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By J.D. Houvener
Patent Attorney and Founder

Hi everyone, I’m J.D. Houvener, your host of the Bold Today’s Show where you, the inventor, entrepreneur, or business owner, get your daily inspiration to help you make the world a better place. Well, it’s my pleasure to be here with you. We’re in part four of our series of recognizing armed forces and those who have served in the military and have passed, still thinking about Memorial Day just this past Monday.

Today, I want to inspire you to be more patriotic, more about our country, and think about what you can do locally here, whether it’s employing locally or following up with your suppliers and vendors on either side. I’d love to hear your comments and thoughts about this. I know lots of opinions are out there about how you can source, how you can provide economy, and boost our local American culture and economy more with your products and in your business.

Today, we’re still taking a look at this patent we looked at yesterday, this 1920s mechanically moving American flag. You know, it’s kind of laughable now, but it certainly proved to be useful and it was enough to get through the Patent Office.

Then I want to take another look at this and cite some cases that have been settled over the past 20 or so years that talk about design patents. There’s a specific rule, and it’s called the limitation. This is concealed during normal use limitation. Design patents inherently cover what’s ornamental, right? What you can see with the naked eye about the product. A very famous case that’s in the news currently is the Apple iPhone versus Samsung Galaxy ongoing litigation that’s been, I think, five years now in the works. It’s about design patents.

But the case I want to talk about today actually goes back to 1980, and this is a case called Electric Molding versus Moback. This case was about an electric mixer that was trying to protect the design of their electrical housing. Now, the electrical housing within this equipment was internal to this mixer. They had a design patent that was on this housing, and it was unique, certainly, but wasn’t actually visible to anyone using it. The customers that bought the mixers just see the outer plastic layer if they don’t see what’s inside of it.

So the Supreme Court ruled in that case that, you know, in order to get design protection, in order for it to be valid, you have to actually have it to not be concealed during its normal use. Now, this was backed off a little bit by another case that came forward in 1991, in Ray Webb. In that case, it was the Federal Circuit that sort of broadened that out a little bit. So, it’s a two-part test that if it’s ever been part, then you’re able to see that part of the design in that product’s lifecycle. And if that design meets all the criteria of the Patent Office, then it can still be protected for design patents.

That was enough to let a prosthetic device say, actually, for a prosthetic knee replacement, that was on display at a trade show before actually being, of course, surgically implanted inside of a human knee where it can’t be seen, of course, right by the naked eye. But because it was argued and successfully argued in court that that knee, that prosthetic knee joint, was available and was seen in the trade show, that was enough because it was part of the lifecycle of the product.

So the looseness of that doctrine has sort of become an ordained-on issue for most products, but it’s still out there for this specific invention. I think it’ll be hard to argue that the mechanics behind there are visible, and the other parts to actually move the flag back and forth, they’re not visible. They’re not part of the normal operation of this moving flag. And because of that, those moving parts, those cylinders that we looked at in the figures earlier, they would not be protective under design patents, certainly protectable under utility patent application.

Well, if you enjoyed that part, kind of understanding really the nuances of design and utility, and you have further questions, please follow up with us with a free 30-minute consultation. You can book your own by going to boldIP.com or giving us a call.

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at https://boldip.com/contact/