People think that you need a utility patent in order to license an invention. But that's not the case. Design patents have more value than they used to.
Recently, I helped two orthodontists license a simple improvement in their field using a design patent. I've been told many times that design patents don't have a lot of value. However, if an invention must be shaped a certain way to work correctly -- which was true in their case -- a design patent may afford some protection on the overall appearance. (Particularly if a utility patent is still pending or unobtainable.)
In this way, a design patent can still be a significant barrier to competitors.
Dr. Christopher Cetta of St. Petersburg, Florida and his partner Dr. Richard Kaye from Moorestown, New Jersey specialize in straightening teeth and correcting bites. In an interview, Cetta described the origin of his dental invention the Precision Aligner Button.
"Clear plastic aligners are being used in orthodontics to not only straighten teeth, but correct bites as well," he explained. "Elastic rubber bands are often employed between the upper and lower jaws to help correct the bite relationship. To accomplish this, orthodontists were taking various parts from traditional braces and adapting them for use with aligners."
However, it wasn't working out very well, Cetta observed. Patients were often uncomfortable and having to return to the office on an emergency basis to correct breakages, prompting him to think of a solution. Why not create a button attachment that fit within the semi-circle Invisalign cutout windows like a puzzle piece? At the time, Cetta practiced with Kaye, who encouraged him to pursue the idea. Eventually, they partnered on it. (After reading my book about licensing One Simple Idea, they got in touch with my team at inventRight.)
It took Cetta and Kaye about six months before their marketing material reached the right potential licensee. Once the two gentlemen had a handshake deal with the company, MidAtlantic Ortho, negotiations on the licensing agreement took about five more months.
"Our attorneys initially steered us towards a design patent because our product had to fit a specific shape," Cetta said. "We were able to file it relatively inexpensively."
After he and Kaye had been collecting royalties for a year, they decided to double down on their IP and file a utility patent.
"I've always considered myself a creative person and someone who likes to try to think a little differently. For me, this idea was obvious," Cetta said. "There was one doctor who approached me at a conference to say, 'This is the dumbest-yet-smartest idea I've ever seen," he added, with a laugh. "I'm a huge devotee to simplicity. I love Apple products and Steve Jobs. To me, you have to fight through the complexity to get to the simple."
I very much agree.
Cetta and Kaye are working on expanding their product line with MidAtlantic Ortho, which was recently acquired by a larger orthodontic supply company called DynaFlex. They recently signed a second licensing agreement for an instrument related to the buttons with Hu-Friedy Manufacturing Co., a major dental instrument supplier.
Why Design Patents Are More Valuable Today
Utility patents are all about the functionality of your invention and can be quite expensive to obtain -- easily upwards of $15,000. On the other hand, a design patent is relatively affordable. Patent agent Kevin Prince, founder of QuickPatents, has obtained nearly 2,200 design patents for his clients since 2005. He said that on average, a simple design patent costs between $1,500 and $2,000 from start to finish. (Some attorneys include drawings in their fees; others don't. Make sure to inquire.)
It takes about a year for a design patent to issue. They last for 15 years and do not require any maintenance fees. (To avoid having your utility patent lapse, fees must be paid on three separate occasions.) What a small price to pay! Design patents can also be used to help put a stop to copycats online in the never-ending war against knockoffs.
Interestingly, the United States Patent & Trademark Office offers this disclaimer about design patents on its website:
"Because design patents protect only the appearance of an article of manufacture, it is possible that minimal differences between similar designs can render each patentable. Therefore, even though you may ultimately receive a design patent for your product, the protection afforded by such a patent may be somewhat limited."
Prince told me, "That used to be true, but is not so much anymore. About 10 years ago, the way infringement is measured in court changed due to the decision in the Egyptian Goddess vs. Swisa case. Now, it's based on the 'ordinary observer' test. As a result, design patents have a lot more teeth to them. Even a lot of attorneys don't understand this."
In the past, slight changes rendered products not the same design. That's changed. Now, it's whether the average consumer thinks they're the same product or not, disregarding small differences.
"In practice, this means that if a rival makes trivial or insignificant changes, they may still be at risk of infringing," Prince explained. This is how Apple prevailed over Samsung, he pointed out as an example.
In other words: Design patents are no longer as easily worked around.
As you are crafting your intellectual property strategy, don't overlook them -- especially because you can get one more quickly and for far less than a utility patent. If you file a provisional patent application and for a design patent, you can describe your invention as having 'multiple patents pending.'
Licensing a medical product sounds long and difficult, at best. But here's a clear case of an extremely simple improvement finding a home through licensing.
Honestly, simple is always best. People are dubious. They think, "This is so simple, someone must have thought of it." And as a result, they don't move forward and take any action. But you don't have to reinvent the wheel. Don't even try!
Through observation, you can develop simple solutions to everyday problems. You have to ask yourself, "Why does this have to be this way?" That's exactly what Cetta and his partner did.