Design Patents 101 – Introduction : A design patent is a form of legal protection which is issued for protecting the ornamental design, characteristics, and configuration of a functional item. It can even be referred as a kind of industrial design right. It does not include listing of any structure or any textual description of the design. Instead, it simply protects the design of the product.
Some of the important characteristics of design patent are:
- It does not focus on structural or utilitarian features of the product.
- It focusses on visual characteristics of the product.
- It can be made only for a single claim (product’s design).
- It cannot be issued for ornamental features which are not visible when the product is in use.
- It may be issued for utility-based item, in such cases, protection can only be granted till the point where ornamental features are described over the functional features.
- It is subjected to an examination in the U.S. Patent and Trademark Office, which includes a prior-art search.
- It is valid for 14 years if it was filed before May 13, 2015, and for 15 years if it was filed on or after May 13, 2015.
The core elements of a design patent application are:
- Preamble, applicant first name, design title, description about nature, and its usage where the design is embodied
- Cross-reference to related applications
- Statement regarding federally sponsored research or development.
- Figure description
- Feature description
- A single claim
- Drawings or photographs
- Executed oath or declaration.
In addition, the filing fee, search fee, and examination fee are also required. The fees get reduced by half for small entities (such as, a small business concern, an independent inventor, or a non-profit organization).
Application Procedure for Design Patents
Here are some of the points that must be followed while filing design patent:
- Clear subject: It must be relevant to quote aesthetic skill and artistic conception.
- Possess innovation: It must be completely innovative in a manner, such that no identical design exists in the prior art.
- Follow standards: It must satisfy the ornamental standards.
- Possess originality: It must be original to the inventor or inventors seeking protection.
- Possess un-obviousness: It must also be unobvious on the basis of prior art.
- Double-patenting: It is possible to obtain design patent and utility patent for the same invention. The term “double-patenting,” precludes the issuance of two patents for one invention.
- Copyright: It is even possible to take a copyright for the same product, if the subject qualifies as a work of art.
- Trademark: It is even possible to get a trademark, if the design is embodied in a physical article.
- FCFS approach: The USPTO allots patents on a first-come, first-serve basis. Design patents must be registered as soon as possible, since if any other person or business applies for the same before the inventor, then USPTO will reject the second application.
- Appropriate patent search: A patent search must be conducted before patent filing to search for similar patents to avoid future infringements and application rejections. See a list of useful tools and databases.
Anyone can apply for design patent electronically at the USPTO website, uspto.gov. Once the application gets passed, the USPTO will send a notice of allowance to the applicant’s patent attorney.
The U.S. Supreme Court in 1872 established an ‘ordinary observer’ standard, for a case that involves an ornamental design for silverware handles. It is then after a long course of conversion, has been limited only to the testing of design patents. The test starts with a person who is aware about the patented design (hypothetical referred as ‘ordinary observer’). This person is then introduced with the product, infringing the patented product. Then, the comparison is made on the basis of appearance of the two products.
The standard of infringement is done in the following two stages:
Stage 1: The presence of invented design, is searched by looking into prior art for similarities. If no similarities are found, then the process is not carried out further, and there is no infringement. But if one or more similarities are encountered, then stage 2 is followed.
Stage 2: Both the similarities and differences between the two products are noted to determine whether both are overall similar or different. If similarities are found, then there it is termed as clear infringement.
All of the points mentioned below must be carefully followed to avoid any mistakes and rejections for design patents.
- Efficient patent research: It is important to conduct a full-fledged study about the existing patents and their theories, to avoid infringement.
- Knowledge about patent: It is important to understand whether only a design patent or a utility patent along with design patent (in case, the specifications has to be preserved along with the design) has to be filed.
- Detailed specifications: It is important to make the design as clear and specific as possible, since design patent only depends upon the design to analyze what is the product whose design has been presented. Ambiguity might cause rejection of the application form.
- Hire professional: It is must that an experienced lawyer must be hired for filing a design patent.
It is important to protect the intellectual property rights associated with the invented products. Protection of design is not only important because it protects the inventor’s right or claim for the invented design of any product, but it also restricts other individuals, companies, or businesses to take advantage from the product by copying, modifying, etc. the design, without the inventor’s permission. By securing the inventor’s right, the market is able to regulate continuous flow of inventions, by giving the inventors, their rights of safety against infringement.
Design is an important part of a brand that represents employee skills and offers a stand in the market. High-end fashion designers could lose millions of dollars in revenue without design protection because anyone else could create the same design aesthetic.
Contact us to discuss about the best patent protection suitable for your invention !
Design patents protect the intellectual property by protecting the appearance of the invented product. Since, design patent costs significantly less amount as compared to the utility patents, some patent attorneys have been recommending that design patents be strongly considered when filing for a utility patent.
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