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DESIGN PATENTS: ARE YOU MISSING POTENTIAL VALUE ADDED TO YOUR PATENT PORTFOLIO AND YOUR BRANDING PROGRAM?

Updated: Jan 9

U.S. patent law provides several tools for protection inventions, including utility patents, plant patents, and design patents. Design patents protect inventive ornamental features. They are an often-overlooked option and are relatively inexpensive to obtain. Learn more below and avoid missing potential value added to your patent portfolio and your branding program.


I. What is a U.S. design patent? A tool to stop unauthorized copying of product appearance and/or ornamentation.


U.S. design patents are not for stopping others from copying the way a product works or what a product is made of. Instead, U.S. patent law provides utility patent protection for new, inventive, and useful compositions, articles, and methods of manufacture. Design patents are not for protecting artwork or "designs" separate from technology or industrial application. Instead, U.S. copyright law provides protection for certain works of art, and federal unfair competition law offers protection for stylistic trademarks and trade dress.


U.S. patent law provides design patent protection for new and inventive ornamental designs embodied in an article of manufacture. U.S. design patent holders can sue infringers in federal court to stop unauthorized copying and sales of infringing products and obtain relief in money damages. Design patent holders can also initiate investigations at the U.S. International Trade Commission to stop imported infringing products at U.S. borders.


Design patents can sometimes provide an effective complementary tool in brand protection. In some cases, a patented design also functions as a source identifier for the manufacturer and/or seller. The design patent may be asserted in an infringement lawsuit in combination with claims of trade dress or trademark infringement.


Design patents and utility patents, both grounded in technology, go hand in hand. In many cases, an invention covered by utility patent(s) also includes features that can be protected by design patent(s). While a utility patent can cover a far wider range of accused products, a design patent can be an effective tool in combination with utility patents in enforcement. For example, a new power drill may be protected by one or more utility patents covering features such as gear assembly arrangement and functionality. The same new power drill may also be protected by one or more design patents covering the appearance of features such as air vents located in a body of the drill. Some seemingly ornamental features cannot be protected, such as where the above-mentioned air vent design is dictated purely by function. The utility patent(s) in this example may be used to stop competitors from making and selling any infringing power drills or similar devices that have the same gear assembly arrangement and functionality. The design patent(s) in this example may be used to stop competitors from making and selling essentially the same power drills with air vents with the same or similar appearance.


II. How can one obtain and maintain a U.S. design patent? By filing a design patent application with the U.S. Patent and Trademark Office and achieving patent grant through examination.


A design patent is not obtained by a simple registration process. Rather, a design patent application filed is filed with the U.S. Patent and Trademark Office and examined for compliance with U.S. patent rules and Patent Office regulations before any grant. A Patent Office examiner performs a search of existing designs in articles of manufacture to compare with the design invention claimed by the patent applicant. The applicant and examiner work over a period of one to two years in efforts place the application in condition for grant. Skillful and experience-based preparation and prosecution by applicant can minimize the examination period, thereby minimizing overall cost of procuring a design patent.


Design patents are technical documents that address technical subject matter like utility patents. While a utility patent includes written "claim(s)" that define the legal bounds of the patent rights, a design patent includes one numbered claim that references one or more drawings that define the legal bounds of the patent rights. The drawings show a product or article of manufacture and emphasize design features that constitute the claimed design invention. The claimed design is shown by annotations, for example, by broken, chained, and/or solid drawing lines.


Design patent drawings must comply with strict requirements imposed by U.S. Patent Rules and Patent Office Regulations, and drawings are central to infringement and validity issues; great care should be taken in their preparation.


Nonetheless, design patents are far less expensive to prepare, file, and prosecute through examination at the U.S. Patent Office than utility patents. Design patents are also far more likely to be granted than utility patents applications and have a far shorter average examination pendency. The examination timeline can be even further contracted using expedited examination options. (See ADJUSTING SPEED OF U.S. PATENT EXAMINATION (usaipr.com)).


Design patents have a term of 15 years. No maintenance fees are required during the term.


III. What should I know before pursuing a design patent? Design patents provide narrow scope of protection and can be costly to enforce.


Design patent infringement is determined by comparing drawings of a patented design in an article of manufacture with a design embodied in an accused product. Consequently, the scope of protection is limited to designs of same or similar appearance in a same article of manufacture. Comparatively, utility patents can cover a range of products and different articles of manufacture, while a single design patent can cover a far more limited range of accused products and only a single article of manufacture. A design patent is prone to design-around while enforcement can be time consuming and costly, potentially requiring litigation and trial and defense against validity attacks. The relatively low cost, however, of obtaining a design patent often justifies filing for protection despite these concerns.


IV. Can U.S. design patents be enforced in foreign jurisdictions? No. Foreign patent protection is separate but can be related.


U.S. patents are geographically limited. Foreign design patent rights or the equivalent are required for enforcement in the foreign jurisdiction. U.S. design patents can form the basis of corresponding foreign design patents that benefit from the U.S. filing date. Likewise, foreign design patent filings may establish priority for later filed U.S. design patents. Consult your attorney about foreign patent protection and associated timing requirements before disclosing your invention anywhere or before filing a U.S. design patent application.


V. Is it too late to file a design patent application if my product is public or another related design or utility application has already been filed? Not necessarily.


A U.S. design patent application can be filed within one year of initial disclosure in some circumstances. It is also possible to file a design patent application after one year if, for example, based on an earlier filed utility patent application.


VI. What should I look for to hire counsel for design patent needs? Hire a registered patent attorney with a background in technology and experience obtaining and enforcing both utility and design patents.


Your design patent attorney should have a technical background and experience in both utility patent and design patent counseling and representation to provide competent service. Your attorney should have adequate support infrastructure for docketing and Patent Office communications throughout the course of examination.



 


If you need design patent counseling or representation, contact us. Our attorneys have decades of experience in both utility and design patent drafting, filing, prosecution, and enforcement. We have successfully obtained many design patents for clients and achieved favorable outcomes in design patent litigation and Patent Trial and Appeal Board proceedings and appeals.


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