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 [email protected].