Are design patents missing from your intellectual property portfolio?


A design patent protects the visual ornamental features of an item, including consumer and industrial products, medical devices and related tools, sports equipment, jewelry, product packaging, and even user interfaces and web graphics icons. and mobiles. Yet design patent protection for these types of products is often overlooked in favor of other forms of intellectual property protection.

Businesses tend to rely on utility patents, which cover the function of a device, to prevent others from making, using, selling or importing counterfeit products. While utility patents can be a broader and stronger form of protection in terms of protecting the way a manufactured item is used or functions, they generally do not protect the visual appearance of the product. Design patents protect a product’s appearance or other “ornamental” characteristics, not its function. This helps protect designs that have a unique visual appearance, whether or not the product is functionally unique. As a result, design patents can be particularly useful for large companies looking to strengthen an already existing intellectual property portfolio and for small companies building their intellectual property portfolio from scratch.

Design patents can offer a number of important advantages in developing an intellectual property portfolio:

Extension of product coverage

Companies spend significant resources developing a product’s design and packaging to improve the end-to-end user experience. This usually involves refining the overall visual appearance, such as shape, color, texture or pattern, of the product or packaging which gives the product a unique appearance. This unique look can be captured and protected by strategically filing design patents to target various characteristics of the product and its packaging.

Design patents consist of a single claim and drawings which constitute the entire visual disclosure of the claim. The designs can be strategically prepared to cover the entire product, or modified to protect only specific characteristics of the product, such as one or more components, shapes, colors, textures, patterns and sequences shown. Thus, a well-planned design patent strategy can complement a company’s intellectual property portfolio by limiting the ability of other parties to copy unique but non-functional design aspects of a product.

Design patents can also be used to protect features of designs in some cases where utility patents may not be available. For example, a company can develop a new design for a pen. Although the new pen may not function in a sufficiently different way from existing pens to obtain a utility patent, a design patent can be used to protect the ornamental appearance of the new design of the pen.

Improved ability to prevent unauthorized sales, counterfeits and counterfeits

Design patents can strengthen intellectual property portfolios and improve a company’s ability to prevent or stop unauthorized sales, counterfeits, and counterfeits. With the increasing prevalence of various e-commerce platforms, it is becoming easier and easier to sell products online. While the expansion of e-commerce has made buying and selling merchandise more convenient, it has also expanded the ability of third-party sellers to make unauthorized sales of products and to produce and sell counterfeits. This can be extremely damaging to a company’s bottom line, brand and customer satisfaction, especially in the case of counterfeits which may be of inferior quality.

As described below, design patents can be granted relatively quickly, providing a faster increase in assets available for enforcement against these unauthorized sellers. Design patents can also result in significant damages for infringement. In 2018, Apple Inc. received more than $ 500 million when a jury found that Samsung Electronics Co., Ltd. had infringed its design patents.

In the case of counterfeits and unauthorized sales, design patents can be used to prove infringement more quickly and easily, as the designs issued in the design patent provide a visual illustration that can be placed alongside and compared. directly with the accused product. This can be particularly useful for identifying counterfeit goods online or with US Customs and Border Protection (CBP), and preventing imports of counterfeit goods into the US through enforcement proceedings with the International Trade Commission. (ITC). Further emphasizing the importance of design patents, the Seizure of Counterfeit Goods Act 2019, if enacted, will give CBP the discretion to rely on design patents when seizing counterfeit goods, even without an exclusion order first being issued by the ITC.

Reduced time and cost

Design patents also offer many time and cost advantages over other forms of intellectual property.

Reduced time between deposit and grant: Typically, design patents are granted within 1 to 2 years (or earlier) of filing, compared to 3 to 5 years for utility patents. This allows design patents to be more quickly available for enforcement against a potential third party selling a copied, counterfeit or counterfeit product. The reduced prosecution time also gives companies the opportunity to build and strengthen their IP portfolio at a faster pace, which can be useful when seeking outside investment.

Reduced cost: Design patents may offer the possibility of obtaining patent protection at a reduced cost. For example, the fees associated with filing, prosecuting, and granting design patents are generally less expensive than utility patents. As an added bonus, there is no maintenance fee after the issuance of a US design patent during the 15-year patent term.

Because of their low cost, design patents are a cost-effective tool to expand intellectual property portfolios by also protecting accessories or devices that have limited commercial value, but are still worth protecting for any purpose. offensive and defensive.

Ability to control the release of designs

Patent law in the United States and many other countries operates on a first-to-file system. In other words, when two inventors separately file similar inventions, the one who files the first generally has the right of the other to continue his invention. It is therefore advantageous to file patent applications as quickly as possible. However, the filing of a patent application begins to determine when the application and its contents become publicly available, which can be detrimental to companies still developing the technology disclosed in the filing of the patent application.

Design patents provide the ability (at least in the United States) to both control the timing of publication and get an early filing date. For example, in the United States, design patents do not become public until the patent is granted. Internationally, the publication schedule depends on the country. In the protection of designs by the Hague system, publication generally takes place six months after the filing date, but can take place earlier or later depending on the country and depending on the option chosen at the time of filing. . As another example, China does not offer any legal procedure to delay the publication of a design patent. The publication of design patents can be effectively controlled through carefully considered prosecution and filing strategies.

As a result, design patent protection should be seen as part of any intellectual property portfolio.

© 1994-2021 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC All rights reserved.Revue nationale de droit, volume X, number 175


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