Design patents protect the aesthetic design of a product and not its utilitarian features. Inventors are often drawn to a design patent in lieu of a utility patent due to its lower cost. However, seeking a design patent when a utility patent is necessary will not meet the needs of the inventor. Furthermore, though design patent applications are mechanically simple to prepare, they nonetheless require careful attention to detail when preparing the drawings.
The purpose of a design patent application
Design patents are limited in that they protect ornamentation only (e.g., the product appearance). For example, if competitors copy a design or look but make significant enough aesthetic changes, they may avoid design patent infringement liability altogether. Moreover, a design patent is not always necessarily effective for protecting ornamental design in all circumstances (see Introduction to Section 2 for specific circumstances in which a design patent may be useful).
Design patents may not be the proper form of protection because they are easy to circumvent. Changing an invention’s appearance could allow the accused infringer to avoid design patent infringement liability. The change must be sufficiently different that an ordinary observer would not confuse the invention shown in the design patent with the accused infringer’s design.
By contrast, a utility patent protects the functional aspects of an invention (i.e., its structure or the steps of the patented method), but is not contingent on the design or look of the product for the scope of patent protection it affords. Since design patents and utility patents protect different things, seeking both may be beneficial in certain instances, as discussed in Deciding what application to file: Design or Utility? Section.
The drawings of a design patent application: Defining the claimed design
The drawings section of the design patent application is the most important section because the drawings show what is and is not protected by the design patent (for an example of a design patent, see Appendix C).10 That is, the drawings define the claimed design. The drawings should accurately represent what an inventor is seeking to protect. If the drawings do not match the look of the product, the issued design patent may not protect the product. For this reason, the design patent application should usually be filed as close to the product’s launch date as possible so that the drawings can reflect any last-minute changes made to the product’s design.
A design patent application appears simple to prepare, as it only requires drawings of different views of the product to show an ordinary observer what the product looks like. In general, a three-dimensional, perspective view is provided along with views of the front, back, top, left, right, and bottom (to see examples of these views, see Appendix C). These seven views are normally, but not always, sufficient to determine all the ornamentation to be protected by the design patent. Additional views may also be necessary to fully illustrate the design. For example, a cross section view of the product may also be included to show blind crevices that would not be visible with the standard seven views.
The drawings may also convey the environment in which the product is used, but it should be made clear that this is not a part of the design being protected by the design patent. For example, the frame of a bicycle would constitute part of the environment for a patented rear suspension of a mountain bicycle. The environment is included to bring context to the part being protected by a design patent. To accurately reflect what is and is not protected by the design patent, the environment, and anything for which protections are not being sought, should be drawn in dash dot lines (i.e., phantom lines). The product and the ornamentation that the inventor wants protected should be drawn in solid dark lines. The design of the rear suspension should therefore be placed in solid lines and the frame of the bicycle along with all other components in phantom lines.
When deciding what to place in solid lines, it is helpful to understand the logic of determining the scope of protection that may be afforded in a design patent. The design patent will be composed of drawings of the patented design which define the scope of the design patent protection. It is difficult to understand which features should be placed in solid lines and which should not without understanding how to determine the scope of protection afforded under the design patent.
The more features placed in solid lines, the narrower the scope of patent protection. For example, if the product has three distinct features, all included in the design patent, a third-party could incorporate two of those features but make the third feature radically different and possibly avoid patent infringement. If the design patent protects only the primary feature (i.e., the main, ornamental feature of the product), and if this main ornamental feature were incorporated into the products sold by a third-party regardless of whether the third-party incorporates the other two features, the third-party’s products would infringe on that design patent. In the latter case, because the design patent is broader in scope, it would be more difficult to avoid design patent infringement. If all three features are important, however, each may be protected by three different design patents, assuming each design feature is patentable.
Just as including multiple features in one design application can unduly narrow the scope of the patent’s protection, so too can adding unnecessary details to any given feature in the application. When more details are added to the drawings, a third-party would have to incorporate all those features to infringe against the design patent. For example, in the case of Arc’Teryx Equip, Inc. v. Westcomb Outerwear, Inc.,11 Arc’Teryx sued Westcomb for patent infringement on its patented jacket. Westcomb was selling a jacket aesthetically similar to Arc’Teryx’s. However, the zipper on Westcomb’s jacket did not come up the center and up under the chin but instead was offset to come up to the side of the chin. The District Court held that the defendant (Westcomb) did not infringe on the design shown in Arc’Teryx’s design patent based on the visual differences between the zipper designs of the two jackets. The zipper in Arc’Teryx’s design patent has two sections while the zipper of Westcomb’s jacket has three sections (see Figure 5 below). Arc’Teryx (the patent owner) did not include variants of its offset zipper in its design patent. Westcomb (the defendant) was therefore able to utilize a design that looked different to avoid design patent infringement. In some cases, as in Arc’Teryx’s, it is important to protect variations of a design for broader protection even if those variants are not being sold.
To mitigate such easy design arounds, multiple versions (i.e., embodiments) of the same product can be incorporated into a single design patent application. The design patent application could then provide protection for alternative embodiments and variants of the product. In the case of the jacket above, the inventor could have included different configurations of the multi-section zipper and secured more patents on similar designs to make it more difficult to design around a portfolio of design patents. However, this technique may be expensive since additional drawing sheets and design patents incur extra fees, but it may be worth the expense.
Side Note: The patent examiner may render a “restriction requirement” against each design variant in a design patent application. A restriction requirement means that the examiner has determined that each of the embodiments should have been placed in a separate design patent application and the applicant must choose only one of the embodiments for examination in the current application and leave the others for examination in other divisional design patent applications, which can be filed at any time (see FAQ #10-16 in Section 3). These additional divisional design patent applications may, in some cases, be worth the additional cost (see FAQ #22-29 in Section 3).
10. The design patent application contains a specification and drawings. The specification contains a simple statement claiming “a design as shown in the drawings” and a generic description of the various drawings. The generic description of the drawings is a simple labeling of the views that are shown. An example of this section can be seen in the example design patent application in Appendix C. This section only deals with the drawings.
11 Arc’Teryx Equip, Inc. v. Westcomb Outerwear, Inc., 2:07-cv-59 (D. Utah Nov. 4, 2008).