Design patents are a form of intellectual property that protect the ornamental features of an article of manufacture. The design can be on any type of product such as clothing, a kitchen chair, or a mobile phone.  A famous example of a design patent is for the shape of the original iPhone (U.S. D618,677 below).​

​The design does not need to encapsulate the entire product. It can cover a portion of the item, such as the mostly rectangular shape of the iPhone face (the dotted lines in the drawing are excluded features of the design’s protection, which is a more involved topic for another day). Another example is depicted below, which is the design on a wicker chair (from U.S. D677,946).

Critical aspects of a design patent are that it must be original, nonobvious, it cannot be purely functional, and it cannot be the only shape that provides a necessary function for the product.
 
So, how do design patents differ from “regular” patents? Often, when someone thinks about a patent they are usually contemplating a utility patent, or a patent for functional inventions. In truth, there are three kinds of patents: (i) utility; (ii) design; and (iii) plant (for more on different types of patents see my earlier post titled “Five Early Steps to Patent Your Invention”).  
 
Utility patents, by far the most common, cover functional inventions, such as products, methods and processes. Plant patents, which are fairly rare, protect asexually reproduced and distinct new varieties of plants. The final type, design patents are for ornamental features of an article of manufacture. Design patents, while often overlooked, are more common than most people realize, are relatively easy to obtain, and can be powerful tools in an IP portfolio.
 
Advantages of design patents include reduced cost of prosecution, faster time to issuance and broad scope of damages. With regard to prosecution, or the process of drafting, filing and obtaining a patent, costs are generally 10-25% of obtaining a utility patent. Preparation costs are low because design patents contain very little text and the crux of the patent is the drawing figures. In contrast, utility patent contains pages and pages of textual description as well as drawing figures. Further, the amount of time it takes to receive a first office action from the United States Patent and Trademark Office (USPTO) can be between a year to three years sooner than for a utility patent application. Additionally, there are no maintenance fees required after issuance, in contrast to three separate maintenance fees to keep a utility patent in force. Last but not least, if you end up in litigation it is generally less complicated to assert infringement and calculate damages in comparison to utility patents.
 
Another check on the positive side of the ledger is a recent Federal Circuit opinion (the circuit court that decides patent appeals from the various federal district courts) that has narrowed the scope of anticipatory references that can be used against design patents during prosecution. In re Surgisil, LLP, — 4th — (Fed. Cir. 2021). The court stated that the description of the article of manufacture in the text of the design patent, here “a lip implant”, limits the type of prior art that can be used to reject the application. In short, if this ruling stands design patents will be easier to obtain going forward.
 
Finally, the rules on use of the term “patent pending” or “patented” generally apply equally to both design patents and utility patents. Without getting into complicated issues related to claim scope and continuation applications, the general rule is that if your product embodies the claimed design, you can use the phase “patent pending” (after you file for your patent application and until it either issues or is abandoned) and “patented” (after the issuance of you patent and until its expiration). There are additional legal requirements related to using these terms on your products, which should be discussed with a competent patent attorney, but the obvious upside is that by filing a design patent you can potentially obtain the right to use these powerful phrases for a fraction of the cost required to file utility patents.        
 
Design patents can provide relatively inexpensive and powerful IP protection. Choosing to file for a design patent and properly protecting it can be critical steps in business development. An experienced patent attorney can help you navigate the many legal, practical and business considerations related to the patent process. If you have any questions about design patents, utility patents or trademarks, please contact me at [email protected] or visit my website at www.chiaraiplaw.com

