“While design patents are the exact right tool in the toolbox at certain time, such as when a temporary restraining order is desirable against an infringing competitor showing off a knockoff at a tradeshow, they are a specialty tool. Design patents are more scalpel than a Viking sword.”
You have probably heard of a company called Apple. They sell computers, watches, tablets and all kinds of accessories. You have probably also heard that Apple was engaged in a patent war with Samsung Electronics, which was fought all over the world and finally resolved after many years of litigation. What you might not be familiar with is the fact that, in the United States, it was not Apple’s utility patent portfolio that was found infringed by Samsung. Apple had to rely on design patents to prevail over Samsung.
If design patents are powerful enough for Apple to use to prevail over Samsung, then it makes sense that anyone who has a unique visual presentation to their products should consider whether adding design protection to their portfolio is a wise decision— which it probably is. Of course, it is important to understand what one is obtaining, and while design patents are the exact right tool in the toolbox at certain time, such as when a temporary restraining order is desirable against an infringing competitor showing off a knockoff at a tradeshow, they are a specialty tool that you will want in your toolbox for the right occasion. Design patents are more scalpel than a Viking sword.
Know Your Rights
Notwithstanding the reasons to consider a design patent, it is absolutely essential to understand what rights are being obtained with a design patent and to understand the limitations of design patents themselves. And one big limitation is that design patents do not protect an idea any more than a utility patent protects an idea. Ideas are simply not something that can be protected by any form of intellectual property.
Similarly, a design patent does not protect an invention, at least not how inventors and patent attorneys typically think about an invention. Rather, a design patent only protects ornamental design of exactly what is pictured. A design patent focuses on the exterior, not the interior, and certainly not the function. This is why many patent professionals refer to a design patent as a picture patent. Referring to a design patent as a picture patent is helpful when understanding the limits of the protection because designs are all about the drawings, and little (if anything) other than what is explicitly shown in the design drawing is covered by an issued design patent.
While the test for infringement is based on an ordinary observer, Egyptian Goddess v. Swisa, different looks should be considered to require different design patents to protect variations. In other words, if there are alternative visual presentations possible a single design patent would not protect both unless they are very, very similar (i.e., close to identical with only very subtle variation). Indeed, it is best to assume that each unique variation, no matter how slight, should be covered in its own design patent application.
It is also essential to understand that design patents protect only the way something looks, not the way it operates. To protect the function, structure, operation and interior workings of an invention, consider filing either a provisional patent application or a non-provisional patent application in conjunction with a design patent.
This doesn’t mean that design patents aren’t valuable; they are. But where utility protection is available, a portfolio made up of only design patents would be wholly unsatisfactory. A proper mix of utility protection and design protection is ideal.
Some final thoughts on design patents:
- Although weaker than utility patents, design patents do give you the ability to use the coveted terms “patent pending” and “patent issued,” as is appropriate.
- Design patent applications are heavily leveraged on patent drawings. You absolutely cannot skimp on professional patent illustrations; they are EVERYTHING to a design patent application.
- For newly filed design patent applications the term is 15 years, and once the design patent has issued there are no other financial obligations necessary to keep the design patent pending for the full 15-year term. This is different than when dealing with utility patents; utility patents have ever increasing maintenance fees due at 3.5, 7.5 and 11.5 years after issuance in order to keep the utility patent alive and out of the public domain.
- Design patent applications include only a single claim, while utility patent applications can have multiple claims.
- Restriction between multiple, distinct inventions is discretionary on the part of the examiner in utility patent applications, while it is mandatory in design patent applications. This means if you have more than one design you will almost certainly require multiple design applications unless the variation is quite small.
- Foreign priority can be claimed for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications.
- Utility patent applications may claim the benefit of a provisional application for up to 12 months, but design patent applications may not claim priority to a provisional patent application.
- A Request for Continued Examination (RCE) may only be filed in utility and plant applications, while RCE is not available for design applications.
- A continued prosecution application (CPA) is available for design applications (and not for utility applications). Functionally, an RCE and CPA are quite similar from the applicant’s perspective.
- Utility patent applications filed on or after November 29, 2000 are subject to publication, but design applications are not published.
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