Bitlaw

Design Patents

Executive summary:

The patent laws of the United States provide for the granting of design patents to any person who has invented any new, original, and ornamental design for an article of manufacture. The term "article of manufacture" includes manufactured items such as hand tools, light poles, computer monitors, and printers. The discussion of design patents in BitLaw is divided into these four sections:

Scope:

A design patent protects only the ornamental appearance of an article, and not its structure or utilitarian features. If a design is utilitarian in nature as well as ornamental (such as computer mouse design which is more comfortable to use), a design patent will not protect the design. Such combination inventions (both ornamental and utilitarian) can only be protected by a utility patent. In other words, design patents provide meaningful protection to a product's design when the design was developed for the purpose of creating an ornamental look to a product. If the design was used for a product because that designed worked better, or cost less to make, then a design patent will not protect that product's design.

A design patent has a term of 14 years from the date of issuance.

Under the 2008 Federal Circuit opinion in Egyptian Goddess, Inc. v. Swisa, Inc., the test for determining whether a design patent is infringed has changed. Under the new standard, one must merely determine whether the accused product would appear "substantially the same" as the patented design from the point of view of an ordinary observer. The old test also required examining the prior art to determine where the "point of novelty" in the design lay, and then determining whether the accused design incorporated that point of novelty. While the Egyptian Goddess decision did away with the point of novelty part of the test, prior art can still be introduced by the alleged infringer to show that the ordinary observer would not find the accused product to be substantially the same as the patented design.

Process:

An application for a design patent is much simpler than that for a utility patent. The specification is short and follows a predefined form. Only one claim is permitted, and it also must follow a specific form. The drawings in a design patent are similar to those in a utility patent, except that design patent drawings are created to show the ornamental features of the invention rather than its utilitarian aspects.

If the application is allowable, the Patent and Trademark Office will forward a notice of allowance to the applicant's patent attorney. As is the case with a utility patent, an issue fee will be required for issuance of the patent. However, the issue fee is only $215 ($430 for a large corporation), as opposed to $625 (or $1,250) for a utility patent. No fees are necessary to maintain a design patent in force.

Design patents and copyrights:

Design patents and copyrights both cover aesthetic features of articles. Copyright is generally used for non-utilitarian articles (meaning articles which exist only for their looks and not for their usefulness). Examples of non-utilitarian articles covered by copyright include paintings, songs, books, and sculptures. Copyright does extend to utilitarian articles, but only to the extent the aesthetic features of the article can exists independently from the article. An example of this would be a sculpture which is used as the base of a lamp, or a painting which is applied to the side of an automobile.

Design patents are utilized to protect the novel ornamental features of a utilitarian object. In cases where the aesthetic features themselves cannot be separated from the utilitarian object, a design patent can protect the ornamental features, while copyright protection cannot. For example, a design patent could protect the look of a computer CPU case, which would not be protectable under copyright law. Note, however, that if the allegedly "aesthetic" nature of a feature is in fact dictated by utilitarian motives (such as the sleekness of certain automobile parts designed to cut down wind resistance), then those features are protectable only by a utility patent. Thus, even though the feature can have a utilitarian purpose, the look of the feature cannot be dictated by utilitarian concerns.

Design patents and trademarks:

The shape of a product or container can serve as a source indicator, and therefore can be protectable as a trademark (see the BitLaw discussion of trademark devices for more information). The same product shape may also be protected under a design patent. Thus, dual protection from both design patent and trademark laws may coexist. Of course, the "protection" given under the two laws is quite different. Design patents prohibit a third-party from making, selling or using a product of the protected design. To infringe a design patent, the infringing container and the container shape shown in the design patent must look alike to the eye of the ordinary observer. It makes no difference what is inside of the container. Under trademark law, the infringing container must be such as to cause confusion, mistake, or deception among the consuming public. This determination will, of necessity, take into account what was actually sold within each container. In addition, courts analyzing a trademark infringement action would look at the buying habits of the consuming public, and the sales methods used by each manufacturer.

Computer Technologies and Design Patents:

Design patents are a useful tool to protect innovative designs in computer equipment and peripherals. New, original commercial designs for products can be protected relatively inexpensively, thereby preventing a competitor from making a product which looks identical to an existing product. An example design patent for the computer industry would be a patent on the look of a computer monitor (such as the Acer monitors), CPU boxes (such as the original Macintosh computers) or peripherals (such as the look of a Global Village modem).

In addition to these standard uses for design patents, patent attorneys are expanding the use of design patents by applying for protection on software displays. Design patents have already been granted on icons which appear on computer displays, and the uses of design patents will continue to expand.