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                Patent Attorneys ·  Trademark Attorneys

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Industrial Designs

Features of Shape and Ornamentation

 

When features of shape, configuration, pattern or ornamentation are applied to an article to give it a particular appearance, those features that are judged by the eye in the finished article are the "design" of the article and can be protected by a design patent grant.

 

This unique folding chair presents a distinctive design appearance in both the extended and storage configurations. In the folded (storage) embodiment (shown on the right), the design is characterized by a two-dimensional graphical play with oval and circular forms in bright colors and some elementary black lines arranged with bilateral symmetry.

 

In the extended embodiment (shown on the left), the frame is unfolded and the seat is rotated to horizontal, resulting in a design characterized by a three-dimensional graphical play with oval and circular forms in bright colors and an asymmetrical arrangement of intersecting elemental black lines.

 

Design Patent Protection

 

The protection provided by a design patent is measured only by the visual appearance as shown in the drawing figures of the design patent grant. It offers no protection for the method of mechanical construction or operation. Here the mechanical or utilitarian features of this folding chair include a wire frame support and an ABS injection molded seat and back that can be folded and hung on the wall. Those mechanical features, which are independent of its design, can be protected by a utility patent grant.

 

Industrial machines and tools, as well as consumer products, are protected by design patent as well as other legal means - trade dress, product configuration, utility patent, copyright and contract. By carefully selecting an appropriate combination of legal protections for each new product, the likelihood of it being knocked-off can be minimized.

 

Design Patents and Utility Patents Compared

 

Ornamental appearance.  Design patents provide protection for the ornamental appearance of a product.  A design patent is limited only by the visual aesthetics of the article and does not offer any protection for its method of construction or operation.  In the language of the statute, a design patent covers any “new, original and ornamental design for an article of manufacture.”  Design patents differ from utility patents as follows:

Utility patents.  Utility patents are granted for any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.  Utility patents typically provide protection for machines and processes and are the most common and commercially important. Utility  patents protect the functional and structural features of a product without regard to its appearance.

Functional aspects excluded.  Design patents, on the other hand, do not cover utilitarian functions or structure.  That is, design patent protection extends only to the ornamental appearance of an item, and provides no protection whatsoever to structure or functional aspects. 

Scope.  The scope of coverage of a design patent is provided by its drawings, while the scope of a utility patent is provided by the written claims.  Each design patent includes only a single claim, and that claim is stated in formal terms relating to the ornamental design, as illustrated by the drawing figures. 

Infringement.  Another difference between design and utility patents occurs in the standards for infringement.  Infringement of a utility patent is a complex matter that depends on careful interpretation of the written claims, while design patent infringement depends on subjective, visual impressions of similarity.  The legal standard for design patent infringement is similarity in overall appearance between the item illustrated in the design drawings and the accused product, as viewed by an ordinary, prudent purchaser of that type of product. 

Remedies.  Yet another difference between a design patent and a utility patent is related to the remedies available for patent infringement.  Unlike a utility patent, the owner of a design patent has the right to recover an infringer’s profits in addition to any actual damages.

Cost.  A further difference that should be considered is based on acquisition and maintenance costs.  Typically, the cost of preparing and filing a design patent application is under $2,500.  The corresponding cost of preparing and filing a utility patent application on the same product could easily be as much as $8,500 or more.  There is a substantial difference in after-grant costs also.  For example, there is no maintenance fee payable to maintain a design patent on active status.  On the other hand, maintenance fees ranging from several hundred dollars to a few thousand dollars must be paid at four year intervals to keep a utility patent alive. 

Term.  Finally, the active life of a utility patent commences on the date of grant and expires 20 years from its priority date, while the active life of a design patent extends 14 years from the grant date. 

Dual coverage.  Because utility patents and design patents provide different types of protection, a product may be protected simultaneously by both.  We recommend filing design as well as utility patent applications on the same product, where the product has a unique ornamental appearance.  A design patent can provide powerful protection, and will discourage “look alike” products for which the competitor has found a way to otherwise avoid infringing the utility patent claims. 

 

Our industrial design practice:

 

 

  Securing design patent grants (U.S. and international)

 

  Negotiating agreements relating to ownership rights to designs,    royalties, confidential disclosure and right to compete

 

  Analyzing whether a product is at risk for design or utility patent infringement.

 

  If a dispute arises, we first consider informal negotiation to bring about a  favorable settlement.  If need be, we can turn to mediation and court enforcement. 

 

 

 

Representative design patents:              

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D484,897      Portable electric furnace

D469,558      Landscape lighting fixture

D450,625      Magnetic fastener

D448,950      Video display pedestal

D440,207      Lighting control face plate

D420,419      Fishing rod handle

D412,157      Data display unit

D395,334      Floor sign 

D333,679      Document holder

D333,124      Control switch

 

Contact Griggs Bergen LLP to schedule a confidential consultation. 

 

   

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