s one of the advantages that having patent protection in general can get you is sort of availability for ITC kind of claims.

Jonathan (6m 1s):
I mean, that is a huge, you know, industry, I guess, across the board, there’s a knockoffs, you know, we know a lot of manufacturers in the far east don’t seem to really care as long as somebody is paying them for their product at the end of the day, what it looks like or what name it has on it. But it seems to me that it’s just so rampant and probably one of the largest areas in infringement is consumer products.

Tom (6m 24s):
Exactly. One of the things I do kind of want to point out is when you do a design patent, it doesn’t have to be to the entirety of the product. It can be to certain characteristics and probably the most famous one right now, apple got a design patent on the iPhone that really covered basically the, the sort of rounded a corner rectangle shape. And, and it didn’t claim any of like the buttons and knobs and things like that. It just kind of covered the shape and the existence of the screen. And they actually went after Samsung on that patent. And at one point they had obtained a, for about a $400 million judgment that was remanded on appeal on, on the measure of damages issue.

Tom (7m 9s):
And that’s still floating around out there. I’m not exactly sure how that’s going to resolve itself, but the, but the, the, this is also one of the significant advantages of design patents and utility patents. If you Sue somebody you’re entitled to a reasonable royalty, you know, perhaps injunctive relief with design patents, you can still get the injunctive relief, but you’re entitled to the defendant’s profits. And the issue in the apple B Samsung cases, whether the profits should be on the entirety of the phone or just on the case that Samsung was purchasing or, or making themselves, I’m not really sure which way they did it. So that’s, that’s sort of an issue that’s still floating around is what constitutes the, the article of manufacture that you get the profits are.

Tom (7m 54s):
But, you know, one of the ways you can use this, there’s a Ford case. Fairly recently, Ford had a design patent on the configuration of the headlights for the F-150. And, you know, people are entitled to make replacement headlights, but because of the design patent, they can’t make the Ford F150 design, they have to make a different, and that makes it much more difficult to sell aftermarket parts, because, you know, if one of your headlights, you have to get an accident when your headlights gets crumpled, you don’t want to replace everything to have it match, and you don’t want to have a mismatching set. So, you know, so that was great protection for Ford in that particular case.

Jonathan (8m 33s):
So it’s, it’s really fascinating because on the one hand it should provide protection. But on the other hand, you know, because it’s so rampant, I guess, you know, w when you talk about fortune 1000 companies, they’ve got the resources, let’s break it down to the entrepreneur, you know, I’ve got, I I’ve got a, a design, and then, you know, one of the largest companies, the world of multinational goes out and replicates or knocks off my, my design. And I imagine that happens as well.

Tom (9m 2s):
Yeah, I’m sure it does. Yeah.

Jonathan (9m 5s):
So, so looking at the design patent as a foreign entrepreneur, what, what are some of the sort of, you know, incremental steps that they can take to make that happen? Is it start with the back of a napkin, a sketch on a back of a napkin, or does it need to be really detailed design specifications? Or how does that work?

Tom (9m 26s):
I mean, basically you sort of have to have some idea of what it is you’re going to put on the market, so you can protect it. But, you know, in general, you can, you can come to a Baton practitioner and we’ll have draftsmen that can formalize drawings and draft them up. And the way a design patent works is you draw the thing and anything that’s in solid lines is claimed anything. That’s dashed lines is not claimed. So, you know, there is, there is some sort of know-how, I guess, that goes into, you know, what to claim and what to dash out and things like that. And then, and, you know, like I say, one of the advantages of the design world, particularly if you’re a little guy going up against the big guy in the utility world, a big player might just go ahead and infringe, because what’s the worst that can happen.

Tom (10m 7s):
They’ll pay a reasonable royalty that they would’ve been stuck paying anyways, in the design world. If I’m entitled to all your profits, now there’s a disincentive for you. And there’s a, there’s a, probably a more at a minimum, a more likelihood that the cases will settle more favorably because there’s, there’s more of a disincentive.

Jonathan (10m 25s):
Excellent. And then a design patent is issued by the same office, U S PTO. And yeah, same as this

Tom (10m 30s):
Us PTO it’s, it’s like I say, it’s easier to obtain and quicker to obtain. It has a 15 year term rather than the 20 year term of a utility patent, but it has the advantage of a, with the utility patent every four years, you have to pay, what’s called the maintenance fee to keep it alive. And with design patents, you don’t, once you get it, you’re done paying fees.

Jonathan (10m 51s):
Excellent. Well, I’ll give you some good run run room in 15 years, hopefully.

Tom (10m 56s):
Yeah. And if you’ve got a design that last more than 15 years, and it’s still selling well, then you’ve done something. Wonderful.

Jonathan (11m 2s):
Good, good stuff, Tom. Always good. Good guidance. Good advice, Tom. If people want to read to Tom McNulty landowner Stasia, what’s the best way for them to reach out to you?

Tom (11m 11s):
Probably by email T McNulty, M C N U L T

Jonathan (11m 17s):
Excellent. This has been another segment radio entrepreneurs, Tom, really appreciate your insights and guidance. And you know, if people want to, to start protecting their products and design patents sounds like a great way to go. Thank you so much for your time. Have a good week. You as well. And we’ll be right back with another segment on Radio Entrepreneurs.

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