Design patents protect ornamental features. The scope of protection is defined by what is shown in the drawings. In contrast, utility patents protect functional features. The scope of protection is defined by the claims. This distinction is simple to state but the ramifications are significant and sometimes confusing. Inventors will sometimes suggest that we protect a functional product with a design patent for cost reasons since design patents are significantly less expensive than utility patents.
Will this work?
This strategy will work in a very narrow sense. First off, design patents can illustrate functional features in the drawings although design patent protection do not extend to those functional features. Design patents need not illustrate solely the ornamental features. If the functional and ornamental features are inseparably fused with each other, design patents are still capable of protecting the ornamentality of the design. As such, design patents are not precluded from protecting products that are functional in nature.
The main limitation is that design patents are limited to the look (i.e., ornamentality) shown in the drawings. If there is another way to make a product look but still perform the same function, then the design patent can be easily designed around so as to avoid design patent infringement.
Even if a design patent is easy to design around, design patents are still useful to prevent someone from taking your product , copying the product overseas, and importing the copied product back into the United States. A number of infringers do not take the time to research the intellectual property rights protecting the product. In these limited cases, the design patent is useful to stop these ‘lazy’ infringers. Given the low cost for design patents, it may be worth securing design patent protection.
Another use for design patents is to secure after market sales of your product. If you have a product line, you can use design patents to protect the look of the product line. Here is an example. A kitchen appliance manufacturer may want to protect handle designs to prevent others from making other types of kitchen appliances with the same handle design. In this manner, customers who want perfectly matched handles for their kitchen appliances must purchase your kitchen appliance. A sign manufacturer may want to protect the design of the signs so that cities must purchase their signs to ensure uniform sign appearances throughout the city. A car manufacturer may want to apply for a design patent on a number of commonly damaged parts to prevent others from making after market parts.
Another use for design patents is in seeking trade dress protection for the ornamental design of your product. Trade dress protection is essentially a trademark defined by the ornamental features. An example of a well known trade dress is the coca cola bottle shape. One can cover up the coca cola label and still be able to identify the company behind the bottle solely by the shape of the bottle. An example of this use of a design patent is illustrated in the case of High Point Design v. Buyer’s Direct (September 11, 2013 Fed. Cir.).
In the High Point case, the inventor sought to enforce a design patent and establish trade dress protection in the ornamental design shown in the design patent. This case is significant for other reasons, namely, that the obviousness standard for design patent protection is from the vantage point of the “ordinary designer” and not the ordinary observer”. However, for our purposes, this case illustrates the possibility of establishing trade dress protection with the help of a design patent.
Here is how it works.
Trade dress and design patent protection both protect the look or ornamentation of the product but for different reasons. Design patents protect the look of the product if the look is novel and non obvious. Trade dress protection protects the look of the product if the user uses the look to brand itself. Design patents are enforceable for 14 years after issuance. Trade dress protection is enforceable indefinitely as long as you continue to use the same look. As such, trade dress protection provides significant advantages over a design patent since it can last indefinitely.
The difficulty in establishing trade dress protection is that you have to show that consumers have come to see your unique look as your brand. Oftentimes, this is hard to do because most ornamentation is perceived as ornamentation and not a brand. Here is where the design patent comes in.
The design patent is used to prevent others from utilizing the same look during the time period you are attempting to establish the look of the product as your brand. If you don’t have a design patent and others use the same look, then the trademark office will say that people have come to view the look as ornamental and not as your trade dress. Typically, the trademark office will ask that you to show “proof of substantially exclusive and continuous use” of the look for five years. The design patent can be asserted during the five year period and beyond so that you can maintain substantially exclusive use. Otherwise, you won’t be able stop others and maintain the substantially exclusive use of the look.
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.