Sarah Goehrke’s recent article on the University of Tennessee’s new ‘patent pending’ 3D printed face shield made me wonder - “what is going on here?” There are a huge number of open source 3D printed face shields out there, and the value of a patent on an ‘innovation’ in the field would probably be pretty small. Why bother paying to get a patent in this case?
After exploring that question, the most interesting things I found were:
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UT’s application is for a design patent, not a utility patent. That means that if the patent was ever issued it would only cover the design elements of the face shield - not any of the functional elements. In spite of this, UT only lists functional features among the benefits of the shield. UT was unable to point to any notable design elements (the ones protected by the patent) that the shield may possess.
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UT claims that the shield was made without any reference to the numerous open source face shields that are already publicly available.
This story really starts when the University of Tennessee (UT) released a story about the “UT-Shield,” a 3D printed face shield designed by Professor Maged Guerguis to help protect people from COVID. This in and of itself is (amazingly) not that unique - at this point a number of 3D printable face shields and other types of PPE have been released publicly.
However, two things about the announcement struck me as strange. The first was the ‘patent pending’ part of the announcement. The second was the license that UT planned to release the shield under.
‘Patent Pending’
When many people read ‘patent pending’ they think it means something like ‘I am about to get a patent.’ While that could be true, all ‘patent pending’ really means is ‘I have paid to create and file a patent application at the Patent Office.’ There is a long road between filing a patent and getting a patent, and the fact that an application has been filed is far from a guarantee that a patent will ever be granted.
More interestingly, ‘patent pending’ is usually used in the context of utility patents. However, the patent number touted by UT indicates that they have applied for a design patent, not a utility patent (thanks to my colleague Chris Morten for pointing this out to me).
Utility patents are most likely the types of patents you think of when you hear the word ‘patent’. They are designed to protect inventions and other functional items. Design patents - as the name suggests - are not designed to protect utility or functionality. Instead they protect ornamental aspects of functional items.
The result is an announcement that is less than it may appear at first. UT has applied for a patent but not yet received it (and may never receive it). And the patent they applied for is for the ornamental aspects of the face shield, not any of the functional elements.
This raises the question - what are the ornamental aspects of the face shield that are worth protecting with a patent? After all, they don’t give patents away for free. I asked UT if they would elaborate about what they intended to protect with the patent. The UT media team was incredibly responsive, and told me:
Here is what makes his design distinctive.
- Headband is optimized to minimize material use and weighs only 1 ounce, significantly reducing manufacturing time
- Does not need to be held on with a rubber band, thereby reducing parts that can get contaminated
- Headrest follows forehead profile curvature for long comfortable periods of use.
- Keeps the curvature of the clear visor around the face, reducing exposure to contaminants along the sides of the face.
- Visor spaced to provide maximum clearance for glasses or other wearable medical equipment
- Provides cover to prevent contaminants from entering from above.
- Ergonomic temple tips for comfortable sliding that don’t catch on hair or loose objects
These are all great functional features of a face shield! Unfortunately UT is not applying for a utility patent on any of them. Their patent can only protect decorative elements of the shield. What are they trying to protect? We won’t know until the application is released, which will not happen any time soon. What I do know is that UT’s inability to point to a decorative feature that might be protected if the design patent is ever granted does raise questions about the usefulness of the endeavor.
The License (or, a completely sui generis face shield?)
The second interesting part of UT’s announcement had to do with the license they were offering the UT-Shield under. Setting aside the fact that without an issued patent UT had very few (if any) rights that actually needed a license, I was curious how they planned to structure the license.
The license defines the shield in part as being “developed (i) without the use of any open source designs…”.
As noted earlier, the internet is currently awash with open source, 3D printable face shield designs. Even the most cursory google search would turn up scores of options, and it seems unlikely that anyone would start designing a new 3D printable face shield without trying to develop some understanding of what already existed.
I asked the UT media contact if they could clarify the term in the license. Their response was “Our position is that his design was made from scratch and is distinctive.”
I suppose there are a lot of ways to understand that response. One charitable way is to read “from scratch” as meaning “designed from an empty CAD environment instead of modifying an existing file.” That reading would define “use” incredibly narrowly in a way that excludes referring to existing designs. That strikes me as an exceedingly tortured parsing and an unlikely path to creation, but it may be their best option.
An alternative explanation is that UT’s position misrepresents the development of the shield, and that the definition of the shield in the license excludes any shield that exists in the real world.
Why Bother With The Patent At All?
The good news in all of this is that - at least as of now - it appears that the rest of the world has very little to fear from the UT-Shield. They have no patent today, and if they ever get a patent it is unlikely to cover anything functional about the shield. In fact, the majority of the value of any patent ever issued for the UT-Shield will probably be as a decoration on Professor Guerguis’ wall and a line on his CV (which is . . . fine?).
UT also gets whatever PR bump it gets from this feel good story. But, as Goehrke’s recent article documents, UT’s version of this story has now resulted in some criticism from the larger 3D printed face shield community. That criticism is completely due to the way UT handled the patent part of it. This raises the question - why bother with the patent at all?