Imagine That IP Law Blog

This article reviews the television show “Shark Tank” on a weekly basis, with a focus on the intellectual property (IP) embodied by the products or business ideas each contestant pitches on that show. As always, keep in mind the following types of IP protection:

• A utility patent is used to protect the functional aspects of an idea, and this is what the Sharks (judges) are for the most part referring to when they inquire into how contestants have protected their idea.
• A design patent protects the ornamental appearance of an article.
• A trademark protects any word, symbol or design that functions as a source identifier. This is generally what the Sharks are referring to when they discuss “branding.”
• A copyright protects a work of authorship (e.g., writing, sculpture, artwork, software). This is not often discussed on the show, but is a strong form of protection for certain works.

No surprisingly, a toy invention brought the most fun this episode.

Inventor Vladislav Smolyanskyy presented his PinBlock building construction toy to the Sharks. The PinBlock building toy is a generally rectangular piece of plastic with angled sides, two receiving holes at one end, and two connecting pins extending from the opposite end. Each PinBlock piece is identical, although the colors vary. The inventor presented many different designs made with the PinBlock building toy. The shape and attachment mechanism of the PinBlock pieces allow for some movement when constructing. The PinBlock company website describes the PinBlock toy as essentially a “pixel” design (a simple colored square), once the pieces are attached. With pixels, you can build any design.

PinBlock has two utility patents pending, but what interested me most was that the inventor sought design patent protection for the appearance of the PinBlock invention.

Design patents are an interesting, and in my opinion, grossly underused form of intellectual property protection. Design patents protect “any new, original, and ornamental design for an article of manufacture.” Patent Act, 35 U.S.C. § 171. That is, design patents protect the appearance of an article of manufacture, rather than the functionality of the article, which is the province of utility patents.

The language “new, original and ornamental design for an article of manufacture” has been interpreted to include at least three kinds of designs: (i) a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (e.g., “surface indicia”); (ii) a design for the shape or configuration of an article of manufacture (this is the most common form of design patents); and, (iii) a combination of those two previous design categories. Design patents can be obtained for images on computer screens or computer icons as well.

For the right type of invention, where appearance is important or distinguishes a product from the competition in the marketplace, a design patent is a potent form of protection. In particular, since the unregistered trade dress in the overall appearance of a product (“product configuration trade dress”) has become much more difficult to protect (which I will discuss in a future post), design patents provide a way to obtain intellectual property protection and to benefit from all of the same advantages as any other type patent.

Filing a design patent application is straightforward. A design patent is essentially a collection of drawings (“Figures”) that show the proposed design from various views. The claim of a design patent is a single sentence, which generally states, “[T]he ornamental appearance of a [name of article], as shown and described.” Thus, the preparation of a design patent is usually much simpler than for a utility patent. However, the design for which a design patent is sought must still pass the three-part patentability test of usefulness, novelty and non-obviousness.

Unlike utility patents, design patents have a term of fourteen (14) years from the date of issue. Another difference between utility patents and design patents is that no maintenance fees must be paid periodically for a design patent.

As stated earlier, where the “look” of an invention is important, a design patent can be an excellent way to curtail competition. One of the more famous design patents is D292,030, “Ornamental hairband or similar article.” A student of pop and/or fashion culture may recognize that invention as the ubiquitous “scrunchy” hair band.

There are virtually no limits on the types of articles of manufacture that could benefit from design patent protection. Volpe and Koenig has obtained design patents for clients covering security cameras (D772,324, AXIS AB), pet strollers (D757,370, Vermont Juvenile Furniture, Mfg., Inc.), bicycle pedals and cranks (D751,950, Campagnolo S.R.L.); and protective facemasks for the sport of paintball (D703,388, GI Sportz Direct, LLC).

In a later post, I will discuss the test for infringing design patents, and damages that are recoverable for design patent infringement.

Ultimately, Mr. Smolyanskyy did receive an investment. No word on whether the Pin Block building toy is as painful for parents to step on with bare feet as the competing LEGO® building block products.

That wraps up Episode 13 of this season of “Shark Tank.” Check this post next week when we see who swims with the Sharks, and who sinks.

Reprinted with permission from the January 13, 2017 issue of The Legal Intelligencer ©2017 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved.