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Client Alert: Design Patents

Recent developments have made design patents a potent new strategy for protecting innovative product designs. Historically, design patents have had limited usefulness in intellectual property strategies, and have been extensively relied upon only in certain industries, such as athletic shoes. However, recent liberalization of the test for determining the enforceable scope of design patents, as well as increasing frustration by inventors in obtaining conventional utility patents from the US Patent Office, warrant careful reconsideration of the value of design patent protection.

The Basics
While utility patents are available for a wide variety of inventions, such as chemicals and materials, pharmaceuticals, methods, software, etc.; design patents are only available for products. But the range of protectable products is unlimited and includes such disparate types of items as clothing, furniture, plastic bottles, car parts, cell phones and other consumer products. To be entitled to a design patent, the product must have a unique “ornamental” design. Particular aspects of a product design (such as its shape) may be considered ornamental even if they also relate to the way a product functions. Typically, the uniqueness of a design is found in the shape, texture, and/or configuration of a product, however other factors can be relied upon as well.

The process for obtaining a design patent is largely similar to the process for obtaining a utility patent. However, an application for a design patent need only contain drawings fully showing the product’s design. An application for a utility patent, on the other hand, must contain a full detailed description of how the product functions and is manufactured (if the method of manufacture cannot be determined from the product description), and a set of claims which define what is regarded to be the invention. Because the claims and the text description have important legal significance, they must be carefully prepared which adds to the cost and time necessary to prepare an application for a utility patent compared to a design patent.

One recent study shows that design patents are granted much faster and easier than utility patents. See, Dennis Crouch, Design Patents: Sailing through the PTO, April 2, 2009. A design patent lasts for fourteen years from the date it is granted by the Patent Office, whereas a utility patent lasts for twenty years from the date on which the application was filed by the inventor.

Design Patent Enforcement
Because a design patent consists of drawings, the enforcement is a more straight forward process. For example, with a utility patent, it is necessary to engage in a careful consideration of the description of the invention and, in particular, of the definition made in the claims to distinguish the invention from the various products that existed prior to the invention. In such an analysis, the exact terminology used in the claims is often disputed, sometimes by technical experts in the relevant industry, in special hearings frequently referred to as “Markman” hearings for the Supreme Court decision that required them. When the scope of a utility patent’s claims are determined in a Markman hearing, consideration must be given to the pre-existing products. For many years, it was thought that a Markman hearing was also necessary to construe the scope of a design patent. However, a recent en banc decision by the appellate court having exclusive jurisdiction over patent cases clarified that the consideration of whether a design patent covers a particular accused product is determined by a visual comparison of the drawings in the patent with the particular accused product. It was particularly clarified that such a comparison is sufficient and that the analysis of the patent scope need not include a Markman hearing or a detailed consideration of how the patented design distinguished over the pre-existing products. While the resulting visual comparison test is susceptible to a subjective “I know it when I see it” type of ambiguity, the process of enforcing a design patent is substantially easier and more intuitive than that for a conventional utility patent.

Innovation Erie: Design Competition
For a first-hand look at a variety of interesting product designs, head to the Erie Art Museum, where the semi-finalists of a competition will be on display from May 8 - June 27, 2009. MacDonald Illig is participating in the judging of the competition and will file a design patent application on behalf of the grand prize winner as well as provide intellectual property consultation services to the top four contestants.

For more information, please contact attorney Robert M. Bauer at or 814-870-7754.

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