DESIGN PATENTS

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 14 years from the date of issuance. (Contrast this to the utility application term of 20 years from the date of application.)

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).

“Deception arises as a result of the similarities of the overall design, not of similarities in ornamental features considered in isolation.”

See Amini Innovation Corporation v Anthony California Inc. and James Chang, 439 F.3d 1365 (Fed. Cir. 2006)

In the recent case of Arminak v. Saint-Gobain Calmer (Fed. Cir. 2007), the court stated infringement requires satisfaction of two distinct tests: First, in the eyes of the ordinary observer, the accused design, viewed as a whole, must be deceivingly similar to the patented design. Second, the infringing design must incorporate one or more of the novel points that distinguishes the patented design from the prior art.

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”.

It has been recently reported that Samsung Electronics received over 550 design patents in 2007. Sony holds the most design patents, followed closely by Nike. This is surprising because “common wisdom” stated the courts were not enforcing design patents. As summarized above, the test of infringement is difficult.