Monday, February 10, 2014

The Business Side of Gear: Intellectual Property, Part I

Gear fascinates us for many reasons, but one major reason I like it is because I am fascinated by the process of design and invention. There are lots of aspects of gear that overlap with intellectual property. This is a primer on intellectual property (also known as "IP law") as it applies to gear. Note that while I am a lawyer, I am not an IP lawyer. I have never done an IP case. The information I am providing here is not legal advice, but just an overview of principles that shape the gear we love.  There are a lot of readers of this site that are attorneys and I am sure some are IP lawyers.  If I make a mistake here I sure, and I would hope, that they'd correct me.

In part, I am writing this because there are few things that the average gear geek understands less than IP law. Search for any IP related topic in gear and you will find an million mistakes. The Internet's reliability is suspect to begin with, but the amount of errors in the gear world relating to IP is higher than average.  Notions that someone's design was "stolen" or that some secret steel is actually just a name slapped on stuff we all know about leads to a lot of fights on forums and a huge amount of simply provably false information.

The genesis for this article was a segment on the Knife Journal Podcast with Jim Nowka and Kyle Ver Steeg.  Jim is one of the most knowledgeable folks in the world about knives and the business of knives and this area of the business is so convoluted and so full of incorrect information that an expert like Jim has a difficult time figuring out what is right and wrong.  If its about knives and Jim doesn't know, well, geez...I am not sure anyone would.  I tried to find the answer to a lot of questions that segment raised on the Internet and I struck out completely.  Unsatisfied, I decided to do research and put up the results of that research in the hopes that this would start a discussion that would provide better answers than what's out there now.  Like I said, if its a question about knives and Jim doesn't have the answer, then the answer isn't out there.  Hopefully, now, part of the answer IS out there.      

The Big Picture

The Founding Fathers recognized the importance of protecting inventions and rewarding inventors. The foundation of all US intellectual property law is found in the Constitution. Article 1, Section 8, Clause 8 of the U.S. Constitution empowers Congress to:

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

This is one of the many Enumerated Powers of Congress, a list of powers specifically given to Congress. All Congressional action, all authority for Congress to pass laws stems from one of the Enumerated Powers or the special catch all clause, called the Necessary and Proper Clause. The placement of the so-called Patent and Copyright Clause is indicative of its importance to the Founding Fathers--it was placed in the Constitution proper, as opposed to the Amendments, and in the very first Article. Comparatively speaking, things like Freedom of Speech and the Right to Bear Arms, were significantly less important. In fact the Amendments were not part of the original Constitution at all, but part of a bargain struck with the people and the States. They were included to grease the skids and get the Constitution accepted by all thirteen states.

From that one phrase in the Constitution we get four primary forms of intellectual property: patents, trademarks, copyrights, and trade secrets (though trade secrets work almost entirely differently than the other forms of IP). Copyrights have no applicability to gear, as they are designed to safeguard written or performed works, like books and music. Gear companies have a ton of copyrights but they protect things like the company's website or catalog. Trade secrets have limited applicability to gear. Trade secrets are a form of intellectual property that safeguards things like "secret recipes." Additionally, unlike other forms of intellectual property, trade secrets are protected by law only to the extent that the holder of the trade secret makes efforts to keep it secret. If Dr. Pepper's secret formula was posted on the Internet by Dr. Pepper, it would lose its trade secret protection.

This leaves patents and trademarks. Patents are significantly more complex than trademarks. They offer much greater protection and enforceability. Going along with those additional safeguards is a much higher bar (in theory) to get a patent. Trademarks basically have to be used in commerce and then they are protected. Registering a trademark merely makes it easier to prove it was used in commerce, but offers no additional protection. Trademarks are designated by a tiny "TM" (for trademark), an "SM" (for service mark) or "R" (for registered trademark) near the trademarked item, usually a slogan, name or logo.


In the US a patent is granted based on a four-part test. In order to patent something an invention must be: 1) patentable; 2) new; 3) non-obvious; and 4) useful.

Patentable simply means that the item being patentable is not something like an idea, though processes and computer code can be patentable. You cannot patent, for example, good will.  You also cannot patent a name.  For example, Spyderco and INFI steel may be trademarks, but they can never be patents.  Patents protect processes, physical and non-physical inventions.  A non-physical invention could be something like genetic code for genetically modified crops or computer software.

New means that the item is not like something already on the market. For example, you can't patent the 2014 Subaru Legacy. Its not that different from the 2013 model. That said, there are huge exploits that get around this newness requirement.  Drug companies will often develop a drug in two ways: first in a regular pill and then in a pill that slowly dissolves over time, so-called Extended Release (XR) versions. Even though the chemicals are all but identical, the XR version has been, traditionally, "new" for patent purposes.

