Design Patents – The Forgotten Protection

by Buchanan Ingersoll & Rooney PC
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The use of design patents to protect a new product is frequently overlooked. The public only becomes aware of design patents whenever the rare blockbuster jury verdict arises such as Apple’s verdict over Samsung over iPhone and iPad design patents (since reduced significantly by the Supreme Court).  Absent such notoriety, the availability and value of design patent protection rarely receives a second thought.  As illustrated below, design patents afford valuable protection to a product designer and should be considered a part of any product protection strategy.

Design patent basics

The United States Patent Office will issue a design patent for any new, original, and ornamental design for a product. The key to design patent protection is that the design is ornamental in nature and not solely dictated by the function performed by the product.  The design must be new and non-obvious in view of prior designs.  Once issued, a design patent will have a term of 15 years (14 years if the application was filed prior to May 13, 2015) and, unlike utility patents, no maintenance payments are needed to keep the patent in force.  Although the Patent Office will conduct a review of a proposed design, some commentators have opined that the review process is evolving into a registration system in which the design patent is issued within a year of filing the application.

A design patent may be the only protection available

For some products, the only protectable feature is the product design. This is especially true for updated designs of existing products.  In such cases, a design patent can protect the product’s new look and prevent competitors from appropriating the new design.  Moreover, for some common household products, packaging designs, screen displays, tool designs, and component parts, the design is the main selling point and protection of the design affords the most protection to the product.  For these products which do not possess features meriting a utility patent, a design patent may be the best, if not the only, protection available.

A design patent can fill in the gaps in a product protection strategy

Sometimes a new product has features that can be protected by both a design patent and a utility patent. For example, in order to protect its iPhone and iPad products, Apple was able to secure both utility patents which protected certain functions that the devices perform as well as design patents which protected the ornamental appearance of the devices.  Because the review process for design patent applications is much quicker than for utility patent applications, patent protection in the form of a design patent can be obtained earlier in the product life cycle.  The design patents can be relied upon to protect the design of the product until the utility patents issue to protect the product’s function.  Moreover, the design patents can serve as a hedge to preserve some protection for the product in the event that the later issuing utility patents are challenged and found to be invalid.

A design patent can be used to protect secondary markets

Design patents can be used to protect the design of a component part used in the assembly of a company’s product. The design patent can provide a company with market exclusivity in the after-market or replacement market for those components.  A leading example of this use of design patents is the automotive industry.  Automobile manufacturers regularly file design patent applications directed to the bumpers, grilles, and other design features of components of a redesigned automobile model.  The automobile manufacturer will rely on the design patent to prevent third parties from manufacturing replacement parts for a damaged bumper, grille or other component part.  In this manner, the automobile manufacturer can protect its sales in the secondary market for replacement parts.  This is especially important now with the advent of 3-D printing techniques that make such component parts easier and less expensive to copy.

A design patent can lay the foundation for further and longer lasting protection

By statute, design patent protection is limited to a term of 15 years from the date of issue. After that term expires, the design patent will no longer be effective to block competitors from using the design.  However, the design patent owner could use the exclusivity provided by the design patent to obtain longer lasting protection.

It can be difficult to obtain trademark protection for a product design because product designs are usually not considered to be inherently distinctive and it takes time for a design to acquire the distinctiveness necessary to establish trademark rights. It takes years of continuous and exclusive use of a product design to acquire such distinctiveness.  Because design protection is for ornamental and not functional components of a product design, the grant of a design patent is not contradictory to a claim for trademark protection.  The owner of a design patent can use the exclusivity provided by the patent to achieve distinctiveness for the product design and thereby acquire trademark rights.  So long as the product design is continuously used, those trademark rights will continue at common law indefinitely.  In addition, after five or more years of use, the design patent owner can apply to obtain a trademark registration for the product design on the basis of acquired distinctiveness.  In this manner, the exclusivity provided by a design patent can be used to leverage longer lasting trademark rights in a product design.

Conclusion

A successful product protection strategy should include the use of design patents to protect product designs. By incorporating design patent protection into the strategies used to protect product designs, a company can create exclusive markets for its products which supplement the protections created by utility patents and trademarks.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Buchanan Ingersoll & Rooney PC | Attorney Advertising

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