Design Patent, Copyright, or Trade Dress?

By Debby Winters

I recently met with a client who wondered if they should register their product for a copyright, a patent; either design or utility, or for trade dress protection. Sometimes it is hard to decide between the various types of intellectual property protection and sometimes you can use several for the same product. Because borders between the types of protection are not always clear, it may be that some subject matter is eligible for protection in more than one category. It may also be that qualifying for protection in one category excludes the subject matter from protection in another.

Design patents protect the ornamental features of a manufactured article (while utility patents protect the utilitarian features). The drawings of a design patent show the parameters of design patent protection. Design patents remain in force for 14 years from the date the patent was granted if the application was filed before May 13, 2015 and for 15 years from the date the patent was granted if the application was filed on or after May 13, 2015.

Trade dress is a type of trademark that protects packaging or product configuration. Like other trademarks, trade dress marks serve as indicators of source. To qualify for trade dress protection, packaging or product configuration must be non-functional (that is, the features protected as trade dress must not be necessary for competitors to have to compete against the claimant) and must be either inherently distinctive or have acquired distinctiveness. Product configuration marks are considered inherently not distinctive and must acquire distinctiveness in order to qualify for trademark protection. Trade dress marks (like other marks) may be protected for an indefinite length of time.

A product design or feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. There are several factors one may consider to determine if a feature is functional. One factor is whether the features that are the subject of an application seeking to register trade dress were also the subject of claims in a utility patent. If so, the utility patent is strong evidence that the features are functional and therefore ineligible for trade dress protection.

But if a feature is protected by a design patent, that fact weighs against a finding of functionality (since design patents protect ornamental features) and may mean the design could be eligible for trade dress protection (even though it is still possible for other evidence to establish functionality). If the features are conclusively determined not to be functional, trade dress protection and design patent protection may exist for the same subject matter, either concurrently or consecutively, so long as the features are determined to be distinctive.

Deciding when, whether, and how to pursue design patent protection and/or trade dress protection may depend on a number of factors, including whether the design has been available in the marketplace before one files a patent application, and if so, for how long, and whether the features are inherently distinctive or need to acquire distinctiveness before they can serve as an indicator of source. Having a design patent may aid in the development of trade dress rights by giving the features in question the time to acquire distinctiveness while the design patent remains in effect and prevents others from using the design. It is possible to facilitate the acquisition of distinctiveness through the use of “look for” advertising that instructs consumers of the product to identify the features as an indication of the source of the goods and services. Then, when applying for registration of the trade dress mark, the applicant can present evidence of the advertising in support of its claim of acquired distinctiveness. If the advertising is effective, this should also allow the applicant to produce evidence that consumers recognize the features as an indicator of source. Thus, the applicant may secure trade dress protection prior to or after the design patent’s expiration.

Of course, not all packaging or product configurations that are worth protecting by design patents will merit trade dress protection. While obtaining a patent is typically more expensive than obtaining a trademark registration, design patents tend to be significantly less expensive to obtain than utility patents, and trade dress applications are often more expensive to prosecute than traditional trademark applications.

Consulting with an experienced intellectual property attorney will help decide the appropriate strategy for each case.

How do you know if your idea is truly new and can be patented?

By Debby Winters

Clients frequently come to me with the question “how do I know if my idea is truly new and can be patented?” The standard and easy response that you will get from most patent attorneys will probably be “hire our firm to do a patentability or prior art search and we can tell you” but in my opinion this is not the proper answer. I tell my clients that the answer is more complicated than that as there are many factors to consider, and all on a case by case basis.

While conducting a patentability search and a prior art search is extremely valuable, it is not the be all and end all that many patent attorneys portray it to be as many times there are key articles or other patents that are missed. This means that despite best efforts, and some very smart people using very expensive searching tools, it is nearly impossible to figure out if your idea is truly new or novel. Chances are that there is someone somewhere around the world who has invented the same thing or something very close to it. It’s very hard to find that out, even with advanced searching technology. However, the benefits you receive from the search can be valuable in many other ways.

But how do you truly know if your idea is new? The response I gave to this question is that you can’t ever know for certain but if you do a good patent search and combine that with an internet search using Google and other search engines that have large information databases, you can get a good feel for how new your invention is, BUT there are never guarantees. Hopefully this search will give you enough information to justify your patent filing but I would never bet any money that your idea is truly new or novel on the fact that a patent search did not find any identical inventions. My basic premise is always that the lack of finding something does not prove that it does not exist.

