Do these Award Winning Designs Infringe Patents?

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!

Brian Ling (Design Sojourn)

Brian is a multidisciplinary Design Leader with more than 18 years of experience leading strategic design programs that drives successful Brands and Fortune 500 businesses such as GE, Philips, Nakamichi, Flextronics, Ericsson, Hannspree, and HP. His passion is in helping organisations leverage on Design Driven Innovation to make people’s lives better.

  • Jim Rait

    .  8 years ago

    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!

    Reply
  • scott

    .  8 years ago

    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.

    Reply
  • scott

    .  8 years ago

    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.

    Reply
  • DT

    .  8 years ago

    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.

    Reply
  • Jim Rait

    .  8 years ago

    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?

    Reply

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