Protecting Your Specially Shaped Balloon

by Larry Nelson

Imagine spending months designing a special shape envelope for your new balloon. Thousands of dollars later your creation debuts at a rally and becomes an instant hit. You swell with pride as friends congratulate you on your eye-catching design. Your balloon is something special that stands out from the rest of the crowd. Time goes by and then one day you see a balloon inflating down field, and it looks just like yours! All the time and money you spent to be unique have just gone down the drain. Could you have done something to prevent this rip-off? Yes, you could have patented your balloon's design.

Whether you are designing a balloon for a major corporation like Brown and Williamson Tobacco, or sewing together your first home built experimental, a design patent is a relatively inexpensive way of protecting the look of your special shape balloon design. The threat of someone stealing Brown & Williamson Tobacco's double race car design might seem small, but what about a special shape that looks like a giant burger? If an advertiser found they could draw the attention of thousands of people by inflating a burger shaped balloon, how many flying burgers would you expect to see in the following years?

Many countries do not offer patents for design protection. Instead, they use a form of protection known as a design registration. However, in the United States, an inventor may apply for a special form of patent to protect his design. This "design patent" is obtained by submitting an application to the US Patent and Trademark Office (PTO). The PTO has an impressive Web site at URL http://www.uspto.gov. For general questions and more information, the PTO also has an information service at 1-800-786-9199

What are the requirements for obtaining a design patent on a special shape? Even if you create a remarkable looking special shape, it may not be eligible for design patent protection. A design patent can only be obtained for a new and original ornamental design.

An ornamental design is the configuration or shape of a product, in this case the unusual shape of your balloon envelope, or any special surface ornamentation on the balloon including the basket. The look of the balloon must, at least in part, be ornamental, as opposed to functional or utilitarian. For example, what if you are trying to obtain a design patent on an airship, such as shown in the Lockheed patent? Lets assume the only thing unique about the airship is the fin. If the fin's design is totally functional, that is, the design of the fin is dictated totally by aerodynamics and not aesthetics, then the fin would not be eligible for design patent protection.

Once you determine that your balloon has an ornamental design, such as a special shape envelope, then you must make sure it is a new design. This means the balloon envelope must not have been used (i.e., flown or tethered) in public or sold more than one year before the application for design patent was submitted to the PTO. Also, the design of the new balloon cannot be shown in a publication, such as a magazine or another patent, more than one year before the application for the design patent was submitted. So, if you are considering protecting your new balloon design, you should apply for a design patent before the balloon is ever flown or displayed in public.

A design must be original to qualify for design patent protection. Originality, also known as novelty, occurs when the average observer looks at a new balloon and perceives it as a different design from, and not merely a modification of, an already existing design. A design that has substantially the same appearance as a design that is already known is not patentable. If a balloon designer would consider your design obvious over a known design, you could not patent it. Unfortunately, a design from any field may be used to disqualify the design of your balloon envelope. For example, if your specially shaped balloon is shaped like a cup, then photographs and drawings of coffee cups can be used to show that your design is not original.

The unusually creative balloon designer should beware. Any design the government considers offensive to any race, religion, sex, ethnic group or nationality may be denied patent protection.

When you submit your application to the PTO, they will look for other designs substantially similar to the one described in application. You can save yourself a lot of time and grief by performing your own patent search prior to submitting your application. If you find a design remarkably close to your own, it might be wise to forget about pursuing a patent. You can perform a free search either through the PTO's Web site, listed above, or at IBM's Web site, http://patent.womplex.ibm.com/ .

The design patent system was developed to promote progress in the decorative arts, not in the utilitarian design of technology. To protect the functional aspects of an invention, you would apply for a utility patent, what most people think of when they hear the word "patent." If the fin of the Lockheed airship, discussed above, was designed for its aesthetic appeal as well as its aerodynamic functionality, then it could be protected by both a design patent and a utility patent.

