Don’t miss the easy jumps! Design patents, an often overlooked form of intellectual property protection for the equine industry

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This GT Alert covers the following:

  • Intellectual property protection in the equine industry often includes trademarks, copyrights and rights of publicity, but design patents can also be a powerful tool.
  • Design patents, which only protect the ornamental, non-functional aspect of a manufactured object, can overlap copyright and trademark protection.
  • Design patent holders can recover as damages the “total profit” an infringer derives from infringement, an option not available for utility patents.
  • Recent examples of design patents in the equine industry include ornamental designs for: an equine grooming brush, a horseshoe, equine jewelry and a bridle.

Intellectual Property (IP) law allows individuals, under certain circumstances, to protect “creations of the mind”, granting the owner exclusive ownership and the right to monetize in various ways, depending on the type of IP in question. cause. When considering intellectual property protection in the equine industry, trademarks, copyrights and publicity rights come most immediately to mind. But there is another, often overlooked type of intellectual property protection that can be a powerful tool: design patents.

In the United States, patents can protect processes, machines, articles of manufacture and compositions of matter that are new, useful and non-obvious. There are several types of patents in the United States. Utility patents, for example, cover how something works and make up most of the patents issued in the United States.

Design patents protect the outward appearance of a manufactured object and may overlap copyright and trademark protection. Design patent protection in the United States has existed since 1842 and covers “every new, original, and ornamental design”, explicitly making ornamentation a limitation of subject matter to the availability of a design patent and defining the scope design patents based on their visual character. Although the Supreme Court has ruled that a design “must have an aesthetic appearance that is not dictated by function alone” (see Bonito Boats, Inc. vs. Thunder Craft Boats, Inc.., 489 US 141, 148 (1989)), given the subjective nature of “aesthetically pleasing”, the emphasis on what constitutes an “ornamental design” is whether the appearance of the article is essential. to the function of the article to which the design is applied. If there are several ways to achieve the function, the more a particular pattern will be considered ornamental.

Today, 35 USC § 171 defines the criteria for obtaining a design patentInt’l Seaway Trading Corp. vs. Walgreens Corp.., 589 F.3d 1233, 1238 (Fed. Cir. 2009), stating that “[w]whoever invents a new, original and ornamental design for a manufactured article may obtain a patent thereon, subject to the conditions and prescriptions of this title. ID. (citing 35 USC § 171).

Design patents only cover ornamental, not functional elements appearance of an object, with drawings of the model essentially constituting the disclosure of the patent. They are characterized by a “D” at the beginning of the patent number, and a single claim referring to a drawing or a set of drawings.

Like other US patents, design patents must meet the following requirements:

  • Under 35 USC § 112, they must disclose enough information to practice the invention. Disclosure is an important part of patent protection, because regardless of the type of patent, the idea is that the patent office grants you protection (the exclusive right to make, use, sell something ) for a limited time in exchange for full disclosure.
  • Under 35 USC § 102, they must be new. This means that you cannot obtain protection for a design that someone has already claimed, or that has already been used publicly or offered for sale before you have invented it and applied for protection with the patent office. patents.
  • Under 35 USC § 103, they must be non-obvious.
  • The design should be ornamental and not merely functional, and devices that are concealed in use are specifically not ornamental.
  • 35 USC § 284 allows patentees to recover a reasonable royalty or lost profit in the event of infringement and, in the event of willful infringement, they may recover increased damages. Design patent holders may choose another remedy: under 35 USC § 289, they may recover as damages the “full benefit” an infringer derives from infringement, an option that is not available for utility patents.

While utility patents carry maintenance fees, requiring periodic (and increasing) payments to the Patent Office to keep them in force, design patents do not have maintenance fees. They currently have a term of 15 years from their date of issue.

Design patents also offer the possibility of international protection, either through the Paris Convention or the Hague system, although foreign jurisdictions have varying requirements which require careful consideration if filing outside the United States is a goal.

Today, utility patents are routinely granted for items such as pet toys, bowls, feeders and feeders, carriers, harnesses, brushes, containment devices and enclosures, training devices, animal habitats, pet accessories, bull riding spurs and cattle branding tools, but design patents are also issued to protect the appearance products in this space. Recent examples include:

Design patents can be extremely valuable and can be used in conjunction with copyrights and trademarks to help protect intellectual property in the equine industry. Although often overlooked, they are a powerful tool that can help provide protection in the United States and abroad.

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