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Tatonetti IP Design Patent Filing Includes Responses to Office Actions & Rejection Appeals

Work with a skilled IP attorney to complete a thorough patent design search and ensure your invention is eligible for a patent, copyright, or both. Our team can help you file a design patent in New York and abroad. We specialize in IP litigation and can appeal patent rejections and any other USPTO actions regarding your application.

Typically, a client’s chances of securing a design patent are good so long as their design is proprietary. Elements that are subject to other forms of intellectual property protection are one point to consider, in which case one or multiple design patent application forms can be filed.

Common Design Patent Examples:
  • Clothing and accessories: Shoes, sneakers, hats, scarves, shirts, pants, belts, jewelry, purses, etc.
  • Furniture: Chairs, sofas, tables, etc.
  • Kitchen utensils: Silverware, cutlery, small appliances, etc.
  • Packaging: Materials used, shape and pattern of packaging, etc.
  • Graphical User Interface (GUI) elements: Icons, fonts, virtual characters, etc.
  • Car accessories: Vehicle body design, fenders, bumpers, roll bars, etc
  • Electronic devices: Remote controls, Smartphones, computer equipment, etc.
  • Toys: Stuffed animals, action figures, crafting sets, etc.

What isn’t protected by a U.S. design patent?

Instead of asking whether an item can be protected via a design patent application, the better question is—“What cannot be protected?” 

Obvious elements that are not protected by a design patent are items that are trademarked (e.g., logo and slogan). Also consider items that are solely functional, as you will likely file for a utility patent instead. See 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.”

Design Patent vs. Utility Patent

Design patents are easier to obtain than utility patents since a design patent only protects the design and ornamentation of an object, not its function. 

Oftentimes, functional items can have design features that can be created in different ways. This is one argument that the item is not primarily functional. For example, there are multiple ways of designing a given feature or features. 

The best design patent examples are in silverware: you can’t redesign a fork or spoon, but you can definitely patent your new look for a fork or spoon. Fill out our contact form to speak with a patent attorney and determine what type of patent you need.

Design Patent vs. Copyright

While copyrights come into play for artistic works, such as a painting or song, some clients may want to protect their invention with both a design patent and a copyright, such as an artistic design on a piece of clothing, see, e.g., US D838938:

Copyrights protect the creative works and details of your invention. In the above shirt, which is subject to an issued design patent, the emoji and/or pattern may be protectable with a copyright registration as well.  

The design patent would protect the overall form and pattern of the shirt. This is where design patent drawings are important in showcasing all of the claims in your application.

Of course, if the item is valuable to the client after market testing, filing the design patent application simultaneously with the copyright may be a good idea regardless of the risk of rejection or patent invalidation down the road.