What is a design patent?
Although trademarks and copyrights most frequently come to mind when considering the types of intellectual property protection available for fashion items, design patents can also offer valuable protection. A design patent is a form of legal protection directed to the ornamental appearance of an otherwise functional item. A design patent protects the appearance of an item, and not its structural or utilitarian features. In order to qualify for design patent protection, the design must be new and not obvious in view of prior designs. Because a design patent protects the ornamental features of an item, it can be a useful tool for those in the fashion industry trying to protect their designs from copycats.
So, how do you get a design patent?
In order to obtain design patent protection, an application must be filed with the U.S. Patent and Trademark Office. A design patent application must include the following information: (1) a preamble that states the name of the applicant, the title of the design and a brief description of the nature and intended use of the article; (2) a cross-reference to any related applications; (3) a statement regarding federally sponsored research or development, if any; (4) a description of the figures of the drawing; (5) a feature description; (6) a single claim; (7) drawings; and (8) an executed oath or declaration. The drawings are the most important aspect of a design patent application because the drawings define the scope of protection afforded to the design. Thus, the drawings must include a sufficient number of views to show the complete design sought to be protected.
Once the application has been filed, it will be examined by an Examiner at the U.S. Patent and Trademark Office. The Examiner will review the application for any deficiencies, and ensure that the subject matter is ornamental, and that the design is novel and non-obvious. If the Examiner believes there is a problem with the application, he or she will issue an office action. The applicant will then have the opportunity to respond to the office action. Office actions are not issued as frequently in design patent cases as they are in utility patent cases. In fact, many design patent applications are allowed without ever receiving an office action, and the vast majority of design patent applications are ultimately allowed by the U.S. Patent and Trademark Office.
When should designers consider applying for a design patent?
Design patents have likely been under-utilized in the fashion industry because of the cost and time investment to obtain design patent protection. The filing and examination fees required by the U.S. Patent and Trademark Office for a design patent application currently are $760, and if the application is allowed, the issuance fee currently is $560. In addition, if the design patent is filed with the assistance of an attorney, there will be attorneys’ fees for the time spent preparing the application and responding to any office actions.
It typically takes 12-18 months after filing before a design patent application is examined; however, there is an expedited design patent application, which enables the applicant to obtain protection much more quickly. This is useful in the fashion industry, where designs can evolve rapidly. Expedited examination of design patent applications can result in issuance of a design patent in as quickly as 3-4 months. An expedited examination application requires at filing: (1) a petition requesting expedited examination; (2) a fee of $900; and (3) the results of a patent search. Although expedited examination increases the costs of a design patent, it should alleviate some concerns that a design will be out of style by the time the patent issues.
Even without expedited processing, there are certain fashion items where it may make sense to invest the time and money to obtain design patent protection. Brand owners should consider filing design patents for those timeless and iconic pieces that will never go out of style - think Ray-Ban Wayfarer® sunglasses, the Hermes Birkin® bag, and the Louis Vuitton Speedy® bag – and in particular, accessories such as shoes, handbags and sunglasses. In fact, many designers have recently increased their design patent filings for handbags and shoes. Below is a recent design patent filed by Louis Vuitton for a handbag:
It may make sense to also consider design patent protection for staple items, such as undergarments, because these items are less susceptible to changing trends. Below is a recent design patent filed by Nike for a sports bra:
An application for a U.S. design patent has to be filed within one year following the date of first sale or public use of the item. While this gives designers time to determine whether new pieces will become sufficiently iconic or timeless to warrant design patent protection, it also prevents them from obtaining design patent protection for older designs. Also, it is important to keep in mind that some apparel designs may not be patentable because they are functional.
Design patent applications can be an effective complement to other forms of protection being sought for fashion design. Design patents protect against infringing designs that are substantially the same when viewed through the eyes of the ordinary observer, in light of the prior art. They offer a different scope of protection than trademarks, which prevent others from copying the source-identifying feature of the product. Design patents protect the entire product design claimed in the patent, regardless of whether the claimed design functions as a source identifier. If infringement of a design patent is found, the patent owner is entitled to recover the infringer’s total profits. This can be an effective tool in combatting knock-off and counterfeit products during the 15 year life span of the design patent.
When developing a comprehensive and strategic intellectual property portfolio, designers should consider design patent protection for timeless pieces, accessories, and staple items.
