ANSWERS TO FREQUENTLY ASKED QUESTIONS ABOUT DESIGN PATENTS

A design patent is a legal document that provides protection to the ornamental appearance of a design.  The ornamental appearance of a design can include the design’s shape, configuration, contrasting color or materials. A design patent can provide a huge competitive advantage to a business.  For example, in a recent patent infringement case, a jury awarded Apple $1.049 billion dollars in the U.S. case of Apple v. Samsung. Of that verdict, about $746 million dollars was for infringement of one of Apple’s design patents. This article answers a few questions that, as a patent attorney, clients frequently ask me.

How do I know if I should seek patent protection on my design?

I often get asked this question.  If you have a design that you believe other people may want to copy, or create a substantially similar design, then you should seriously consider filing an application for a design patent.  A design patent provides a monopoly on a design for 15 years from the date that the patent is granted.  See 35 U.S.C. § 172. That means that you can lock out your competition from using your design, or a substantially similar design, for up to 15 years.  The monopoly provided by a design patent provides a huge competitive advantage.

When should I should file a design patent application?

In United States, an application for a design patent can be filed up to twelve (12) months after a design has been publicly disclosed.  This twelve (12) month grace period means that you can test, validate or get feedback on your design for up to twelve (12) months before filing a design patent application with the United States Patent Office (“USPTO”).  However, many foreign countries do not have a grace period. That means you may lose your right to seek design patent protection in certain foreign countries if you disclose your invention before filing a patent application.  Additionally, every jurisdiction in the world currently operates under a “first-to-file” system.  In a “first-to-file” system a patent will be awarded to the inventor who first files his or her patent application. Therefore, I recommend, if possible, to keep your ideas or designs confidential before filing a design patent application.

What is a benefit of design patent protection over copyright protection?

Designs can also be protected under copyright laws.  However, in the United States in a copyright infringement lawsuit a copyright holder must prove that an accused copyright infringer “copied” the copyrighted material.  Proving that an infringer “copied” the copyrighted material in some cases may be difficult to prove.

On the other hand, in a design patent infringement lawsuit, a patent holder does not have to prove that an infringer copied a patented design to prove infringement. In a design patent infringement lawsuit, the patent holder has to prove that the two designs are substantially the same in the eyes of an ordinary observer and armed with the knowledge of the prior art, which can be less difficult to prove than that the design was “copied”.  While copyright and design patent law can both be used to protect a design, design patents do provide certain significant advantages to patent holders.

Is there a difference between solid and broken lines in patent drawings?

Important features of a design should be illustrated in a design patent’s drawings with solid lines.  The unimportant or immaterial features of a design should be illustrated by broken lines.  The drawings of a design patent should be carefully created so that only the important and material features of a design are claimed.  Claiming only the most important or material ornamental features may provide broader design patent protection.

Can a design patent application claim priority to a provisional application?

No.  Unlike utility patents that can claim the benefit of a filing date of prior-filed provisional patent application, a design patent cannot claim the benefit of a prior-filed provisional application. See 35 U.S.C. § 172 and 37 CFR. 1.78(a).  As a result, before filing a provisional patent application, it is recommended that you consult with a registered patent attorney to determine if a provisional patent application is the correct patent strategy for what you intend to accomplish.

Can I protect graphical user interfaces (“GUI” or “GUIs”) with a design patent?

Yes.  Graphical user interfaces, such as full screen displays and individual icons, are 2-dimensional images that are considered “surface ornamentation” by the USPTO.  See, e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992).  The USPTO considers surface ornamentation patent eligible subject matter and as a result can be patented.  However, since under United States patent law a patentable design is inseparable from the object from which it is applied, a computer generated icon must be embodied in a computer screen, monitor, smart phone screen or some other display panel to satisfy the legal requirements.

The patent attorneys at The Plus IP Firm help businesses and inventors protect their ideas, concepts and creations with patents, trademarks and copyrights.  The patent attorneys at The Plus IP Firm have helped numerous clients protect their designs with design patents.  To schedule a free consultation, click HERE.  For more information about Derek Fahey, this article’s author, click HERE.