Capitalism and the free market have created many imitators. Original ideas can be easily copied if not adequately protected. And that’s where design patents come in.
Design patents are sometimes the only way companies can protect themselves from lost sales or price erosion, says Dorian Kennedy, a shareholder in the Atlanta office of Baker Donelson who concentrates his practice in the areas of patent, trademark, copyright, trade secret and unfair competition law and related litigation.
Smart Business spoke with Kennedy on the difference between design and utility patents, the rules that apply to them and what information is required to file for them.
How does a company determine if it needs a design patent or a utility application?
The need for a design patent is based on what it is you desire to protect. If the ‘new’ concept is functional in nature, the inventor should apply for a utility patent application. However, if the concept is the ‘ornamental design’ of an object and it’s this unique design you want to prevent others from copying, then your company, through the inventor, should apply for a design patent application. While all objects have a function (otherwise people wouldn’t buy them), if the primary concern is aesthetics and you want to protect that aesthetic design, then you should seek a design patent application.
For example, let’s say you’re a ceiling fan company and there’s nothing functionally new about a fan you’re coming out with. But if the look of the fan is different because of the aesthetics of the blade holders, blades or motor housing, then you would want to protect your investment in the design of these features so that a competing ceiling fan company doesn’t copy the look of your new fan. To prevent lost sales or price erosion, the only protection available to you may be through a design patent application.
How important is timing when filing for a design patent?
Timing may be an issue in applying for any patent. In the United States, you’re precluded from filing a patent if the concept has been publicly available or commercially utilized for more than one year. This one-year bar date is often referred to as a grace period in the United States. The law provides for a list of uses that will generate a ‘bar date’ after which the filing of a patent would render it invalid. A design patent application is included in this requirement. Additionally, a design patent includes the limitation that the design has not been patented or made the subject of an inventor’s certificate issued before the date of the application in any foreign country filed more than six months prior to the filing of the U.S. application. As such, it’s best to file a design patent application before any type of outside disclosure to prevent the possibility of a bar date arising. However, as this doesn’t always occur, you must keep the requirement in mind and file the design patent application prior to the one-year bar date.
What are the rules applicable to design patents?
37 C.F.R. Sections 1.151 through 1.155 and 35 U.S.C. Sections 171 through 173 control design patents. These rules outline the requirements of a design patent application relating to the drawing requirements, the use of photographs, the filing requirements for a complete design patent application, the expediting of an application, the right of priority and the term. Of course, litigation aspects of design patents are found in other sections wherein additional remedies, such as the defendant’s total profits, are available in addition to the standard patent damages.
A design patent application requires the typical specification, drawings or photographs, and oath or declaration. The specification should include a preamble stating the name of the application, title of the design, a cross-reference to related application, the statement of federally sponsored research, a description of the drawings, the featured description and a single claim.
As a design patent’s primary concern is the ornamentals or aesthetics of an object, the drawings showing the aesthetics of the object are paramount. It is for this reason that the United States Patent Office includes such stringent rules concerning the drawings. In the past, the rules contained such requirements as the thickness of paper, the type of ink and the type of shading that could be used, but these requirements have since been dropped. The rules, however, still address many concerns related to the drawings. For instance, they specifically state that shading must be used to show the contours of surfaces, but such shading cannot be in solid black. Also, the rules provide that broken lines may be used to show visible environmental structure, but they may not be used to show hidden planes or surfaces that cannot be seen.
Can a provisional application be filed for a design patent?
A provisional application cannot be the basis of a design patent. However, given the amount of disclosure provided, a design patent application may claim the benefit of an earlier filed nonprovisional utility patent application. In order to do this successfully, a set of complete drawings showing the concept’s aesthetics would be necessary on the earlier filed application.
DORIAN KENNEDY is a shareholder in the Atlanta office of Baker Donelson and concentrates his practice in the areas of patent, trademark, copyright, trade secret and unfair competition law and related litigation. Reach him at (678) 406-8700 or firstname.lastname@example.org.