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While I think there is a clear infringement on tear towel, with your design, I think it boils down to 2 factors.

1) Will changing the context of use void the patent?

2) How it is written. Is it written to claim the graphical connection of tagging information with the analogue clock? If so then it does infringe.

I’m not sure if you were aware, a very famous case of the Reebok Pump show, and how the air bag design was applied onto a baseball glove? If memory served, the infringement was because a body part was being supported with the air bags. Same

At the end of the day though it is a matter of whether the owner of the patent pursues the infringement.

Good information I will post it on my blog soon.

Thanks again for your comments. I agree with you. I have conflict at times because I’m a designer and also a patent agent. When I invent or design, everything is new and fresh, but when I put on my patent agent hat, I often look at the structure and concept of its features of what I designed and I tend to be more critical. I certainly do understand and appreciate the talent of a good designer (I’m humbled by the works of many) to think up an idea and create a wonderful product that looks great, feels great, is easy to use, is ergonomic, easier to manufacture, fun, and has that all exciting “je ne sais quois” that makes it stand out. However, when s/he later finds out that the basic idea was done before in a patent or another form of prior art and all s/he really has is the same idea with rounded edges and a vibrant glossy Pantone number-du jour , I’d say s/he just re-invented the wheel, but when there is a new twist to his approach, something that can’t be easily put into words to describe, a certain “wow”, then I’d say s/he has something.

As an example, IDEO has (or used to have when I was there) a policy of not searching ANY patents as they developed a new product for a client. They said that the patent prior art would stifle the creative process and just cause problems, when in fact we can learn so much from the past (even from technical and conceptual patent references) and use the old as a stepping point to jump further in innovation and advance. The products that IDEO and other design firms create are usually amazing, have rounded edges and look very pretty on the shelf, but from a patent standpoint, the features and concepts behind their “WOW” are very likely to be “old” in basic concept. I experienced this first hand at IDEO and clients would sometimes wonder what exactly they were paying for because to them, it sometimes looked like these design firms were just re-inventing the wheel, making a vacuum cleaner that looked design-pretty, but in the end used concepts and features that were developed in the 30′s. Should design-pretty be considered innovative in itself?

Speaking of vacuum cleaners, here’s another example that bugs me. We have all seen that DYSON guy on TV that claims to be the inventor of the first vacuum that never loses suction and that his collection and separation process used in his vacuums is new and innovative. Well, first off, use his vacuum long enough without emptying the collection container and it WILL lose suction. Secondly, I conducted a patent study on this vacuum and found quite a few references for particle-separation and collection that used the same cyclonic action concept and structure. These references were patents that were issued in the cleanliness days of the 1890 to 1930. The concept of using a cyclone separation for vacuum cleaners was well known way back then, but DYSON has somehow absorbed the credit for it all … and as a side note, he proudly states on TV that it took him over 5000 prototypes to get it perfect. I don’t think that’s a very good thing to admit because with that number of prototypes, a monkey would get it right too! To me, it just shows that he did not use the teachings of the past to jump start his little niche advance… what ever that may be.

Here’s another example, I love the work of Naoto Fukasawa because it is usually fresh, smart and make me nod and smile with its commonsense simplicity. Let’s look at his beautiful hanging cd-player product that I believe is part of MOMA’s collection. What if there was a cd-player out there that also was meant to be hung on the wall like a clock, but when it hit the market in the early 1990′s it never took off and perhaps didn’t look as clean and smart. I don’t know of any such prior art, I’m just posing this to make a point. When I see Naoto’s version, I automatically give him full credit for the design and the innovation behind the concept that gives the product the “wow”. Would I do the same if I saw the older original version on the wall right next to his? Just some fuel for some thinking.

Regarding my MUJI entry, I’d love to show it and get some feedback from you and your readers. I’ll send you a picture and description by email. Actually perhaps all of the MUJI losers out there should do the same. Maybe we can all learn from each other.

Thanks for the discussion. Again, I want to make it clear that many of the product designs I see today can use old concepts and still have a fresh look and give a new spirit to an old idea… and yes, deserve credit for the advance. I don’t want people to think that I’m being overly critical.

Scott

Thanks for your detailed explanation on the patents – I think many readers here would learn much from it. I’d definitely agree with your point in crediting the original designers – I have seen quite some debate for instance on the originality of the Swiffer, which was marketed as an innovative and original solution in the US but had been on the Asian market for 5 years at that time.

