Understanding Design Patents 101, A Primer.

While design patents are not as popular as their utility patent peers, they still offer a number of benefits for inventors, particularly when seeking to protect the unique appearance of an item.

In simple terms, a “design patent” protects the way an article looks, as opposed to how it is used or how it works. The specific subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.

Unlike a utility patent, a design patent only has one claim. It relies largely upon the drawings to designate what the patent protects. As explained by the U.S. Patent and Trademark Office (USPTO), “As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, that nothing regarding the design sought to be patented is left to conjecture.”

A design patent application must be examined the USPTO and subjected to a prior-art search. Under U.S. patent law, a design patent will be granted to any person who has invented any new, non-obvious, original and ornamental design for an article of manufacture. However, it is important to note that the design patent protects only the appearance of the article and not structural or utilitarian features. Once granted, design patents have a term of 14 years.

Proving infringement of a design patent also differs. The “ordinary observer” test is used to determine whether a design patent has been infringed. As first explained by the Supreme Court in 1871, the primary question is “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” The “ordinary observer” is not an expert, but defined as “a purchaser of things of similar design” or “one interested in the subject.”

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Patent Law Treaty Legislation

President Obama signed the Patent Law Treaties Implementation Act.  The Act amends federal patent law to implement the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and the Patent Law Treaty. It will take effect one year from the date of enactment.

Under the Hague Treaty, any person who is a U.S. national, or has a domicile, habitual residence, or real and effective industrial or commercial establishment in the United States, can file an international design application for international registration with the U.S. Patent and Trademark Office (USPTO).

This is good news for design patent applicants because it will allow them to file a single application with USPTO instead of separate applications in multiple countries, thereby reducing the time and expense. The Hague Treaty will also increase the term of design patents from fourteen years to fifteen years from grant.

The Patent Law Treaty aims to harmonize and streamline formal procedures for patent applications and patents among signatory countries. Thus, the Act revises U.S. patent application procedures with respect to filing dates, fees, and surcharges for fees, oaths, or declarations and claims submitted after the filing date to bring them in line with international norms.

The most significant change for U.S. applicants is that utility application will now be given a filing date even when submitted without claims. The Act also authorizes the USPTO to establish procedures to revive an unintentionally abandoned patent application and accept an unintentionally delayed claim for priority.

How Can I Help?

The new treaty will offer another tool for protecting our clients’ intellectual property in foreign countries. For more information about all of the other options available to you or your business, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

 

What is a Design Patent?

In general, a “design patent” protects the way an article looks, as opposed to a “utility patent” that protects the way an article is used and works. In some cases, an invention possesses both functional and ornamental characteristics, and both design and utility patents may be obtained.

What Is a “Design?”

A “design” is defined as the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may refer to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.

What Can Be Patented?

As with a utility patent, a design patent must be approved by the United States Patent and Trademark Office. It is important to note that the following cannot be the subject of a design patent:

  • A design for an article of manufacture that is dictated primarily by the function of the article.
  • A design for an article of manufacture that is hidden in its end use and whose ornamental appearance is of no commercial concern prior to reaching its end use.
  • A design for an article of manufacture that is not “original.” For instance, a design that simulates a well known, or naturally occurring object or person is not original as required by the statute.
  • Subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a design patent.

What Rights Does a Design Patent Afford?

A design patent has a term of 14 years from the date it is granted. Like a utility patent, it allows the owner to pursue legal action against infringers. With respect to design patents, courts will use the “ordinary observer” test. The test examines both the similarities and differences between the two products to determine if there is sufficient overall similarity that would mislead the ordinary observer into thinking they are the same product.

How I Can Help

Of course, this post provides only a broad overview of design patents. Before embarking on the patent process, it is advisable to consult with an experienced patent attorney. Please contact me if you have any questions.