written on April 27, 2009 by David Burge
Related Items
- Benefits of A Patent Search
-
written on May 06, 2009
by David Burge
- Why File a Design Application
-
written on April 27, 2009
by David Burge
- Why How and When to File for Patent Protection
-
written on April 23, 2009
by David Burge
- When Do US Patents Expire
-
written on April 15, 2009
by David Burge
- Why File a Provisional Patent Application
-
written on April 10, 2009
by David Burge
- Monopoly Misconceptions Regarding Patents
-
written on April 07, 2009
by David Burge
- Whats In a Name Legal? Considerations in Branding a Company or Product
-
written on April 01, 2008
by Sharon Toerek
- BEWARE OF PIRATES! Software Piracy is Easier and More Expensive Than You Think
-
written on March 28, 2008
by Sharon Toerek
- Trademarks vs Copyrights Whats the Difference
-
written on March 28, 2008
by Sharon Toerek
- Trademark Infringement and Your Domain Name
-
written on March 27, 2008
by Sharon Toerek
View All
Some products have attractive, non-functional appearance features that need protection every bit as much as do the product's functional attributes. If these attractive features are novel and non-obvious, filing one or a set of Design Patent Applications that focus on major elements of appearance, and on thoughtfully selected groups of features, can significantly enhance the portfolio of protections a business strives to build to protect its intellectual property.
A mistake often made by those who file a Design Application is to depict in its drawings substantially all of the appearance features of an object. When such a "let the drawings show everything" approach is taken, the protection afforded by the resulting Design Patent is of such narrow scope that a competitor can easily avoid infringing the Design Patent simply by changing or eliminating only minor elements of the depicted appearance. What the "show everything" applicant does not appreciate is that Design Patents are permitted to protect thoughtfully selected portions of the appearance of an article of manufacture (i.e., the drawings need not show a complete article, but rather can illustrate a selected portion and, in fact, can depict only the most significant features that contribute to the appearance of the selected portion).
Reduced to simple terms, the rule to follow when preparing drawings for a Design Application is "Show less and thereby protect more." The rule is akin to the "Say less and thereby protect more" rule to follow when listing goods or services in a Trademark Application.
One approach that can be taken to broaden the scope of protection being sought in a Design Application is to depict only major elements of the overall appearance of an object -- so the protection that results when a Design Patent issues requires a competitor to change something major about the overall appearance to avoid infringement. Better protection can be sought by concurrently filing a set of Design Applications each including drawings that depict only major elements of different portions of the object so the resulting Design Patents require a competitor to change major elements in several different regions of the object to avoid infringement. A still better approach that sometimes can be taken is to concurrently file a set of Design Applications with some having drawings that depict different major elements found in different portions of the object, and with some having drawings that depict different major elements of the overall appearance of the object, so the resulting portfolio of Design Patents provide a variety of protections some being overlapping in nature that are likely to foil a competitor's efforts to provide an object that exhibits anything resembling the protected appearance.
A mistake commonly made by those who file Provisional and/or Utility Applications is to overlook the significant advantages attainable by filing one or a set of Design Applications concurrently with the filing of the Provisional and/or Utility Applications. A valuable role that can be played by Design Patents is to supplement and complement the protections afforded by the claims of Utility Patents; but, to obtain Design Patents that supplement and complement the protections afforded by Utility Patents, it often is necessary for the Design Applications to be filed on the same day as the Utility and/or Provisional Applications so that all of these subject-matter-related applications have the same USPTO filing date so none can be cited by the USPTO as "prior art" against the patentability of the others.
One consideration to keep in mind in deciding whether one or a set of Design Applications should be filed to augment the protections being sought by filing a Utility Application is that design protection may be more readily granted than utility protection, and the filing of Design Applications may provide a valuable backup-plan should efforts to obtain utility protection go awry.
An important factor to consider is that Design Applications and Patents are far less costly to file, issue and maintain than are Utility Applications and Patents. Design Applications are simpler in form, easier to prepare and therefore cost less in attorney fees to prepare than do Utility Applications. Moreover, USPTO fees payable on the filing of a Design Application and when a Design Patent issues at the close of application examination are about half what one must pay to file a Utility Application and issue a Utility Patent; and, the issuance of a Design Patent brings no USPTO publication fee to pay as does the issuance of a Utility Patent because Design Applications are never published while pending whereas many Utility Applications are. Further, no maintenance fees ever need to be paid to keep a Design Patent in force for its full term, whereas Utility Patents will lapse at any of three times during their term unless costly maintenance fees are paid in a timely manner.
One clever road few think of taking is to deliberately use Design Patents during early years of the life of a new product to protect important appearance features that will eventually serve as Trademarks. The intent here is to use Design Patents as stepping stones on the pathway toward eventually obtaining the even more valuable and longer-lasting protections that are available if the appearance features can be federally registered as Trademarks. During early years while Design Patents entitle the owner of patented appearance features to exclude others from selling products that embody the patented features, the owner advertises and begins using the appearance features as Trademarks to distinguish his goods from those of others, so the appearance features take on the "distinctiveness" that is needed to qualify them for Registration on the Principal Register of the USPTO. As the Design Patents grow older and begin to expire, newly acquired federal Trademark Registrations begin taking up where the Design Patents left off, enhancing the owner's portfolio of protections, and entitling the owner to serve as an exclusive source for goods that embody appearance features that once were protected only by Design Patents. As the Trademark Registrations age, they take on goodwill and increase in value -- and the Registrations can be renewed decade after decade, for as long as the owner continues to properly use the registered Trademarks in commerce.