Unlike with a utility patent, a person who can patent a product design in NY will only have protection for the item’s design. In New York and other parts of the United States, a patent can be obtained by anyone who creates any “new, original, and ornamental design” for any item. The full text can be found in 35 U.S.C. 171. Again, an invention’s aesthetic or non-functional qualities can be protected by obtaining a design patent. To be eligible for patent protection, a design must be “new, original, and ornamental,” which means that someone with ordinary skill in the relevant art cannot have anticipated it. In addition, the item of manufacture must have an unobvious appearance and not be solely the result of an unmistakable arrangement of the old components, even if a design may comprise old components.
By prohibiting others from employing, producing, or marketing the idea for a set period after the patent is issued, patents protect the creators of new, novel, and non-obvious designs and items.
In the US, patents can be issued in three primary categories: plant, utility, and design.
Any innovative and non-obvious design for an object of manufacture that meets the requirements of US patent law can be protected by a design patent.
Again, a design patent will only cover the design of an item and not the functionality or construction.
The visual aesthetic features incorporated in or applied to a product of manufacture constitute its design for patent purposes. A design patent can pertain to the following, given that design is manifested in appearance:
· Form or arrangement of parts
· Embellishments made to the item’s exterior
· Incorporation of both the item’s shape and its surface decoration
A patent on a new design will eventually expire. A design patent obtained by the United States government lasts 14 years from the invention’s issuance. Once issued, a design patent doesn’t require any more payments to keep it valid, unlike utility patents.
Utility Patents and Patenting Product Design in NY
The distinction between a utility patent and a design patent is commonly misunderstood. As we’ve already established, a design patent covers an item’s outward appearance solely. On the other hand, a design patent may cover “how” an object functions simply because of its shape, but this does not provide the same level of legal protection as a utility patent.
If you want to protect the method by which a manufactured item acts, the material makeup of the item, or the underlying machine, you’ll need a utility patent. Although design and utility patents expire at different times, it is not rare for innovators to get both simultaneously.
How Do Design Patents Work in NY?
A design patent safeguards the aesthetically pleasing form of a manufactured good. The product’s surface, shape, and configuration all fall under design patents.
A design patent only protects the aesthetics of an item and not the underlying design or functionality. Therefore, a design patent application is reviewed and examined by the USPTO.
The USPTO will only grant a design patent if the design is considered innovative and non-obvious.
The drawings included in a design patent application establish the boundaries of the patent’s protection.
Drawings of the item of manufacture must be prepared in conformity with rules established by the Patent Office. To do so, you need to hire a draftsman who is well-versed in these standards and who has experience creating them for design patent applications.
The process of obtaining a design patent requires careful planning. This may necessitate updating the patent drawings to show alternative forms of the claimed invention.
Any variations in the design’s proportions, shape, or size may also be shown. It is also possible to broaden the protection sought by a design submission by sketching specific details with dashed or buried lines.
Several categories of goods can qualify for design patent protection. For example, accessories such as glasses, shoes, lighting systems, packaging, furniture, and electronic displays can all be protected by design patents.
What About Design Patents Outside the US?
Community or industrial design patents are typically obtained through a registration procedure in most nations outside the United States.
Registration in the foreign jurisdiction succeeds after the necessary documentation and drawings are submitted and found to comply with the formality criteria of that country.
Only when the registered design is asserted against any infringing parties does a comparison take place.
There are two options for submitting abroad: applying individually in each foreign jurisdiction or filing a single international design application. A design can be registered in over fifty nations with just one international application filed under the Hague System.
Priority benefit from a U.S. file can only be claimed if a foreign filing is made within half a year after the earliest US filing date. Furthermore, foreign submissions should be made before commercial use or public disclosure to avoid statutory barriers to pursuing design patent protection.
Benefits of a Design Patent
Design patents offer an advantageous practical route to patent protection. Unlike utility patent applications, which might take two to three years (or more) before a first step is taken, US examinations are usually completed within a year. US design applications can also undergo fast tracking for review.
In addition to the standard criteria, a petition requesting an expedited inspection, the government fee, and the findings of a prior art search is required for expedited assessment.
In most cases, a design patent can be issued within six months of an adequately filed accelerated design patent application undergoing inspection.
When compared to utility patents, design patents offer numerous benefits. For example, if the design patent is issued, the owner will not be required to pay any renewal or other costs. In addition, applications for design patents have a far higher allowance rate and can typically be processed much more quickly than utility patents.
It’s important to note that design patents offer the same promotional benefits as utility patents.
The phrase “patent pending” can be added to a product’s packaging once an application has been submitted. After receiving a design patent, you can modify the marking to read “patented.”
Legally speaking, design patents can be an excellent weapon for avoiding or ending counterfeiting. They are also helpful in stopping the import of illegal goods. However, design patents only provide limited protection in contrast to utility patents. For example, they do not prevent others from copying an invention’s functionality or structure unless the invention also features a replicated form or shape.
Consult a NY Patent Lawyer About Filing a Patent
Getting a design patent is not always easy. If you want to ensure you’re protected, consult an intellectual property attorney in New York with experience with design patents. An attorney can help you with everything from deciding whether to file a provisional or non-provisional application to submitting the required fee and dealing with complications.
Design factors are becoming increasingly important in business. Whether as the only form of intellectual property protection or as part of a larger legal strategy, design patents can play a significant role in safeguarding design advances and helping to decrease competition.
