by: Kathleen Kuznicki, Esq.
You got the (novel and non-obvious?) look!
In the recent Apple-Samsung case, the jury found that Samsung infringed six of Apple’s patents. While we think of Apple as having such technological superiority, three of patents that Samsung were found to infringe were design patents. Unlike utility patents which cover any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof; design patents cover any new, original, and ornamental design for an article of manufacture. The design claimed must be based on aesthetic appearance and not on a utilitarian feature. In other words, design patents cover “the look” a product, it cannot cover a feature required for that product to function. Two of Apple’s design patents cover electronic devices (e.g. phones) that are rectangular with rounded edges and rounded backs. The third patent covers the way the rounded square icons are gridded out on the graphical user interface. Now the point of this article is not to discuss whether Apple should have gotten patents on such designs, but whether or not you should consider design patent protection.
If you make a product with a unique look, a design patent may be worth considering. In addition to being ornamental, your design must be novel and not obvious to those in your field, meaning it must be truly innovative and not a logical extension of a pre-existing design. Design patents can cover things like chairs, cars, and sunglasses. Now you may be thinking along the lines of: “I didn’t design my product to look pretty or to look unique; my product actually does something important; it has a practical, functional purpose!” Getting a design patent on product does not preclude you from also getting a utility patent on your invention. Though generally considered a weaker protection than a utility patent, a design patent can be an additional layer of protection on your product and a design patent has a few advantages over a utility patent.
First design patents cost less. The filing fees for a design patent are lower than a utility patent. With a design patent application there is not a lot of writing, you basically have one claim: “The ornamental design for (the article which embodies the design or to which it is applied) as shown” and brief descriptions of the figures. So generally your legal fees will be less than that of a utility patent application, which can require a significant amount of writing. Now depending on complexity and number of drawings, the fees to a draftsperson could be substantial, but many companies can do their own figures following the USPTO requirements for drawings.
Second, design patents are examined quicker and a greater percentage of them are allowed. A design patent typically issues in a little over a year after the filing date, by contrast the average pendency of a utility patent application is ~ 3 years. With a design patent, you are able to go after infringers who are just blatantly copying your design, and can do this while your utility patent application is pending. About 90% of design patent applications are allowed, ~80% without any initial rejections. Whereas, the allowance rate of utility patent applications recently have been less than 50%. If you are unable to get your utility patent application allowed, having a design patent provides you with at least some protection to after overt infringers.
Lastly, once you pay the issue fee on a design patent, you are done! The design patent stays in force for 14 years after the date the patent is granted. With a utility patent, you must pay maintenance fees at 3.5 years ($1150), 7.5 years ($2900) and 11.5 years ($4810) with the patent expiring at 20 years after the filing date of the application. (Fees effective Oct. 5, 2012)
Kathleen Kuznicki is a contributing writer to Exit Promise. Please visit www.exitpromise.com to view more articles by Kathleen.