Why would anyone get two patents on the same thing? Well, the two types of patents protect different things. The design patent protects your artistic creation, while the utility patent protects the functional aspect of your invention. If you have a choice between the two forms of protection, you should know that it usually costs much more to get a utility patent. A design patent cost as little as $1,500 to get and nothing to maintain, that is, keep it alive and enforceable against infringers. On the other hand, a utility patent costs between $5,000 and $12,000 on average to get. Also, to keep a utility patent enforceable beyond 3.5 years, you must pay the PTO an additional $1,050. Then, after 7.5 years, you must pay another $2,100, and finally, after 11.5 years, you must dole out another $3,160.

So how does one go about getting a design patent? First, you need to write a patent application. You can try to do this yourself or you can have an intellectual property attorney draft it for you. A design patent application is fairly simple to write. The contents of an application, as shown in the Moet patent, include a preamble stating the name of the inventor and the title of the design. The title of the Moet patent is simply "BALLOON." In the United States, the person legally applying for a patent must be the inventor of the ornamental design, not the company that employs him or her. Usually, companies will require the inventor/designer to assign the invention over to them. For example, on the first column of the Moet patent, the assignee is the Champagne Moet & Chandon, but the inventor is Louis Hainguerlot.

You must also supply drawings to the Patent and Trademark Office. These drawings should be drafted by someone familiar with the PTO's drawing requirements. Usually, your patent attorney will ask you for pictures of your balloon at various angles, and then have a draftsperson make at least six drawings, one for each side, top, and bottom of the balloon envelope. If necessary, the drawings will include a side plan and perspective view of the design. The sum of the drawings in your application must provide sufficient views of your ornamental design to completely describe it.

If you decide to write your own patent application, there are books available that explain how to write and process a design patent application. One such book is "Patent it Yourself," by David Pressman, published by Nolo Press. If you can't find a book on the patent process, information and forms can be obtained by downloading them from the PTO web site. The PTO can also provide you with a list of patent attorneys qualified to practice before the PTO in your area. For a project as simple as a design patent, an attorney usually charges between $125 and $300 per hour and works a total of 2-5 hours, or around $500-$800. Try to negotiate a fixed fee for the design patent up front.

There are additional costs for a patent besides attorney's fees. Before the Patent and Trademark Office will examine your patent application, you must pay a filing fee. This fee is mailed with the application and helps pay the government employees who review and process your patent application. The PTO charges companies having more than 30 employees a filing fee of $330. If you are filing on your own or your company has less than 30 employees, then the fee is only $165.

If your patent application is in order and the filing fee has been received by the PTO, the patent application will be forwarded to a patent examiner. The examiner will check your application to make sure it meets the PTO's administrative requirements, and then search for designs similar to yours. Often, the examiner will initially reject your patent application as either being anticipated or obvious. It will be up to you or your attorney to argue why your design is original.

If the PTO decides your design qualifies for patent protection, then you will receive a notice of allowance and an issue fee due statement. The issue fee for a company having more than 30 employees is $450, while smaller companies are only charged $225. The issue fee is required by the PTO before it will "publish" or issue your design patent.

Once you have obtained your design patent, what do you do with it? After the PTO issues your patent, a procedure that could take anywhere from six months to three years, the design patent will be "enforceable" against others who attempt to make, use, or sell your patented design for a term of fourteen years. Of course you may license, that is give someone permission to use your design, usually for a fee.

When someone makes an unauthorized version of your patented balloon design, or a close knockoff, you may sue for damages. You can also ask a judge to stop the "infringer" of your patent from continuing to make, use or sell the unauthorized design. Thus, if someone steals your balloon design, you can go to court and ask a judge to legally prevent the infringing balloon from ever being flown again.

To convince the judge that another balloon infringes your patent, you must show that the accused design is substantially the same as your design. In other words, the ordinary observer would confuse the infringer's design with yours. You must also show that the infringer appropriated the novelty that distinguished your patented design from prior designs. For example, if the PTO granted you a design patent on a "funny face" balloon because it could not find any other design with such an ugly nose, then for the other balloon to infringe your patent, it must have the same ugly nose.

To many in the sport, ballooning is not just how you fly, but how you look doing it. Design patents can play a role in protecting the uniqueness of how you look. So, if your planning on investing a significant amount of time and money to develop a unique eye-catching design, a design patent is one way of telling the world - this is my creation, and my individuality, so do your own thing don't copy me.