Design Patent Law

Goals

To uncover some lesser known facts about design patent law, along with 3-5 case studies, that demonstrate a gotcha, an unexpected outcome, or a lesser known fact about design patent law, in order to create a live presentation on the topic.

Early Findings

  • The first-to-file rule was implemented in 2013 and states that "the first inventor to file a patent application (that is later granted by the USPTO) has the right to the invention, regardless of whether it was the first to create the invention."
  • The subject matter of the patent must be new, or not publicly known, before filing the patent application. However, there are some exceptions for activities that occurred within 12 months of the filing date.
  • Design patents are filed to protect "visual ornamental characteristics" of an item. In other words, the uniqueness of the presentation and/or appearance of an item. Design patents have nothing to do with how an item functions.
  • The waiting period for a design patent can be as little as 6-9 months, while a utility patent can take three or more years to obtain. Therefore, a design patent can offer some protections while the utility patent is being obtained. The patents can work in conjunction with each other to provide additional protection.
  • Filing a single design patent may not be very useful, but filing large numbers of design patents on a single product can offer additional layers of protection.
  • In Egyptian Goddess v. Swissa, the U.S. Court of Appeals for the Federal Circuit ruled that "ordinary observer" test would be the sole criteria for determining if design patent infringement occurred. Since this requires a focus on the original design drawings and how they compare to the item being accused of infringement, this ruling made proving infringement easier, which strengthens design patents.
  • Each unique design variation should be covered by its own patent.
  • Since the drawings used in the design application will form the basis of defending the patent if necessary down the road, it is crucial to use a professional artist to create the required illustrations.
  • After the initial filing fee and issuance fee, there are no additional costs to keep the patent in place for 15 years. This varies for utility patents, which require increasing maintenance fees to keep the patent in force.
  • The Hague system allows inventors to file a single application which will then be in force in all organizations that are party to the system. This currently includes over 90 countries.
  • This review of design patent law from 2016 appears to include some case studies of design patent law cases, although ideally more recent data would be found.
  • Some possible mistakes that can cause problems when filing for design patents include missing foreign filing deadlines, including too many details on the drawing, and including too many design variations on a single application, rather than making separate filings.

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