Strategic Protection
of Industrial Designs
The aesthetic aspects of a commercial product are often worth
protecting if
the product design provides a sufficient commercial advantage to the
manufacturer.
Securing exclusive intellectual property rights for such
industrial designs can be part of an effective marketing strategy as it
will have a direct influence on market share.
In the United States, industrial designs may be protected
relatively inexpensively through the strategic concurrent use of design
patents,
copyrights and trademarks. KY&D partner John L.
Knoble has particular expertise in designing protection and enforcement
strategies for industrial designs.
Design
Patents
The patent law provides for the granting of a design patent to any
person who has invented any new, original and ornamental design for an
article of manufacture. A design patent protects only the appearance of
the article and not structural or utilitarian features.
A design patent application consists of a short, formalized written
specification and drawings that clearly depict the industrial design
that is being claimed. The drawings are the most important
part of the design patent application, and it is particularly important
that high quality drawings be included with the original application
filing. The drawings will ideally be prepared under
the direction of the attorney in consultation with the client to make
sure that it is only the new and commercially important
aspects of the product design that are being claimed.
Nonessential areas of the article of manufacture may be shown
in broken lines in order to legally convey that these areas are not
part of the claimed design. For important products it may be
advisable to file several design patent applications in order
to protect different aspects of the product design.
In order to avoid forfeiture of rights, a design patent application in
the United States must be filed within one year of any public
disclosure, sale or offer of sale of a product bearing the design.
However, it is advisable to have a design patent application on file
before any such public disclosure or commercialization in order to
preserve potential international rights and to time the issuance of the
design patent so that it can be quickly asserted against an infringer.
The design patent application will undergo an examination process at
the USPTO that typically takes between about eight months to two years.
The design patent examiner will perform a search to confirm
that the claimed design is new and nonobvious, and will confirm that
all formal requirements have been met. If the examination is
successful, a design patent will be issued. Design patents
have a term of 14 years from their date of issuance. Unlike
utility patents, there are currently no maintenance fee payments
required to keep a design patent in force over its 14 year term.
It is usually possible to obtain a design patent for under
five thousand U.S. dollars.
Enforcement of a design patent takes place in the U.S. Federal Courts.
Although all litigation is expensive in comparison to what it
costs to obtain a design patent, design patent litigation tends to be
less costly than utility patent litigation. Many design
patent suits are resolved before trial on a granted summary judgment
motion.
One unique feature of design patents is that by statute a design patent
owner may be able to recover the total profits made by an infringer as
a result of the infringment. This is typically much more than
the "reasonable royalty" that is the usual measure of recovery of
damages in utility patent litigation.
Copyright
Copyright law may be used to protect an industrial design in cases
where the aesthetic design of the product is separable from the
product's function. For example, if a table lamp includes a
sculptural element that has nothing to do with the function of the
lamp, it may be protectable by copyright.
Under international law, a copyright automatically exists at the time
the design is created, even if it is not registered at the U.S.
Copyright Office. However, there are legal benefits both to
providing proper copyright notice on the product and to early
registration of the design.
Because copyright registration is simple and inexpensive, it
is an important element to an industrial design protection strategy.
It has both advantages and disadvantages in comparison to
design patent protection, but fortunately there is no need to choose
between these two options as both may be pursued concurrently.
In cases where the copyright is awarded to an individual, the term is
now the life of the author plus 70 years. For works
of corporate authorship the term is now 120 years after
creation or 95 years after publication, whichever endpoint is earlier.
Trademark
Trademark law can be used to protect industrial designs in cases where
the design has acquired distictiveness, meaning that it
has reached a stage where it is associated by the public with
a particular source or origin such as a manufacturer or distributor.
Such designs can be awrded a federal trademark registration.
Registrations have been issued for such well-known product
designs as the Life Savers candy that has the distinctive hole in the
middle and the ubiquitous round Honeywell thermostat.
One benefit of trademark protection is that it can be maintained
indefinitely if it is properly maintained and the product continues to
be sold.
Contact us for more
information on our industrial design protection services.
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