However, I’d be quite cautious not to simply deduce and conclude that because a “true” inventor had gotten a patent in prior that the creators were undeserving of credit and/or simply copying without acknowledgement. Coincidences certainly are still rather common – especially with the broad nature of patent lingo that seeks to include as much as possible. And when there’s a fresh spin to old/known ideas is exactly where a new idea is born.

You mentioned you entered the MUJI design awards – would you like to share it here?

Hi Paul,
Copycats with duplicate products certainly hope to look as similar as possible and to leech off the original design – this is not something I encourage or mean.

When I talked about differences in the ‘spirit’ of a product, I’m referring to a significant difference in the intent of design. To pull a rather extreme example – I don’t think that the inventor of the wheel should accuse the inventor of the motor for stealing his idea, simply because both are spinning discs mounted upon a central axis.

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.

I don’t want your readers to think that their designs must be patentable to be considered new. Since I’m a patent guy, I tend to use patents as examples of prior art when I see a new product come to market. I certainly appreciate and respect the ability of a designer to take something already known and put a fresh spin on it, thereby creating something new. Being very involved with product design AND patents, I tend to notice how many “new” designs we see today win awards and their creators appear to get credit for the concept behind the design, while the “true” inventor of the concept is never mentioned or heard of. I see this very often and it frustrates me.

SILVER AWARD: I’m very surprised to hear that MUJI actually determined infringement of some entries because an infringement study can take weeks to complete can easily cost over $20,000 US.

I think a lot of the designers who entered still do not understand a MUJI product and I’m afraid I’m likely one of them.

Regards,

Scott

Here’s a long-winded reply.

Thanks for dropping by and thank you even more for taking the time and interest to examine the patenting aspect of the designs. I’d confess on the outright that I did not do a patent search before submitting the design, and I have never seen those patents you brought up – maybe I should next time. I’m sure you’re more familiar with patent laws than I am, so do correct me if I’m mistaken in my little understanding of patents – here’s my two cents:

For the notebook, I thought that while the idea/visual expression may make them look similar, the application context was significantly different enough for the diary to be an innovative idea. Patent 6593942 describes a touch-screen interface with an actual running clock. A layman would probably list various computers, displays, iPods, Palm Pilots etc. as areas of application – but I doubt he would suggest paper diaries. Patents are valid within the claimed domains – it appears that this patent is focused on screens. Patents aside, (to me) applying a familiar idea in a new context is a new idea. Arranging items around the clock isn’t a novel activity – the application in a (even as every diary now still comes cluttered in grids), I think, is.

Similarly for the towel, I thought the patent had a greatly different (if not polar opposites) spirit compared to the MUJI towel. Specifically, the patent-towel’s innovation was to demonstrate and display signs of tamper to subsequent potential users. As described in the patent, you tear it off to indicate the towel has been used (so that the spa/hotel/whoever cannot recycle it for hygienic reasons). The MUJI towel however has a totally different spirit. The towel has grids to enable and encourage further usage in a spirit of recycling (as rags, doormats, etc). For one you tear an indiscriminate portion to discourage further usage; for the latter you cut within set frames to encourage further usage. Idea-wise – to me – they are certainly not the same concept.

I’m curious though – does the application context matter (e.g. video vs paper) – especially when the original patent rather explicitly defined its domain of application. Also, in patent enforcement, does ‘intention’ or ‘spirit’ of the product count?

On another note, we did have a discussion with the MUJI jury and we were commenting that there were remarkably fewer entries this year compared to last year. They mentioned that they had in fact shortlisted more – but they had to disqualify quite a number because those entries had infringed on some patents. So it does seem like they have this patent-checking process in the judging process (and I suppose in their opinion these winning entries did not infringe on existing patents).

As to the absent Silver – at times I wonder whether the Silver Award was originally awarded (and later revoked) to a patent-infringing design. Or maybe more simply, they didn’t manage to find one that fit MUJI’s criteria enough. To win the idea must be ordinary enough, yet innovative, yet impactful, resonant with everyone, novel, useful, economical to produce, yet simple. It may just be that there simply isn’t an entry that managed to deliver that to all judges involved (I guess to get on Gold/Silver the entry probably had to be unanimously agreed by all judges).

Thanks for bringing this up – I think it certainly adds another (previously overlooked) dimension to these entries!