Protecting Design Ideas

It took one mind and three days to design the Glass Forest, but more than two years to clean up its messy aftermath. It’s a marketing and business development nightmare — securing patent and trademark protection — a full eight years after an invention.

As the one pegged with the cleanup task, I know the difficulty all too well, as do the editors of every industry magazine within my reach. Understanding not all small business owners have the time or resources to devote to patent protection, we offer our experience in failing to protect ourselves, Edgewood Log Structures, and subsequent intellectual property called the Glass Forest (pictured below), in the years following the design element’s inception.

The Glass Forest. After its first implementation in 1998 in a home in Coeur d’Alene, Idaho, it quickly became the most sought-after design element in Edgewood Log Structures’ history. Today it is plastered on the fronts of magazines, featured as advertisement, in abundant supply on the Internet, and requested by more than 80 percent of Edgewood’s new clients. It soon became obvious Edgewood was not the only one marketing the product. Since its introduction, many companies have attempted versions of the Glass Forest, claimed the invention, and in some cases even the name, as their own. Watching your own blood, sweat and tears copied by others can be a painful process, but even worse for an inventor is not being able to do a thing about it. Sadly, this is exactly what happened to the inventor of the Glass Forest.

The Patent. A patent is vitally important in business today. So essential in fact, some companies have teams dedicated to protecting intellectual properties. Unfortunately, smaller businesses don’t often have that luxury.

The Rules. An invention can be patented. However, it must fulfill the following conditions to be protected: It must be of practical use, it must show an element of novelty, and it must show an inventive step, one which could not be deduced by a person with average knowledge of the technical field. Finally, its subject matter must be accepted as “patentable” under law. More importantly, the patent must be applied for within one year of the invention either being sold or after being exposed in the media.

The Circumstances. The Glass Forest, created by Edgewood Log Structures, was first built in 1998. The element appeared in an editorial feature in 1999. Patent application for the Glass Forest began in 2001. The grant of patent was declined due to the protectable span of time being exceeded. Or in other words, it was too late. In 2004, the Glass Forest was copied by another entity that publicly claimed intellectual property rights to the element. And so began the battle of reclamation.

The Protection. No protection was available for blatant patent infringement. Fortunately, names used to describe products can be trademarked. In general, it is believed that every name of a product is a trademark of its respective organization. If a company creates a name for its product and continues to use it, it is a de facto trademark whether or not it is registered. Among other legal reasons, registration serves to officially document how long a name has been in use. While trademark seemed a sure bet, many years had passed.

The Cost. “If we had to put an actual dollar amount on it, we would have to say, to date, more than $1.5 million has been lost in revenue, time, patent attorneys and filing fees. And this includes only those homes we can document,” says Brian Schafer, owner of Edgewood Log Structures. More disturbing, however, is the confusion caused with homeowners when multiple entities claim rights to an invention. Also problematic are failure issues when that element is improperly executed. “The likelihood that when built incorrectly the design element might fail, is a very real possibility,” Schafer explains. Late in the process it may appear there are few choices left for protection; however, this is not always the case.

The Solution. Hire a patent attorney. But first and foremost, invest time. Determine the costs, time frame involved and whether or not patenting intellectual property is worth it. Keep in mind what might play out in the next 10 years. Can the invention be copied? If it can, would the company suffer a loss of income as a result? Is there time to devote to the protection process? If not, are the funds available to hire a consultant who can? Also, outline other ways to protect the intellectual property.

For example, Edgewood Log Structures “brands” every Glass Forest with the company’s signature logo. “Because the trademark process can take years, we had to develop a way to protect homes currently being designed and built. We’ve actually taken it a step further and updated our architectural design standards to include the placement and design of our logo on each and every home, regardless of whether it contains the Glass Forest element,” Schafer explains.

If a company’s invention is seen in the media on another firm’s behalf, the magazine editors should be contacted. Provide the editors with documentation that the intellectual property is indeed owned by an entity other than the one featured in their magazine. Next, contact the offender directly. More protection is available later if a company has documentation of their attempts to ask the offender to stop. And finally, don’t wait. Any company with intellectual property should apply for protection immediately. It may seem a daunting and costly process up-front, but in the end security is the most valuable outcome.

The Lesson. Edgewood Log Structures is currently in the protection approval process regarding the Glass Forest. It has taken years of lawyers, consultants and documentation to receive custody, but the future looks promising.
“Edgewood Log Structures was still getting its feet wet back in 1998, but having known then what I know now, I would have taken out a second mortgage on my home in order to pay for the patent application process on the Glass Forest,” Schafer explains. Think it will happen again? Not likely. The company now regularly applies for and protects its intellectual property.