The third part of the test is that the item must be non-obvious. In European patent law, the item must display an "inventive" step. As you can imagine, this is the place where most patent fights happen. Non-obviousness, ironically, is a concept that is not obvious. The best example of non-obviousness is one used in law school classes on intellectual property. Suppose that there is a company out there making baseballs. On their first product they put markers on the surface of the ball to correspond to your fingers. If you place your fingers on the right markers and throw the ball, its a curveball. The ball is designed to teach you how to throw that pitch. That first ball, the first one with markers, is likely non-obvious (assuming there is nothing like it on the market), it is both new and non-obvious in a way that, say, a neon orange baseball is not. But if they then released another ball with different markers that helps teach you a slider, that one is not non-obvious. It is a simple and obvious extension of a previous concept. Again, I am not sure how the XR drugs aren't blocked by this element as well. There is some overlap between new and non-obvious. Simply put, all non-obvious inventions are new, but not all new inventions are non-obvious. In gear terms, the Umnumzaan is new, but in light of the Sebenza, it is not non-obvious. The Sebenza, when it was first made, was both new, and the development of the framelock is a non-obvious invention when compared to other locks on the market.


The last part of the test is that the item be useful. The patent office will not approve a patent for a Rube Goldberg machine, though if you read only a few patents you will realize that the threshold for "useful" is very low and in fact, almost always purely hypothetical. Most patents are awarded in chemistry, computer technology, and biology where blue sky research makes an amazing discovery and the patent application lists a bunch of hypothetical uses; in gear its a bit different, but gear makes up a very small percentage of patents.

Patents last for 20 years. They used to be awarded to the "first to invent", but in 2011 that system was changed to the "first inventor to file." This was designed to eliminate lots of contentious cases that turned on when something was invented. It is now a race to the patent office. Though a patent lasts for 20 years, the application process is slow. From submission, there is an 18 month waiting period which can be extended. In essence a patent lasts 17-18 years.

Patent applications are a very specialized form of legal writing with rules that strike me as being as silly and convoluted as European heraldry rules. My wife, who is a scientist, has a few patents and even she was unable to decipher exactly what the patent meant, despite the fact that she is both a college professor and the inventor of the thing being patented. The key problem is obvious once you think about the purpose of filing a patent (to enforce a patent in a legal dispute). You want the patent to be a specific as possible, so as to get awarded a patent, but as general as possible to make as widely enforceable as possible. These competing goals lead to things like this:

A folding knife that is self opening when removed from a container such as a holster or pocket. The knife includes a handle and a knife blade with the blade hinged to the handle for folding from an extended, use, position to a stored position in a slot in the handle. A pin is formed on the knife blade adjacent to the hinged end, extending away from the blade when the blade is folded. When the knife is pulled from a container, the pin will snag the container just before the knife is fully removed, causing the blade to unfold to the use position. Preferably, the pin is hook-shaped with an end extending along the blade towards the blade tip. A releasable locking arrangement to lock the blade against folding while in use and for releasing the blade when desired for folding is preferably included.

Anyone recognize what this is?


What about now?

Its the patent for the Emerson Wave. Until you get to the word "snag" you'd probably have no idea what this patent abstract is referencing. And this is the "simple" part of the patent application.

Patents can be enforced through litigation or through licensing. For many, litigation is merely involuntary licensing, a cost of doing business in an increasingly "patentable" world. In a license the patent holder agrees to allow a non-patent holder to make or produce the patented item. The non-patent holder pays a fee and the patent holder agrees to not sue. In litigation, a party is sued by the patent holder for developing or using the patented item without permission. And here is the key detail--a patent can be enforced even if the infringement is unknowing. That is, suppose to parties both invent item X entirely independent of each other. Party One goes to the patent office and gets a patent. Party Two doesn't and just goes on their merry way. Years later Party One finds out that Party Two is using (read: selling) the patented item. Party Two cannot claim they created the item independently of Party One. Nor can they claim they reverse engineered the item. Infringement, knowing or otherwise, is still a violation of the patent. And this is why patent protection is so strong. Any use without authorization is subject to suit and damages. The damages can be huge. Look at the suit between Apple and Samsung. In addition to a massive amount of money, Apple secured an injunction, or a court order, that barred Samsung from selling is products that infringed on Apple's patents. Damages and injunctions are tremendously powerful weapons in commerce and one of the reasons why patent cases dominate the high damage awards in modern litigation.

Here is where patents touch on gear. You can patent something like the Emerson Wave, but you can't patent a knife. You can't patent, for example, the Sebenza, but you could patent the frame lock, or Reeve Integral Lock (Chris Reeve did not do so, so far I can find). The Spyderco hole was, according to sources on the Internet, patented. I searched the Patent Office and found only the patent for the Bali-Yo pen. The patent would have expired by now if it was filed for when the C01 Worker was released in 1981. There are also signs that the Spyderco hole is trademarked, but again, a search of the trademark office turns up nothing (again, remember trademarks do not need to be registered for protection).

You can search patents through Google or on the USPTO (US Patent and Trademark Office) website, which is quite good.  Hopefully this gives you a better idea of what a patent is and more importantly what can be patented.  You can't get a patent for a name, like INFI steel, but if the steel meets the four part test above and no one else has a patent or patent pending (that's where that phrase comes from), then the formula CAN be patented.   


  1. Great article on patents! I too am an attorney (with a fascination for things that are sharp) but not an IP attorney. I'll have to share your link with clients who want a primer on the topic. I would just print them a copy, but I'm going to want to wait for your article on copyrights before I decide whether I want to do that ;)

  2. There are a lot of readers of this site that are attorneys and I am sure some are IP lawyers. If I make a mistake here I sure, and I would hope, that they'd correct me. power of attorney for property