Few Americans know that there are two types of US patents that apply to products: Utility and Design. Unfortunately, many businesses believe that design patents are not worth the time and expense. What follows in this article are three reasons why design patents don’t got the respect they deserve.
First, some invention promoters capitalize on the fact that many Americans do not understand design patents. Those paying for the services of these invention promoters expect to be buying broad protection for their invention. Unfortunately, these inventors are disappointed to learn that instead of obtaining a patent application describing the construction and operation of their invention, the invention promoter prepared and filed an application for a US Design Patent only covering the appearance of an invention.
Second, a small change to a poorly prepared US Design Patent enables an infringer to escape patent infringement. In most cases this criticism is justified as many applicants for design patents give little thought to those features which make the appearance of their product distinctive. A poorly prepared application for a US Design Patent includes far too many design features. Unneeded design features often narrow design patent coverage to the point where protection offered by a US Design Patent is so limited that infringement can easily be avoided.
Third, by the time that a US Design Patent issues, there are many infringing copies of the protected design in the marketplace. Pursuing the makers of the infringing products then becomes financially prohibitive.
The bottom line is that most businesses do not make obtaining protection of their product designs part of their business strategy. Rather, many businesses file for design patent protection about the same time that a product is offered for sale. And, while USPTO has expedited the examination of US Design Patent Applications, such expedited examination does not move as fast as those businesses eager to copy new product designs.
US Design Patents can be a valuable business asset if used properly. The problem is that most businesses and many patent professionals do not understand how to properly prepare an application for a US Design Patent to provide the broadest protection for their client’s designs.
Those who have effectively used US Design Patents realize that building a portfolio of US Design Patents is inexpensive as compared with building a portfolio of utility patents. The scope of protection provided by US Design Patents can be expanded by careful creation of the drawing figures and the description thereof. The scope of US Design Patents extends to the decorative aspects of a product, even products whose primary function is not decorative. US Design Patents provide a valuable form of protection for those who seek to create a unique or recognizable “look” for their products.
In the last decade, US Design Patents have increased in importance as business assets. The reason for this increase in importance is the increase in exact duplication of the “look” attributable to product designs in the United States, but cloned outside the United States by those who can inexpensively manufacture and ship the cloned goods back to the United States. By protecting the “look” of a product with a US Design Patent, it is possible to build a barrier which discourages cloning by both the manufacturer and the exporter of cloned products into the United States. Unfortunately, many businesses elect not to build a barrier against cloned products.
The question is often asked: “How can a business make effective use of Design Patents?” First, US Design Patents should be part of a business plan. Second, obtaining only a small handful of design patents centered on just the design of commercial products will probably be insufficient to protect a product line. Rather, a portfolio of US Design Patents of varying scope can be used to provide effective protection against counterfeiters. Third, designs for both new products and prospective new products must be protected. During the process of designing a new product, many designs are discarded. While theses discarded designs may not provide just the right “look” desired in a new product, these discarded designs do include protectable “looks” which may be of great value to other businesses.
To implement the foregoing, the following steps should be taken:
First, a plan for protecting one or more products with US Design Patents should be made part of a business plan. Specifically, applying for and obtaining a portfolio of US Design Patents centered on both commercial products and anticipated copies of common products should be a forethought, not an afterthought.
Second, when a design is selected for inclusion in a commercial product, whoever is responsible for creating the application for a US Design Patent should assure that the drawings included in the US Design Patent Application are carefully prepared. Specifically, enough should be included to protect the “look” of a new product and no more. As much care should be given to the preparation of the drawing figure in a design patent application as in given to the description of an invention and the claims in a utility patent.
Third, it makes good business sense to file applications for US Design Patents early and often. While some are afraid of the expense of filing early and often, most patent counsel will be willing to work out a volume discount. As soon as the aspects of a “look” for a new product come together, an application for a US Design Patent application should be submitted. Not only should applications for US Design Patents be submitted on commercial designs, but also should be submitted on designs put aside for future development and discarded designs that may be of value to others.
Finally, it is important to police the marketplace and quickly notify others when an issued US Design Patent is infringed or if there is a potential for infringement of a design in a pending application for a US Design Patent.
In sum, for those businesses that sell products because of the “unique look” of their products, a portfolio of US Design Patents, if properly managed, prepared, and used, can provide a powerful weapon against those copying the “look” of commercial products.
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