How to protect ideas and designs with design patents
Overview of a design patent
When one thinks of a patent, what might come to mind is a complex mechanical or electrical device. These are probably examples of utility patents, which cover and protect the functionality of inventions. However, most people are likely not as familiar with design patents, which protect the ornamental appearance of articles.
A design patent may be granted in 1-2 years or even less than a year in some cases, while the patent office usually takes at least 18 months to issue a first office action on a utility case. Design patents are cheaper because they don’t require any kind of written description or long descriptive claims which are the largest contributors to the cost of drafting and filing a utility patent. Design patents are only permitted to have one claim that usually refers to the drawings showing the design. This simplicity means that design patents may be obtained easier, faster, and cheaper than utility patents. While it may be easier to obtain a design patent as compared to a utility patent, it is still important to see a patent attorney who knows how to patent a design, as strategies are involved in obtaining broader or more effective protection of a given design when preparing the drawings for the patent application.
Another difference is that maintenance fees are not required for a design patent after it is granted. Once the appropriate fees to file and issue the design are paid, the patent holder does not need to pay any other fees during the life of the patent.
One similarity between design and utility patents is that both must be submitted to the United States Patent Office (USPTO) for examination by qualified patent examiners before a patent is granted. Like utility patents, design patents are evaluated for novelty, non-obviousness, enablement, and definiteness, as laid out in the Patent Act. Unlike utility patents, design patents are also examined for ornamentality. If an application is allowed by an examiner at the USPTO, then a patent is issued. Design patents are enforceable for 15 years from the date of grant.
Design patent rights
The rights associated with either kind of patent are given quid pro quo. An inventor “donates” his or her idea to the public in exchange for the right to exclude others from practicing the claimed invention for a limited time. As a result of their contribution to society, a design patent owner has the ability to sue others that are making or selling a product that a consumer might mistake as the patented product. One benefit of applying for a design patent is the ability to mark products with “patent pending” which can ward off competitors who do not want legal trouble.
The test for determining whether a design patent is infringed finds origins in the 1872 Supreme Court case of Gorham v. White, which dealt with the ornamental design of silverware. The test developed in the opinion of the Gorham case is known as the “ordinary observer” standard. If an ordinary observer finds a design to be too similar to a patented design, then the accused product is infringing the rights of the patent owner. Courts generally look to the intended purchaser of an item to decide who an ordinary observer might be for a particular product. The line between infringement and non-infringement may be difficult to see, but skilled patent attorneys can provide valuable counsel regarding whether a product is too similar to a patented design under the ordinary observer standard.
What to patent and how many should be obtained
To know if obtaining a design patent is worthwhile, one should determine if the value of the idea or invention is mostly dependent on its looks rather than its function. If a product’s value is dependent on both aesthetics and function, it may be useful to obtain both utility and design patents. One does not necessarily preclude the other as it is possible to separate the design from the function and secure patents on both aspects of an article.
Furthermore, one should consider filing design patents for both the overall product and unique components of the design. Design patents such as these protect against competitors who target specific design elements without infringing on the whole of the product design.
Multiple design patents for key product parts can be very useful. One strategy is to focus on parts that have the greatest potential for repair or replacement as they are most likely to be copied, especially with aftermarket sales.
Getting help with design patents
The USPTO has a guide for design patents that can be useful for those who desire to learn more about design patent law.
Article written by K. Russell Griggs