A bra clasp is not generally considered cutting-edge technology. But, the truth is that a bra clasp could be on the cusp of the cutting edge if it’s the first of its kind or improves on an earlier incarnation.
If that’s the case, then that bra clasp becomes a patentable invention worth untold amounts of revenue for its inventor.
Failing to protect the invention with a patent, however, exposes the idea to theft from competitors and counterfeits.
Despite the threat, most manufacturers in the Intimate Apparel Industry are not taking advantage of patents.
Our industry is teeming with new ideas, fresh designs and inventions worth potential fortunes to their inventors and companies.
In order to protect those ideas and inventions and reap the financial benefits, manufacturers and designers need to seriously consider patents as a source of protection. Unfortunately, most manufacturers don’t understand the patent process. This is partly due to the confusion over trademarks, copyrights and patents, which, although related, are very different: a trademark protects a word, phrase, symbol, design or image (think: Nike’s "Swoosh" design as well as their "Just do it" slogan); copyrights protect an original artistic or literary work, like a novel or song; and patents protect an invention, for example, a zipper or a buckle.
As a business owner, you can scare yourself into a corner and do nothing, but you have to sell. You have to decide if a patent is right for your product and if it is - you'd have to be crazy not to apply for one!" - Jane Webb
There are two types of patents that designers should familiarize themselves with – design patents and utility patents.
Design Patents, easier to obtain than utility patents, protect the ornamental appearance of an article of clothing, namely, the shape, decoration and material used.
In other words, if a designer creates an article of clothing – for example, Bragel’s backless and strapless Nubra with a novel design, the designer may be awarded a design patent for their creation.
A utility patent protects the functionality of the article – that is, how the article is used. Bragel’s Nubra invention which attaches and bonds to the curves of a woman’s breast could also be awarded a utility patent because of its unique functionality.
Daren Peng of Bragel explained, "Bragel’s patents were applied to protect its intellectual property rights on the invention of NuBra. The issued patents allow us to enforce such rights against infringers. Bragel currently own about 30 or so patents worldwide on NuBra."
For a complete listing, please visit www.bragel.com/about/pr_09202004.html.
Even more confusing than understanding the types of patents is knowing how to obtain one. While a Google search might appear to be an easy, quick and money-saving tactic to gain protection for your cherished designs, its not the most practical nor reliable method to learn about the patent application process.
"I assumed the process was very simple," said Jane Webb, inventor of the Bra Bag. "I thought you could just take your design and apply for patent. I also thought that doing it alone would be the most cost effective thing to do.… I was wrong….that's when I decided to hire a lawyer."
Like its cousin, copyright and trademark, in the family of intellectual property, patent law and the application process is a complicated endeavor.
In a patent application, a designer must include drawings of their design and also disclose any known existing patents that may be "prior art" or predecessors to their invention.
One must file patent applications electronically through the United States Patent and Trademark Office, www.uspto.gov (USPTO). An examiner from the USPTO will compare your design with other existing designs to determine whether your creation is truly novel. If your design is rejected, you may be able to implore the USPTO to reconsider their decision. However, if their decision was based on the discovery of prior art, the chances of having your application reconsidered are bleak. But if you’re lucky and your design is approved, your stress level will be reduced by half; the other half will be spent on figuring out how to pay for it all.
Hiring a patent attorney is strongly advised for serious designers who sincerely believe that their design is not only new and like no other, but will also have the folks at Vicky Sec’s snooping around your studio in an attempt to run down the catwalk, literally, with their ideas.
Patent attorneys are not your average ambulance-chasing attorneys that you may find lurking in hospital emergency rooms and hallways. They are the cream of the crop in the legal profession. They even have to take an extra exam (patent bar exam) just to be able to call themselves a "patent" attorney. Since the ratio of patent attorney to your RAJ (Regular Average Joe) attorney is 1 to about a million, finding a patent attorney may prove to be a task.
Cathinka Chandler, inventor of the cleavage cushion, Kush Support, started her application process with the help of her husband, Jim, a trial lawyer and quickly found out that they were both in over their heads.
