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 Comments are closed.
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Should I Copyright the Trademark in My Patent?
AuthorNick Chiara is an IP attorney with over twenty years of patent and trademark experience. Archives
July 2022
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