A Magazine about the Hudson Valley’s local economy, published by Hudson Valley Current.

Celebrating Local Creativity and Innovation: Do It Yourself Intellectual Property, Part II

Two Types of Patents: Design and Utility

Let’s break it down fast!

There are two categories of patents:

1. Design Patent

2. Utility  Patent

From the names we intuitively sense the difference—however, the two types are very different. And, there’s deep subtlety involved in each category once you start to distinguish between them. Further, the criteria for receiving either is very different. This anecdote explores the differences.

Background: Before COVID, I was teaching my weekly exercise class “SmartBells® with HEART®” and the subject of patents came up. It might sound odd, but I’m an inventor, and this class flows in many ways! Further, the classes involve “circular movement” (as in flow state). New research indicates this elicits creative thinking and increased cross-hemispheric brain firing.

The anecdote: In class the difference between a design and utility patent came up. Impromptu, while exercising, I made up this example using “a chair.”

Basically, we know what a chair is. It’s this thing we sit on to support us when we take a rest from standing up. Most chairs have four legs, some three, and others are rockers. Some have a back rest, some just a pad to sit on. Thus, one could NOT receive a utility patent for a chair. It is not “novel and new,” the basic criteria for a utility patent. The chair has been invented.

However, many people have received design patents for chairs. A well-known example would be the Eames Chair, invented by Charles and Ray Eames. In patent lingo, a design patent covers a new and original ornamental design for articles of manufacture. It protects the appearance, aesthetics, beauty—essentially the look and appearance of a product.

As local examples: There are two products with design patents many people know of: The AmeriBag® invented in Kingston, and my own SmartBells Carry Bag. 

In 2016, I received a design patent for my heart-shaped exercise device. Uniquely, HEART was also awarded a utility patent for its functionality.

Back to the class: I am explaining that you “could get a design patent” for a chair, if you are able to convince the US Patent and Trademark Office examiner your new chair design is original, and had new aesthetic merit.

Then, a light bulb went off. I drifted off in my mind and mused, “Well…if you wanted to get a utility patent for a chair. It would have to be totally different—novel and new—in both concept and useful. Let’s say for example, you invented a chair that had—NO LEGS!”

Imagine. It floats in the air. When you sit down, it goes up and down like a shock absorber—super comfortable—padded your butt and spine as you sit down. Then, it holds you up floating in the air! Seems impossible right?

However, inventors solve problems with their imagination. I mused, what if you used two giant opposing magnets—one in the floor and one in the chair? Essentially, the chair just sat there floating.

The thought stunned me. HOLY shit. Did I accidentally invent a totally cool floating chair making up this example for fun?

After class I went straight to my computer and started researching the idea, excited I may have a cool new invention to start prototyping.

However, lo and behold…someone thought of it and filed such a patent in Japan. Their filing would be considered “prior art” over my filing and my idea would not be considered patentable. At the conclusion of my search I felt both deflated, and elated to have thought of it. It was not something I’d been working on for years, so there was not much angst. It was an easy “invention” to let go of.

In patent lingo there is the idea of “writing around” a previous patent where your new invention builds on the prior art. You have to be careful with new “claims” and not infringe. However, now we’re getting into the nuances and complexity of patents. For myself, I had no interest to pursue diving in to invent a new floating chair.

In next month’s column we’ll include a “lesson” to get you started on how to look up a patent and pursue some of these ideas on your own if you want to continue on this path.

In any case, keep being creative. It is the most important and joyful part of the process, and makes the most difference for your fellow humans, and the other species on the planet.