IP Practice Vlogs: Design Practical Exercise – Protecting Variable Design Choices and Color

In the latest episode of IP Practice Vlogs, it’s time for another design patent practical exercise. We previously did a design exercise on patenting Apple’s AirPods. This time we are going to patent the lightsaber. Specifically, as an example, we will be using a custom made lightsaber from Disney which was built by my husband at an experience at Galaxy Edge called Savi’s Workshop. The lightsabers that are assembled and sold at Savi’s workshop are all customizable in which the design or physical appearance actually vary depending on the customer’s design choice. I’m going to show you why this custom-made lightsaber is actually a very good candidate for design patent protection despite its variable design.

Whenever you’re confronted with patenting a product that is going to market, you want to have an idea of how it’s going to be made, used or sold. The way this product is sold at Savi’s Workshop is that the customer picks a theme for the lightsaber and that theme comes with a combination of preset components for the hilt from which the customer then chooses to build their lightsaber. The components of the hilt, which the sleeves, pommel caps, etc. are variable. But all the lightsabers, no matter what kind of theme the customer chooses, have a common component and that is the chassis in the center. The components of the hilt are assembled onto the chassis.

The chassis for this lightsaber contains a receptacle for holding a Kyber crystal. In Star Wars lore, a Kyber crystal is a rare type of crystal that is attuned with the Force which the Jedi and the Sith used in the construction of their lightsabers. It is also known as a plastic container with an RFID chip inside. The chassis contains electronics that read the RFID chip and a controller then causes the blade to emit the color of the Kyber crystal. Disney sells Kyber crystals separately from the lightsaber.

As mentioned, the hilt components are customizable based on customer preference while the chassis is a standard component. The best way to protect that design concept is to patent a generic version of the hilt components and the chassis that is generic to all the lightsabers of this type. You do so by capturing the dimensional relationship of the hilt parts and their placement on the chassis that would be common to all these customizable lightsabers. Learn more on how to do so in the accompanying video.

When it comes to protecting the Kyber crystal, which is separately sold by Disney and can be purchased via their various online marketplaces, you actually don’t want to claim these little crystals themselves because could get an anticipation rejection in view of rocks. Therefore, from a design patent perspective, you want to protect the capsules that are sold with each crystal having corresponding colors.

One of the critical design features of these capsules is actually the colors. If you think about it, these lightsabers retail for $250. If you’re paying that kind of money for the experience and the product, you can’t just have one itty bitty crystal that goes with it. Your $250 lightsaber only lights up in one color? No way. Any reasonable person will purchase Kyber crystals at scale, obviously. So, color is an important design aspect and you can claim color in designs. When you claim color as a patentable feature, the examiner may deem the different colors to be patentably distinct from each other, or not. Which means you will have to decide whether to file separate design applications claiming color for each of these capsules, or file them all together in one application as different embodiments. By filing them together, the examiner may restrict between the embodiments indicating that the colors are patentably distinct. In which case, you’re going to have to file continuations. But if the U.S. Patent and Trademark Office (USPTO) does not give you a restriction, then you are stuck with the USPTO stating the colors are not patentably distinct, which may not be a great thing from an enforcement perspective. So, by filing separate applications for each color, you are asserting that the colors are patentably distinct. It may be a little expensive, but it’s worth it.

Watch the video for more on protecting color with design patents.

This vlog is dedicated to my daughter, Victoria, who was born last October and will be inheriting this lightsaber and all of her father’s Star Wars gear. Congrats on winning the birth lottery, Victoria.  

Acknowledgments

The IP Practice Vlogs are created in collaboration with my partners at Global IP Counselors, LLP, Nomugi Tomoyori (video editing and styling) and David Tarnoff. My particular thanks to Dave for the many years of mentorship and tutelage. I hope I am as good of a teacher as you have been.