Hiring a design patent attorney in New York is a crucial step if you want to protect your product or invention with a design patent. A utility patent safeguards a product or system’s structural and functional improvements. However, if an item’s unique aesthetics are the focus of the patent, a design patent would be appropriate. Product shape, color combination, and surface decoration are all potential examples of design patents.
Tatonetti IP takes the time to grasp the intricacies of your products and their designs and their resulting role in your overall business plan. With a better understanding of these significant factors, Tatonetti IP can help you secure more effective and robust design patents, erecting a powerful barrier to both blatant “knockoffs” and subtler attempts to replicate your distinctive designs.
Design patents differ from utility patents in several ways. Only brief descriptions of drawing conventions, drawing orientation, and accompanying explanations are included in the text describing a design patent. Many columns of text depict numerous embodiments of an invention in utility patents, which often culminate with one or more claims that specify the invention’s scope.
When a patent is granted for the functionality or inventive structure of a product, it is a utility patent. However, it is a design patent that protects the ornamental or aesthetic look or design of that inventive structure, such as its exterior.
In contrast to design patents, which have a 15-year term from the day they are issued as patents, utility patents have 20 years (with few exceptions) calculated from the date of filing. No further action (such as maintenance fee payments) is needed once a design patent has been granted.
Advantages of Obtaining a Design Patent
Product design has a significant impact on whether the market accepts it. It’s argued in court, for example, that the popularity of the iPhone is at least in part a result of the phone’s design. Moreover, in Apple v. Samsung, damages paid for design-patent infringement exceeded damages awarded for utility-patent infringement to the tune of tens of millions of dollars.
A product can have unique technological elements covered by a utility patent, yet a design patent may protect the product’s appearance and feel. As a result of outmoded technology, utility protection may not always be accessible.
While a design patent may cover a new version of an old product, this is not always practicable. For example, even if headphones have been around for a long time, a design patent may be able to cover a piece of the headphones, a subsequent development, a newer version, or a different design altogether.
Consumers are faced with a blizzard of choices in the market. If you or your business has found success with a great product design, it’s essential to secure your valuable asset against unlawful copying and design theft. Product design is an incredible market driver. Product design is often the most intriguing factor even before buying a product. A product’s design is also tasked with attracting buyers and increasing interest, especially in the era of social media and the Internet of Things.
Because the design of a product is one of the first things that grab consumers’ attention, many inventors and businesses work hard to create items that leave a lasting impact on their customers. A distinctive product design sets your product apart from the competition and can significantly affect how customers view and interact with both your development and your organization.
Patents for designs are typically issued more swiftly than utility patents. While it is customary to wait two years or longer for the USPTO to consider a utility patent application, design patent examination schedules are typically shorter, with design patents typically obtaining the first evaluation in just over a year. Indeed, some patents are granted within a year of application. As such, filing a design patent that may be advantageous if your product is about to hit the market.
A rival or knockoff artist may wish to offer an item that looks identical to your company’s product, capitalizing on branding, customer service, and technology that differentiates your product in the marketplace. Unfortunately, customers may not take the time to distinguish between authentic and counterfeit products.
How Do Design Patent Applications Work?
Applications for design patents are handled by a patent attorney in New York and are examined by the USPTO, which grants them if they are suitable applications. An item’s visual and aesthetic qualities can be protected by a design patent by 35 USC 171. The patent will cover no utilitarian structural or functional features. It is possible, however, to obtain design and utility patents over a single product if both apply, so an Applicant does not necessarily need to choose one over the other.
The application for a design patent can be made about the product’s shape or configuration and its surface decoration. Surface decoration, on the other hand, necessitates a well-defined pattern. The ornamentation can be present on just a portion of the article or cover the entire item in question.
A client must file separate design patent applications for each distinct or independent design. A pair of methods are likely to be considered different if there are no apparent connections between the two articles. Having various shapes and appearances distinguishes one design from another in the case of two or more comparable objects. You can file a single application for a design even if the concept contains several variations, however, there is a chance the USPTO may force the Applicant to separate the embodiments into separate applications.
When an object’s purpose dictates the design, it cannot be patented because it lacks ornamentation. The critical question is whether the object has a distinctive or unique appearance or shape that was not governed by the object’s purpose or function or copied another product’s design. Rather than a copy of an existing object or person, an original design is required.
When an original and ornamental design is incorporated into or applied to a product, you can apply for a design patent. Design patents are less expensive and more straightforward to obtain than utility patents. For 15 years, the owner of a design patent can keep others from using or selling the patented design.
Below are items that design patents may protect:
· Clothing and apparel (shoes, sneakers, hats, scarves, shirts, pants, belts, jewelry, purses)
· Furniture (chairs, sofas, tables)
· Kitchen utensils
· Graphical User Interface (GUI) elements (e.g., icons, virtual characters)
· Car accessories (e.g., entire car design, fenders, bumpers, roll bars)
· Electronic devices (e.g., remote controls, Smartphones, computer equipment
· Toys and stuffed animals
· Medical devices and instruments (e.g., bone screws, dialysis machines, implants)
· Numerous other articles
Typically, a client’s chances of securing a design patent are good if their design is proprietary. Therefore, instead of asking whether an item can be protected via a design patent application, the better question is: “what cannot be protected?” Elements that are subject to other forms of intellectual property protection are one point to consider, in which case one or multiple appropriate forms of intellectual property protection can be sought.
While copyrights come into play for artistic works (e.g., a painting), some items which a client may want to protect with a copyright can also be covered with a design patent, such as an artistic design on a piece of clothing, see, e.g., US D838938:
In the above shirt, which is subject to an issued design patent, the emoji and pattern may be protectable with a Copyright registration.
Prominent elements that are not protected by a design patent are trademarked items (e.g., logo and slogan). Other things for which some consideration should be given before proceeding with a design patent application are solely functional. See, for example, High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013), in which the court stated that a design patent can be invalid if the claimed design is “primarily functional” rather than “primarily ornamental.” Often, functional items can have design features that can be created in different ways. For example, one argument is that the thing is not primarily applicable (i.e., multiple ways of designing a given feature(s)). Of course, if the item is valuable to the client aftermarket testing, filing the design application may be a good idea regardless of the risk of rejection or patent invalidation down the road.
Investing considerably in product design necessitates adequate protection in the form of a design patent. Protecting your designs guarantees that they will not be copied by other businesses.
You should consult with an expert design patent attorney in New York before releasing a product design publicly. If you have already released your design, we recommend obtaining a design patent within 12 months of the design’s release. If you wait around before filing for a design patent, your legal rights may be jeopardized.