Design patents: underused and overlooked

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“Unfortunately, there are not enough individuals and businesses seeking design patent protection. In 2019, for example, there were 46,847 design patent applications filed, which represents 7.01% of the total number of patent applications filed in 2019. ”

In the past, one of the ways to spot scams from legitimate patent industry operators was to find out who tricked customers into obtaining design patents. Design patents have always been easy to obtain, in fact much easier to obtain than a utility patent. Of course, as with so much in life and with virtually everything in intellectual property law, the easier something to get, the less valuable it is to own. This general rule of easier and cheaper rights has been turned upside down in recent years when it comes to design patents, at least to some extent.

Unfortunately, few individuals and companies apply for design patent protection. In 2019, for example, 46,847 design patent applications were filed, which represents 7.01% of the total number of patent applications filed in 2019. Thus, although more design patents are filed year over year (see Figure 1), as a percentage of the total number of patent applications filed, they remain well within the historic 50-year standard (see Figure 2). Data taken from Patent activity in the United States.

Considering the usefulness of a design patent and the number of multinational companies that regularly apply for design patents, and furthermore, given that even in the computer-implemented method (i.e. software), the world’s graphical user interfaces (GUIs) can be protected by design patents, the percentage of design patents out of total patents filed is expected to be at an all-time high and not up to historical standards.

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What qualifies for design patent protection?

A protectable design comprises the visual ornamental features incorporated or applied to an article. Take for example the different look between a regular steak knife and a butcher’s knife. In any knife there is usually a handle and a cutting blade. A design patent would not protect this mechanical structure or description, but rather would protect the specific appearance of the product. In this regard, it is possible for many different knives to receive design protection even though the basic configuration of the handle and blade is well known and often repeated. The question of the patentability of the design is whether the presentation or appearance of the functional element is unique.

Since a design is manifested by appearance, the subject of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to a item or combination of configuration and surface ornamentation. An ornamental surface design is inseparable from the article to which it is applied and cannot exist on its own. It must be a defined pattern of surface ornamentation applied to a manufactured item. In other words, a design patent will protect the appearance of an object, not its function.

Generally, an inventor wishes to protect the function of the invention when possible. This is because if you get a utility patent, you will be able to prevent others from making, using, selling or importing into the United States any product that is functionally covered by the claims of the granted patent, which the device may or may not look like what you are doing or anything like the drawings in your patent application. For this reason, utility patents have been and always will be stronger, broader, and more desirable than design patents. But what if you can’t get a utility patent because the underlying invention isn’t functionally unique? Your product is unlike any other product available before, but it works the same and is structured the same. Then you are in the area of ​​the design patent.

Also, consider design protection even if the functionality / structure of the item is unique and a utility patent can be obtained. If the item has a unique visual presentation, utility patent and design patent can be obtained. This overlap of protection can be quite significant in a number of circumstances, especially if the invention is likely to be the subject of interest from counterfeiters or other malicious actors who seek to copy (or practically copy ) invention.

In addition, as already briefly mentioned, graphical interfaces can be protected by a design patent. For example, on September 1, 2009, Google obtained U.S. Design Patent No. D599,372 on an application filed on March 6, 2006, which was a division of a previously filed design patent application filed on March 26, 2004. This design patent is entitled Graphical user interface for a display screen of a switching terminal and covers the Google home page. This type of protection, which will last for 15 years from the date of patent grant, protects the appearance of the GUI and can provide at least some protection when the technical description of the system of what makes the interface work. chart may not be protectable in the US, particularly if it is a payment gateway.

Examples of design patents

A good example is the pressure washer shown at right, taken from design patent # D733,373. This design patent will cover the appearance of this pressure washer, not the function of a pressure washer. So if someone made a different looking pressure washer, they wouldn’t be violating that patent.

In general terms, a “utility patent” protects the way an article is used and functions, while a “design patent” protects the appearance of an article. Therefore, design patents consist of drawings that show the invention and very little text. The required drawings include the following views: top, bottom, front, back, left and right. Each of these six views is required unless one or more repeats. A perspective view (shown at left) can also be included and is often very useful as 2D design drawings can sometimes be difficult to process for some given that we live in a 3D world.

For the pressure washer pictured left and the Google GUI pictured above, note the broken lines. The claimed invention is shown in solid lines. The two most common uses of broken lines are to disclose the environment related to the claimed design and to define the boundaries of the claim. A structure which is not part of the claimed design, but which is considered necessary, may be shown in the drawing by broken lines. This includes any part of an article in which the design is not considered to be part of the design claimed.

Since a protectable design manifests itself in a particular appearance, the subject of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an item or to the combination of surface pattern and ornamentation.

Design and utility patents can be obtained on an article if an invention resides in both its utility and its ornamental appearance. For example, consider a sneaker. If you were to create a unique exterior appearance for the sneaker, you could apply for and get a design patent. If the sneaker itself functioned mechanically differently, perhaps greatly reducing the impact felt by the wearer due to a unique material used in the sole, the sneaker could also be protected by a utility patent as the the invention would also include a functional component. A design patent alone would not protect any functional aspect of the sneaker.

Gene Quinn

Gene Quinn is a patent attorney and publisher and president and CEO of IPWatchdog, Inc. Gene founded IPWatchdog.com in 1999. Gene is also a keynote speaker in the PLI Patent Bar Review course and an advisor to the law firm Berenato & White, LLC. Gene’s specialty is in strategic patent advice, drafting patent applications and patent prosecution. He consults with attorneys facing specific procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation, and works with start-ups in the United States and the United States. the world, mainly in software and IT innovations. . Gene is admitted to practice law in New Hampshire, is a professional patent attorney, and is also admitted to practice in the United States Court of Appeals for the Federal Circuit. CLICK HERE to send a message to Gene.


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