Editors Note: Kevin E. Flynn is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A.In an earlier article published in Local Tech Wire (see link below), I explained that the lesser known “design patent” is available to protect innovative appearances of virtually all products, from medical devices to platters of frozen shrimp…they are also available for computer icons. Using a design patent to protect computer icons provides software developers with a limited monopoly on a distinctive icon, thus adding an additional barrier to impede the competition and thereby additional value to the product.

A company owning a design patent can stop competitors from making knock-off products that have the same ornamentation as the patented design when a buyer might mistakenly believe that the knock-off product was produced or licensed by the company owning the design patent. For example, the 67 design patents owned by Oakley help keep Oakley sunglasses distinctive in the marketplace by warding off the clone makers.

The law authorizing design patents limits issuance of them to the “ornamental design for an article of manufacture” (in other words the way physical things look). So, it may be surprising that computer icons, electronic images that come and go, can be covered.

‘Article of manufacture’

The United States Patent and Trademark Office, after some initial resistance, has concluded that computer icons can be claimed as design patents if worded as an ornamental attribute for a portion of a display screen. Thus, the display screen acts as the “article of manufacture” required in each patent while the computer icon serves as the “ornamental design” on that article.

Since icons can be protected, a company that develops innovative software can add design patent protection for novel computer icons to the range of tools used to protect its innovation. Design patent protection is worth considering because traditional copyright protection, while useful in protecting some aspects of computer software, is not well adapted to protection of computer icons. Even if the owner of the software can show someone copied the icon design, the defendant in a copyright case can argue that the icon should not be given copyright protection at all. The argument would be that the simple icon lacks sufficient creativity or has become so closely associated with the concept it represents that the limitations on the scope of copyright known as the “scenes a faire doctrine” or merger preclude giving the monopoly granted under copyright law.

Different from copyrights

Patents, including design patents, are different from copyrights in that the patent laws are intended to create monopolies to reward innovation and a patent application considered suitable for receiving allowance by the United States Patent and Trademark Office receives a “presumption of validity” if challenged in court. Filing for a design patent gives a company additional bragging rights for the patent pending or patented design.

While it is unlikely that any company will gain a substantial competitive advantage from having a slightly different icon for the delete trash can, a company creating specialized software for such applications as data mining or manipulation of biotech data may create new functions and thus develop new icons to represent those new functions. These new icons may ultimately become so linked to the new function that the icon represents that it would be a competitive disadvantage to build software that uses some other non-recognized icon.

Put another way, the competitive disadvantage for a company’s competitors is a really a competitive advantage for the company that can secure a monopoly on the use of a particular icon image.

While the protection for a patented design is narrow, the costs for obtaining the protection are slight. The cost for filing a design patent is apt to be under a thousand dollars. In contrast, depending on complexity, the cost to draft and file a utility patent for a novel feature is likely to be significantly higher. The difference in cost arises from the difference in the amount of work necessary to create the two applications. A utility patent is likely to have twenty to thirty pages of detailed drawings and text while a design patent has very little beyond the title and an image of the icon as part of a screen display. For a design patent, the fees paid to the government for a company with less than 500 employees is only $170 to apply and another $240 to issue the design patent. Unlike utility patents, the design patent term of 14 years comes without the need for substantial intermittent renewal fees called maintenance fees.

The take-home messages are: (1) design patents are an affordable means for obtaining additional protection to protect an innovative product; and (2) computer icons can be protected with design patents.

Earlier article on patents: www.localtechwire.com/printstory.cfm?u=6872

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. Questions or Comments can be sent to kflynn@d2vlaw.com