Although the first patent law was enacted in 1790, it was not until 52 years later that US patent laws were amended to allow the patenting of ornamental designs. In 1842, a law was passed to provide for, among other things, the granting of patents for any new and original: (1) design for manufacture; (2) design for printing on fabrics; (3) bust or statue; (4) printing to be placed on a manufactured item; or (5) the shape or configuration of any article of manufacture. Subsequently, in 1902, the Design Patent Act was amended to define the qualifying object simply as “any new, original and ornamental design for an article of manufacture.” and still closely represents the current law concerning the patentability of designs.
The first design patent which was issued in the United States was issued to George Bruce on November 9, 1842. Only thirteen design patents were issued in the first year of eligibility.
So how many designs were in the first design patent issued? OK, that’s a trick question. The surprising answer is that there were no designs at all, which is at least a little odd given the current practice. But Mr. Bruce’s design patent covered a new typeface, which could be, and was, described in words rather than claiming the ornamental design as shown, which would be what you would do today. ‘hui.
Another interesting aspect of this first design patent is that it contained a written description, which explained the apparent lack of novelty. Bruce explained:
I do not claim to be the first to cast the Types called Script, nor the first to cast them from the size called Double Small Pica, nor to originality in the contours of any of the types for which I am now applying for a patent. , and I also don’t want to stop other founders from cutting and releasing similar and better posts. But these Types are different from all the others in size, proportions, details and impressive effects, combining peculiarities by which they are distinguished from all the others, and these as a whole, I claim to be mine …
Today, a description in a design patent application is not necessary, but not strictly prohibited. In addition, the rights obtained in a design patent are now fully linked to the designs. Indeed, the USPTO Design Patent Filing Guide explains, “The disclosure of the design is the most important part of the application. This is why high quality and exceptionally detailed drawings should always be filed in a design patent application.
The drawings of a design patent application must contain a sufficient number of views to reveal the complete appearance of the design claimed. This usually requires at least six separate views (or angles), which should include drawings of the front, back, top, bottom, left, and right. These six points of view should be considered essential unless one or more are the same. For example, with a typical golf ball it would be the same from all angles, so only one view would be needed. A perspective view, which shows the invention in context, showing more than one side or angle at a time, is suggested by the Patent Office, but is not mandatory. A perspective view is shown to the right.
Generally speaking, design patents are considered weaker than utility patents, but that’s not really all. A design patent only protects the appearance of something, not the way it works. This is why it is often said that design patents are weaker than utility patents. However, it is better to say that you should be fully aware of the protection you are going to get with a design patent. If you need protection for the operation of your invention, a design patent is not the right form of protection. But for many products, what makes them desirable is the way they appear, not necessarily the way they work. In this situation, a design patent is certainly appropriate. It is also appropriate to file a design patent that seeks to protect the appearance of an object at the same time as a utility patent application (i.e. a provisional or non-provisional patent application) which aims to protect functionality. Additionally, obtaining a number of design patents on various alternative designs can and does make a good portfolio.
Design patents have fallen out of favor in the past because they were promoted by non-attorneys who failed to explain the difference between a design patent and a utility patent. Inventors have been directed towards a design patent in virtually all cases, even when they needed a utility patent application. Thus, design patents have received a bad reputation. This was never appropriate because it was not an issue with design patents, but rather people who expected to get more from a design patent than the rights granted would reasonably allow.
In 2008, the Federal Circuit amended the design patent infringement test (see here and here), making it a subject of substantial similarity, which made it (relatively speaking) easier to prove design patent infringement. Since then, cases have shown mixed results, but the law is certainly more favorable to the owner of the design patent and the uncertainty is in fact an advantage for the owner of the patent, as infringers cannot simply ignore design rights. . Plus, a design patent can give you everything you need to remove counterfeit products from online marketplaces like eBay or Amazon.com. Look for an upcoming article on that particular topic.
Design patents are definitely gaining in popularity, as they should be. The graph below shows design patent activity at the United States Patent and Trademark Office from 1975 to 2013. The only question I have is why still more design patent applications are being filed. they not filed? Design patents are relatively inexpensive to obtain (at least compared to utility patent rights), they are easy to obtain, and they last 14 years from issuance without the need to pay a license fee. additional maintenance. The number of design patent applications filed, although increasing, is expected to be much higher.
Stay tuned for more on design patents. Please also see these articles on design patents: