WRAL Tech Wire

Design Patents ... Are You Overlooking This Tool To Protect Your Invention?

Editors Note: Kevin Flynn is a Patent Attorney at Daniels Daniels & Verdonik, P.A.Over the last decade a great deal has been written and said about the range of inventions eligible for patent protection in the United States. The business and financial press have been filled with stories about patents for software, business method, medical procedures and new life forms. All of this attention to the potential patentability of these inventions is useful, but it has had the unanticipated side effect of distracting inventors from another useful form of patent protection, design patents.

Wide range of products eligible

Most objects you buy are a combination of two components: the usefulness of the device (excluding aesthetic appeal) and the ornamental aspects of the device. In parallel, many products are potentially eligible for two types of patents: a "utility" or standard-type patent to cover the useful attributes, and a design patent to cover "any new original and ornamental design for an article of manufacture." It is not necessary for the invention to be eligible for a utility patent, however, to be able to obtain a design patent on it. A design patent can cover either or both of:

Design patents may be relevant to many of the objects in our businesses or homes. Recent design patents cover items as varied as a flashlight, a flossing device, a gardening shed, and a wound dressing. The design patent can also cover individual components or assemblies in a larger device such as connector clips, operating knobs for an endoscope, a blower frame, and a design for a computer-generated icon.

Since design patent applications are not limited to disclosures of new technology, design patents are obtained in great numbers. In 2003, more than 16,500 design patents were issued by the US Patent and Trademark Office. The marking on a product that has been granted a design patent will look like "Des. 123,456" or "Pat. D123,456." In contrast the marking for a utility patent will be a 7 digit number without a "D" or "DES," such as US Pat. No. 6,555,555.

Scope of coverage

Unlike the scope of protection from a utility patent that covers every device that performs a certain task in a certain way, a design patent allows the inventor of the novel design to enjoy a limited monopoly on the use of that particular ornamental appearance for fourteen years. Another person's product would infringe a design patent if its ornamental aspects (the non-functional "froufrou") looks enough like the ornamental aspects of the patented design so that a buyer might mistakenly believe it was made by (or with permission from) the owner of the rights to the patented design. Thus, the scope of protection is broadest for the things that people buy without much thought, such as a flashlight or a flossing device, where the buying decision is based on a quick look at the form or decoration of the item.

The protection afforded by design patents is somewhat like trademark or copyright protection. A design patent is similar to trademark protection in that both reduce the risk that a consumer will by one product while thinking it is another. In the case of design patents, the protection also extends to look-alike products that emulate a novel design even if the source of the product is clearly marked.

Some goods can be protected simultaneously by both copyright and design patent protection. Both forms of protection exclude the purely functional aspects of the product and focus on the optional decorative choices. Copyright protection has the advantage of being less expensive to obtain and lasting longer, however design patent coverage is broader than copyright protection. The first difference is that in asserting a copyright claim one needs to prove that the company producing the similar appearing product actually copied the design. Proving that a particular designer had access to a design and was influenced by it can complicate assertion of a copyright rights, especially if the differences between the copyrighted design and the prior art are relatively subtle. The tests for infringement in a copyright case focus on whether the takings from the copyrighted design are substantial and not subject to a fair use defense. In contrast, the test for infringement in a design patent case focuses on the mind of a consumer. For a relatively inexpensive item for which the consumer would not spend much time studying subtle differences between the accused product and the patented design, it is likely that the scope of a design patent could be significantly broader than a copyright.

As design patent protection is rather narrow compared with protection afforded utility patents, design patents are most useful for industry innovators to hold off the copycats. Examples range from sunglasses to automobiles. On the sunglasses end of the range, Oakley attempts to fight against what my son calls "Jokeleys," with an array of 67 design patents for various aspects of eyeglasses or goggles. At the other end of the range, Ford Global Technologies has been granted design patents on items as global as entire vehicle exteriors and as specific as a gear shift lever.

Easier to obtain than a utility patent

Design patents are much less expensive to obtain than the more common utility patents. Design patents are relatively inexpensive to file since preparing an application involves relatively little work for the patent attorney beyond describing the various views of the product that are included with the application.

Unlike with a utility patent, the Patent Office often grants protection without a fight since the grant is for a very thin monopoly. If the Patent Office does initially reject the claim, the response from the patent attorney is usually relatively brief. In contrast, the response in a utility patent application can involve a substantial amount of work to carefully read and distinguish the material cited by the Patent Office or to make precise adjustments to the scope of patent claims sought. Thus while a utility patent often takes three to four years to obtain, a design patent can often obtained within 8 to 24 months.

Assertion of design patents

Design patents can be used alone or in conjunction with other forms of intellectual property against a competitor that sells something too similar to the protected design. While almost all cases settle before going to trial, within the last few years plaintiffs have successfully asserted design patents for a range of products: Serving tray with shrimp (D404,612); Mini stereo system stand (D405,988); and even Decorative beads (used at Mardi Gras) (D398,879). Asserting a patent all the way to trial is very expensive, whether it is a utility patent or a design patent. The large expenditures to assert these design patents at trial demonstrate the value plaintiff companies place on design patents as a valuable tool in protecting their market leadership from look-alike products. Perhaps, design patents are a tool that you should consider for protecting your new product.

Daniels Daniels & Verdonik, P.A. has been serving the legal needs of entrepreneurial and high technology clients for more than 20 years. Kevin Flynn combines the knowledge and experience that he has obtained as an engineer, lawyer, and patent lawyer to provide guidance to clients on a range of patent and other legal issues. He has recently been named to North Carolina's Legal Elite for Patents/Intellectual Property. Questions or Comments can be sent to kflynn@d2vlaw.com