"Between the two of us, I thought we had the experience to do it together," explained Chandler. "That lasted for about two days. I searched the government websites, did the research and realized that there was so much involved and so much at stake. I realized that if I made a mistake during the application process that it would haunt us down the line. So we hired a patent attorney. We had him start out by filing a trademark for our logo and slogans and at the same time we had him start the patent search."
Chandler used Thad Adams of Adams Intellectual Property Law P.A. in Charlotte, North Carolina (www.adamspat.com). Adams is registered to practice before the United States Patent and Trademark Office, and before the United States Copyright Royalty Arbitration Panel of the Library of Congress. He is also admitted to the bar of the Supreme Court of the United States of America and numerous lower courts.
"We're extremely happy with Thad and his work," explained Chandler. "We couldn't have done it without him."
In order to find a patent attorney of Adam's caliber, it's suggested that instead of cracking open the yellow pages you’ve been using to prop open a window that you begin your search for a patent attorney by contacting your local bar association chapter.
Patent Costs
Rosa Suazo, an attorney in the Intellectual Property Law Department of the IBM Corporation helped break down some general costs for this article.
She explained one should expect to pay $370 at filing for a Design Patent and $520 when it issues; $840 for basic filing of a Utility Patent and $1,470 when it issues; And, you have to pay $1,010, $2,300 and $3,550 for maintenance fees for year 3.5, 7.5, and 11.5 respectively.
"Good news – if the owner of the invention qualifies as a small entity (e.g., independent inventor, a small business, or a nonprofit organization), the filing, issue and maintenance fees are reduced by half," she noted.
Suazo added that the expenses don’t stop there, "An attorney’s fee(s) varies typically between $300 - 600 per hour, depending on the firm. It takes about 30 hours to draft a patent application, so it could potentially cost between $9,000-18,000 in attorney’s fees. In total, it’s about a $20,000+ investment and there is no guarantee that the patent will issue - I strongly advice finding a solo practitioner!"
Suazo also noted that the entire process could take up to two years!
So, what happens once you’ve gone through all the paperwork and expenses? "Once you have a patent, you have an exclusive right for 20 years," explained Suazo. But, she noted that you also have to keep up with the maintenance fees outlined earlier.
"People might be afraid of the costs involved in the application process, but you have to make those costs available in your budget. It just seems like a no-brainer for us," said Chandler. "I feel totally protected. [Kush Support] is a unique product that I've come up with and I wanted to make sure that someone didn't just knock it off. It's very comforting to have the patent pending. I can sleep at night."
Chandler can rest easy because her patent is actually pending because she has gone through the entire patent process. There are individuals out there that believe by adding the line "patent pending" next to their invention’s logo without going through the process entitles them to a patent and/or protection. Suazo said that this is a common and costly misconception.
"The tagline 'patent pending' is often added for marketing purposes (‘Oh, wow, this has patent protection’), but it provides no legal protection whatsoever," she explained.
There are other misconceptions about patents out there and the main one Suazo hears all the time is: a patent will automatically entitle me to collect royalties (i.e. make money).
"Fact 1: only few patents are profitable. For example, when was the last time you saw a ‘hit’ consumer item in fashion? I suspect Kenneth Cole does not bother patenting his designs since the ‘in’ thing changes from season to season. Again, it would make sense for Kenneth Cole to seek protection for that supper special fabric he just invented," explained Suazo.
Applying for a patent is a long and sometimes costly process best undertaken with the help of qualified professionals and a lot of patience. Is it worth it? Jane Webb said of her Bra Bag, "As a business owner, you can scare yourself into a corner and do nothing, but you have to sell. You have to decide if a patent is right for your product and if it is - you'd have to be crazy not to apply for one!."
About the Authors
Nneka Udoh is an attorney by trade and works in the legal publishing industry. Nneka has recently become interested in fashion, although she claims she has no sense of style. However, she is eager to help those talented, creative and stylishly-adept folks share their creations and realize their dreams without getting burned in the process.
Luis Paredes is a freelance journalist and graphic designer with extensive trade experience in the intimate apparel industry. His work focuses on the marketing and communication design efforts of intimate apparel companies. His design studio, Seven Hills Graphic Design, creates Catalogs, Ads, and Brochures with a focus on attracting buyers.
