A particular product might have both functional elements protectable by utility patent and ornamental aspects protectable by design patent. Design patents can also protect the product’s configuration, shape, and/or surface ornamentation. Design patents are limited to the appearance of the product and do not cover structural or functional features or innovations. A design patent in the United States has a term of 15 years from Patent Office issuance.
Similar to a utility patent application, a design patent application undergoes review and examination by the U.S. Patent and Trademark Office (USPTO). In order for a design patent application to issue as a design patent, the USPTO must find that the design is novel (new) and non-obvious when compared to similar prior existing product designs.
Because design patents are commonly used in the fashion industry, we will focus on them. The scope of protection for a design patent is defined by the figures in the design application. Therefore it is extremely important that the drawings of the product for which design protection is being sought be prepared in accordance with Patent Office guidelines. This typically requires retaining a draftsperson familiar with these guidelines, and who routinely prepares drawings for design patent applications.
Design patent protection is available for various types of products. Product examples include eyewear, footwear, totes and handbags, furniture, product packaging, lighting, and even screen shots from electronic displays.
From a practical standpoint, design patents can be a much faster way to obtain patent protection. Examination in the United States typically takes place within a year, in contrast to the two to three years (or more) of waiting for a first action in a utility patent application.
Importantly, design patents provide the same marketing advantages as utility applications. Once a design application is on file, the product can be labeled as “patent pending”; once a design patent has issued, the marking can be changed to “patented."
Design considerations are playing an ever increasing role in the marketplace. Design patents can play an important role in protecting design innovations and help reduce competition, whether they are the only available intellectual property protection or are part of an overall legal strategy.
Barry R. Lewin is a partner with the New York City based law firm Gottlieb, Rackman & Reisman, P.C. He is involved in all areas of litigation, prosecution, and licensing regarding patents, trademarks, and copyrights. Mr. Lewin focuses his practice on prosecution and litigation of patents in the mechanical and electronic arts, including medical devices, optics, telecommunications, material science, robotics and information technology, as well as a wide variety of consumer goods. For more information, please see www.grr.com.
Growth & Funding Strategist