Have You Considered Design Patents?
Design patents can be a powerful, and often underutilized tool, for protecting your products and market position. Design patents protect the ornamental features (think appearance) of an article of manufacture, as opposed to protecting its structure and function. Some items are obvious candidates for design patents because consumers are primarily attracted to them based on their appearance. However, other products derive their value from their structure and operation and their appearance. These products may be candidates for both utility patents and design patents. For example, while consumers are certainly attracted to Apple’s iPod because of its ability to play digitally recorded music, the company also seeks to protect the appearance of the device through design patents. Here are a couple of iPod examples: U.S. Design Patent No. D634,297 and D644,264.
Here are some key reasons to consider protecting products with design patents:
1) Design Patents May Provide Some Protection Once the Structure and Function of the Product Becomes Old in the Art
Certain products are commodities in terms of their function or are otherwise known in the art. Thus, utility patents will not be an option. However, by designing in ornamental features and protecting them with a design patent, you may be able to at least prevent direct copying of the product. A strong design can lead consumers to associate the appearance with the function, and consumers may ultimately be reluctant to buy competitive products that operate similarly but look different. These considerations likely influenced Apple’s design patenting strategy with the iPod.
2) Design Patents Provide “Trade Dress” Type Protection Without Requiring Acquired Distinctiveness
A product’s design can be protected as “trade dress.” However, to do so you have to show that the appearance is functioning as an indication of the source of the product by establishing that the trade dress has acquired “secondary meaning.” This showing is not required for design patents, although the design must be novel and non-obvious to qualify for patent protection.
3) Design Patents are Relatively Inexpensive
Design patents consist of a set of drawings and a short description of the drawings. Thus, they are far less complicated than utility patents and far less expensive. It is important to be careful and ensure that all of the views of the drawings are consistent with one another to avoid problems in the Patent Office, but they are still less expensive than utility patents.
In addition, there is an expedited examination procedure in the U.S. Patent and Trademark Office which can be used to accelerate the time frame for obtaining a patent. This can be important if the aesthetic features of the product have a short shelf-life because designs change frequently.
Consider whether design patent protection makes sense for your next product!
Hi Steve, as a patent illustrator for over 30 years and owning an illustration firm for 26 years, I have seen my share of design cases (I’ve managed thousands of design cases).
From an illustrator’s point of view, it is important to make sure that the drawings that you initially file are done by a competent experienced patent illustrator. I’ve had to work on rejected design drawings that were originally filed as either photos or crude sketches that severely limited the true design of the product when it came time to correct them and make them formal. If the initial drawings or photos do NOT show the shape and contour, then even adding shade lines to a formal drawing would be considered New Matter! If all the views of the design are not shown in the initial drawings, then adding them in the formals may be limiting as well.
A good simple example is if you filed a wine bottle design with the bottom being recessed which is considered to be an important part of the design. If you filed informal drawings without any shading, the bottom view would show a simple circle (the outer diameter). The side view(s) would not show this recess as well. Without proper shading in the originally filed drawings, any attempt to add this recessed area when producing formal drawings would be considered New Matter and rejected. Though this is a simple example, you can imagine other cases where improperly filed informal drawings could limit the real design.
I’ve had to “correct” other illustrator’s work because of inconsistencies between figures and/or improper or no shading. Unfortunately there are a lot of illustrators than can produce “good enough” drawings for utility cases, but without enough experience, the design drawings they produce lack the detail to accurately define the shape and contour of the product. I’ve also seen several design cases that have been allowed but contain errors which would prove to be a problem if it ever goes to litigation. This is because of a inexperienced illustrator and a poor examination.
I had an interview with one design patent examiner from the PTO who showed me several poorly drawn cases and compared them to several others that were drawn by excellent illustrators. He told me that patent illustrators need to improve the drawings the produce. I asked him if the poorly drawn cases were allowed in which he said “Yes”. Well then maybe the problem isn’t so much the illustrators but the examiners who accepted the drawings. So with this in mind, it’s important to have an illustrator who is experienced enough to know not just what figures to draw but to know how to properly shade the views. You never know which examiner will review your case!
Finally, when done correctly, the use of phantom lines can add flexibility to filing original design drawings. If the design is fairly weak, then adding phantom lines of other features can be changed to solid lines when providing formal drawings if the original design is rejected by the examiner. Changing phantom lines to solid is not considered New Matter, however, the same rules would apply to adding shading to the changed design, so the phantom lines have to also be able to show shape and contour. Phantom lines are sometimes drawn with less accuracy since they are not considered to be part of the design. However, this can hurt the design if the phantom lines are turned into solid ones because of the inaccuracy of the originally filed drawings. Also if the design is filed in other countries where phantom lines are NOT allowed, then it’s important to make sure that the drawings are filed accurately right at the start!
I’ve worked with hundreds of attorneys in both law firms and corporations. I’ve learned a lot when dealing with the attorneys who work on mainly design cases. This experience can only be learned over time and with making mistakes and learning from them. Be careful who you choose to do your drawings!
On a final note, please understand that good drawings take a long time, especially when shading for design cases. Don’t expect a good illustrator to charge $50 for a design sheet when it may take a couple of hours just to shade properly. Design cases typically take twice the time then utility cases. When illustrators loose clients because they charge too much, they are tempted to lower their quality to remain competitive. This is not a good idea for design cases! The drawings ARE the claims. Would you consider spending less time to accurately write the claims for your biggest client because of competition? Your clients depend upon YOU to write (or in design cases, draw) the best claims to protect their idea. Hire the best!