Launching James T. Kirk into space aboard the Blue Origin New Shepard Rocket raises many questions.  Were the words “take us out” uttered before liftoff?  Did the willy former star ship captain try to get frisky while weightless?  What are the IP and jurisdictional issues if Captain Kirk is teleported while in space (“Beam me up Scotty”)?  The last question may only cause sleepless nights for patent attorneys, IP geeks, and maybe a few trekkies, but these are real issues with potentially trillion dollar stakes.  Property rights and jurisdiction in space may seem like esoteric topics, but with the increased privatization and commercialization of space and space technology these issues will be thrust into the forefront. Think Bezos v. Musk, District Court of Mars (2030).
In truth, there are a few relevant international agreements. Some of the first international space treaties were developed back in the Apollo era when the Russians and the U.S. were battling for space supremacy. The aptly named “Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, including the Moon and other Celestial Bodies” a.k.a. the “1967 Outer Space Treaty”, established that “outer space, including the moon and other celestial bodies, is not subject to national appropriation by claim of sovereignty, by means of use or occupation, or by any other means.” This treaty established lofty principle that space and all celestial bodies should be used jointly and for the betterment of all humanity.  Unfortunately, what this and other treaties failed to discuss are intellectual property rights.
Commentators on space IP have sought guidance in Article 5ter of the Paris Convention for the Protection of Industrial Property (“Paris Convention 1967”).  This treaty provides some guidance on how IP rights effect international travel via “vessels, air craft or land vehicles” and/or during periods of “temporary presence” (e.g., a damaged French shipping vessel forced to dock in Turkey).  While this widely signed international treaty may offer some relevant suggestions for limited circumstances, it is woefully inadequate to provide a framework for the IP space battles of the future. Another often cited area of international cooperation are the agreements between the spacefaring nations jointly working on the International Space Station (ISS).  Unfortunately, the ISS agreements are primarily limited to the actions conducted on the ISS and are generally only agreements between nation states. While the ISS agreements bind contractors for the signatory countries, the thrust of the agreements is towards nation states, not private companies and individuals.  The coming space age will not only revolutionize technology, but also the ensuing IP fights.  A solid space IP framework is critical in view of the rapid privatization of space by Virgin Galactic, Space X, Blue Origin and the thousands of aerospace and communication companies seeking to profit from space based technology.     
Surprisingly, at least to this author, the U.S. has taken the most forward-thinking approach to these issues (I say surprisingly because until the full implementation of the America Invents Act in 2013 the U.S. trailed the international community in many areas of patent law).  The “Patents in Space Act”, states the following:

35 U.S.C. § 105 Inventions in Outer Space
(a) Any invention made, used, or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used, or sold within the United States for the purposes of this title, except with respect to any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party, or with respect to any space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Object Launched into Outer Space.
(b) Any invention made, used, or sold in outer space on a space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space, shall be considered to be made, used, or sold within the United States for the purposes of this title if specifically so agreed in an international agreement between the United States and the state of registry. 
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The Patents in Space Act establishes that any invention made on a space ship or space station under the jurisdiction and control of the United States will be treated as if the conduct occurred within the United States.  Further, individuals and companies will be allowed to avail themselves of the U.S. Patent laws as they pertain to patenting and enforcement if the relevant actions take place on space objects under U.S. jurisdiction and control. Going forward many countries with space programs may pass similar legislation, but as of today the U.S. is the leader in staking out outer space patent rights.   
Turning back to our original question, what will happen if Captain Kirk uses another’s patented technology to beam himself from a French controlled space station to a U.S. controlled star ship on its way to Mars?  If the technology is only patented in France by a third party will Captain Kirk be liable for infringement? Should the 1967 Outer Space Treaty relieve all parties of liability because the actions take place in outer space? Will the third party patentee be able to enforce its rights if they file their teleportation patent in the U.S. via the PCT? Again, these seem like silly questions, but are they silly to Space X and Blue Origin? An international treaty outlining IP rights in space would be a boon for the upcoming Space Age.  Maybe a Starfleet IP Court can be put in charge of monitoring and enforcing international IP treaties, at least until the Romulans arrive.
  
If you have any questions about patents or trademarks, please contact me at [email protected] or visit my website at www.chiaraiplaw.com
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