Jeffrey Stone, Patent Attorney, Winthrop & Weinstine, P.A.

IP protection for product designs is typically found in a combination of one or more of the following protective mechanisms:

1. Contracts which are typically used with employees and 3rd parties to prevent loss of novelty as well as provide notice of ownership. Contractual protections such as Non-Disclosure Agreements are well-known and heavily used.

2. Utility patents cover the novel and non-obvious functional elements of a conception. This is likely the patent you are most familiar with, including an exhaustive written narrative accompanied by drawings and a series of written claims defining the scope of protection.

3. Design patents cover novel and non-obvious non-functional or ornamental features of a conception. Design patents are receiving much publicity at present as a result of the recent, and ongoing, Apple v. Samsung case.

4. Copyright protection for original works of authorship. In general, copyright law does not grant protection to utilitarian objects. Section 101 of the Copyright Act provides that the design of a useful article will be protected “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article”. . . including “two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.”

5. Trade Secret protection for those conceptions, or parts of the conception, that cannot be ascertained or reverse engineered by the general public. Typically, trade secret protections are most appropriate for method of manufacture or software where the operational details are hidden.

6. Trade Dress protections for non-functional features that have acquired distinctiveness through extensive marketing and commercial use and acceptance.

We strongly advocate leveraging two of these protective mechanisms to achieve IP protection of novel, non-obvious and non-functional features of designs: Design Patent protection followed by Trade Dress protection. (Of course, contracts will also be employed, functional features will be covered by utility patents and, where appropriate copyright protection utilized to provide the fullest and broadest IP coverage possible.) The resulting coverage scheme allows non-functional feature IP protection to begin virtually immediately after conception, with continued and unbroken protection theoretically forever, to the point the underlying product is no longer “in commerce.” In short, a beautifully elegant result when properly executed.

Design Patents Coverage and Purpose

Design patents are provided to promote progress in the decorative arts and to reward inventors. Thus, design patents protect features that are primarily non-functional, ornamental elements of an article of manufacture such as a specific product shape or a particular surface ornamentation. Note that color cannot be protected with a design patent.

For example, an oval-shaped element on the handle of a surgical instrument may be protected under a design patent if the oval shaping is primarily non-functional and is also both novel and non-obvious in view of the prior art. User interfaces on electronic devices are also heavily protected by design patents, e.g., Google’s home page or the tiling arrangement on Apple’s iPhone.

Design patents require no use of the underlying product in commerce in order to meet the protection threshold, just novelty and non-obviousness, both of which are determined according to the now well-known “Ordinary Observer” test.

Speaking generally, design patents are relatively inexpensive to prepare, file and bring to issuance, as compared with utility patents. In our practice, design patents regularly issue within 6 to 8 months of filing, usually without any pushback from the USPTO. With a little advanced planning and placement, a design patent application may be accelerated on the so-called “Rocket Docket” within the USPTO, resulting in likely issuance of the design patent application within 3 to 6 months of filing, barring any significant issues during prosecution.

Design patents are granted for a period of 14 years. During this 14-year term, the owner of the design patent enjoys a full monopoly of the patented elements, including the exclusive right to make, use, sell and/or offer for sale the patented device, and may stop infringers on any of those rights.
Continue Reading