DESIGN PATENTS (Update)

In addition to utility applications and provisional applications, the USPTO also grants patents for ornamental (non-functional) designs. The term of the design patent is 15 years from the date of issuance.  Contrast this to the utility patent term of 20 years from the application filing date.  Also unlike utility patent, the owner of the design patent is not required to pay maintenance fees.

It is not possible to file a provisional application for a design invention.

The key to a design patent application is the adequacy of the drawing. The drawing must show the article of the invention from multiple perspectives, i.e., front and back and from the side. There is only a limited description of the article. The drawing is considered the best description of the innovative design.

The material used in construction of the article is not important. There is only a limited written description of the article. The drawing is key and it must conform to the drawing requirements of MPEP 1503.02. Black and white photos may be used. However, you can not have a combination of drawings and photos.

The design must still be novel and non-obvious. A search will be conducted.

The applicant has only 6 months from the date of first use to file the design application (unlike the 12 month period allowed for a utility application).

Furniture is a commodity frequently subject of design patent protection. It may also be subject of copyright protection.

Design patents are infringed if it can be shown that “if in the eye of the ordinary observer, giving such attention as a purchaser usually gives, the new design is similar to the prior art. If the designs are close, then emphasis will be placed upon the small areas of difference. If the prior art is substantially unrelated, the patented breakaway design controls a broad sweep against infringement. See Egyptian Goddess v. Swisa, 498 F.3d 1354 (Fed. Cir. 2007).

What appears to be a change in the process of determining infringement, the Federal Circuit in Arminak permitted a side by side comparison between the patented device and the accused infringing device. However the standard still requires the determination of the “ordinary observer”.

Copyright D. McEwing 2020