The patent search before you file your patent is your first indication of how new your idea may be. The second test will come as you go through the patent prosecution process and the US Patent Office will do its own search. Usually that search will pick up a few things that your professional search missed. Most of the time you can convince the patent examiner that your idea is different from the similar inventions that their search found.

The last and final test will be a “cease and desist” letter or a lawsuit saying that you are infringing on the patent someone else already has. This is often scary for people to hear but the good news is that if you are successful enough to get these types of letters then this usually means your invention is doing well in the marketplace and you should have enough money to defend your patent.

The bottom line is there is so much information out there and so many people doing so many things around the world that it is nearly impossible to know if any idea is truly new and novel. The best we can hope for is a good enough patent search upfront to help us draft our patent in a way that will get it allowed by the patent office. Nobody truly knows if their invention is new and novel until either the patent office certifies that it is with an issued patent, and even then the patent office may have missed something.

Should you get a design patent?

By Debby Winters

With the backlog of up to 4 years or longer at the patent office, many people ask if they should try to get a design patent when they have an invention that relates to the configuration or shape of an article. Design patents frequently can be obtained in as little as 6 to 8 months so they should not be ruled out in building a patent portfolio if the invention allows for one. Remember that any patent is frequently better than no patent. In building a patent portfolio, a series of design patents can sometimes be very powerful. Many times a design patent, although thought to be weaker than a utility patent, can still be used to scare away competitors, particularly if your competitors a small entities. Because design patents protect the way something looks rather than the way something functions, often a portfolio of design patents are used to build a strong wall around the invention. You should also consider a strategy of obtaining several design patents while your utility patent is pending. A combination of utility and design patents make an excellent team in protecting your intellectual property rights.

Design Patent or Utility Patent?

By Debby Winters

In addition to filing a utility patent application,  an inventor may also want to consider a design patent application.  Utility patents cover structural and functional aspects of an invention, while design patents cover the aesthetic features.

Design patents differ from utility patents in a number of basic ways.  A design patent is granted to cover the ornamental design of an object that has practical utility.  For example, a design patent may be obtained for a new shape of a beverage container, the particular shape and features of the tread of a shoe, computer icons, and other items that have practical utility.

A design patent is not permitted for something that exists for purely aesthetic reasons, such as a work of art.  A painting, sculpture, or other work of fine art would be protectable by copyright and possibly other intellectual property rights, but would not be eligible for design patent protection.

An invention may be entitled to both a utility patent and a design patent since a utility patent protects the structure of an article and the way it is used and works while a design patent protects the way an article looks.  If the design–the way the article looks–is dictated primarily by the article’s function, it would not properly be the subject of a design patent.  An example may be the shape of a gear that is designed primarily to fit with other gears and not for aesthetic purposes.

The requirements for obtaining a design patent are similar to that for utility patents.  The design must be novel and non-obvious; the examiner will perform a search of the prior art to be certain that the design meets these requirements.  Furthermore, the drawings must clearly show the features sought to be protected by patent.  The drawings will typically be more detailed than in a utility application as they will often show more views of the invention.  The drawings constitute the claims of the design patent.  Because they don’t require a detailed specification like a utility patent, design patents are also less costly to prepare and file.

Some of the differences between the two types of patents are that design patent protection lasts for 14 years from the date the patent issues compared to 20 years from the earliest filing date for a utility patent.  Design patents do not require maintenance fees while utility patents do.

Another advantage of design patents over utility patents is that they seem to be much easier to obtain.  In recent years, design patents have had an allowance rate of about 90% over the last few years, compared to utility patent allowance rates of less than 50%.  Over 80% of design patent applications are allowed without rejection; only 1.2% are rejected based on prior art with a larger number rejected on formality grounds.

In an era of increasing backlog and pendency of utility applications, more than half of design patents are pending for less than a year, with the average pendency being about 16 months.

For an invention where design and utility patent protection are both appropriate, I would not skip the utility patent.  An inventor should at least file a utility application for its broader scope of coverage and should also consider a design patent.  A design patent would provide some protection while waiting for a utility patent to issue.  They are also cheap since they don’t involve a great deal of preparation and prosecution.  Inventors should always consider whether their inventions are eligible for design and utility patent protection.