Ken Muncy, IE 1982, will be the first to tell you that he’s no designer. But he knows far more than most about a critical step in the design process—one that innovators often overlook—and that’s how to protect your design work with a patent. As a principal at renowned intellectual property law firm Muncy, Geissler, Olds & Lowe in Fairfax, Va., Muncy specializes in design patent prosecution—which we were surprised to learn has nothing to do with litigation. In our interview with Muncy, he sets the Alumni Magazine straight on what the term means and why patents are so important for designers.
How did you become a patent attorney after earning your bachelor’s degree in industrial engineering from Tech?
Just by chance. I had no idea about patents when I was at Tech. I interviewed with General Motors at the job placement center during my senior year, and the U.S. Patent and Trademark Office also happened to have an opening for an interview that day. I interviewed, was given a job offer and accepted because I thought the Washington, D.C., area would be a nice place to live. While working for the government during the day, I went to law school at night and got my law degree. Working as an examiner was some of the best training I could have received prior to becoming a patent attorney.
What do you do as a patent attorney and principal at your law firm?
As a major part of my job, I draft and obtain utility and design patents, as well as trademarks, for my clients. I also have to advise them on how to maximize their protection and to avoid infringing on the rights of others. Not only do I get to use my technical and writing skills from Tech when handling applications, but I also use sales and marketing techniques to obtain clients, and management skills in the daily operation of my firm. While my firm was founded only eight years ago, we are one of the top five firms in the country for design patents and have become the 31st-ranked firm in the country for obtaining utility patents, according to Intellectual Property Today. I work with clients throughout the world.
What exactly is patent prosecution and how is it different than patent litigation?
Patent prosecution obtains patents for clients while patent litigation involves the enforcement of their patent rights. While I have been exposed to both sides of the business, I like the patent prosecution area. Every day you have a new puzzle to solve. Whether is it how to distinguish your client’s invention from the prior art or some other problem, there is something new every day. This keeps the job interesting.
How important is it for designers to protect their work legally?
Obtaining protection is critical because designers put so much time and expense into their work. Otherwise, competitors can be free to copy their endeavors. People sometimes do not recognize the scope of protection available. I have filed design patents for type fonts, fabric patterns, computer icons and LED designs. A design does not have to be beautiful or a work of art in order to qualify for protection. It simply needs to be a new, original and ornamental design embodied in or applied to an article of manufacture.
What do designers need to do to protect their work?
At first, designers should keep their designs confidential until a patent application has been filed. The right to file in countries outside the U.S. can be lost if an invention is released to the public before some initial filing. Moreover, the U.S. has certain bars that will arise over time, preventing a designer from obtaining patent protection after the first public disclosure, use, sale, offer for sale or other public release of the invention. A knowledgeable patent attorney can help guide the inventor through the rather complex patenting process. While it is possible for an individual to obtain a patent, an inexperienced person could be overwhelmed or make unnecessary mistakes during the patenting process.
What types of designs can be protected?
Design patents can protect a wide variety of items. For example, I have filed for a “Christmas tree” built from whiskey barrels, a vending machine with a wave-front and even macaroni. However, objects that are hidden in use or whose shape is dictated solely by their function may not be patentable. Such instances rarely occur. Furthermore, if an article is a copy of an already existing, known product, it would not be patentable.
Are there any common misconceptions or myths about design patents?
The biggest myth is that design patents are not worth the effort. However, after the Apple Inc. v. Samsung Electronics Co. Ltd. initial verdict of more than $1 billion, there has been a marked increase in design patent awareness. This verdict was based, in part, on infringement of some of Apple’s design patents.
This article first appeared in the Georgia Tech Alumni Magazine Volume 90, No. 3, 2014.
Industrial and Systems Engineering